Takeda Pharmaceuticals U.S.A., Inc. v. Genentech, Inc. ( 2019 )

IN THE COURT OF CHANCERY OF THE STATE OF DELAWARE
TAKEDA PHARMACEUTICALS U.S.A., )
INC., TAKEDA PHARMACEUTICALS )
AMERICA, INC., and MILLENNIUM )
PHARMACEUTICALS, INC., )
)
Plaintiffs, ) C.A. No. 2018-0384-MTZ
)
v. )
)
GENENTECH, INC., )
)
Defendant. )
MEMORANDUM OPINION
Date Submitted: December 7, 2018
Date Decided: March 26, 2019
Philip A. Rovner & Jonathan A. Choa, POTTER ANDERSON CORROON LLP,
Wilmington, Delaware; William F. Cavanaugh, Irena Royzman, Jacob F. Siegel,
Eric B. LaPre, & Sara A. Arrow, PATTERSON BELKNAP WEBB & TYLER
LLP, New York, New York, Attorneys for Plaintiffs Takeda Pharmaceuticals
U.S.A., Inc., Takeda Pharmaceuticals America, Inc., and Millennium
Pharmaceuticals, Inc.
Kelly E. Farnan & Blake Rohrbacher, RICHARDS, LAYTON & FINGER, P.A.,
Wilmington, Delaware; Robert W. Trenchard, Jane M. Love, & Mark H. Mixon,
Jr., GIBSON, DUNN & CRUTCHER LLP, New York, New York, Attorneys for
Defendant Genentech, Inc.
ZURN, Vice Chancellor.
Two biotechnology companies are engaged in patent litigation in multiple
European jurisdictions. In those cases, the alleged infringer has asserted a defense
that it holds a license based on an agreement with a third company. In hopes of
ending the foreign patent litigation, the alleged infringer then came to Delaware
and sued that third company, which is a subsidiary of the patentholder. The
alleged infringer seeks a declaratory judgment that it has a license and an anti-suit
injunction against the third company and anyone acting in active concert or
participation with it. Because the alleged infringer has an adequate remedy at law
in the form of its license defense in the foreign patent litigation, this Court does not
have subject matter jurisdiction over the alleged infringer’s request for declaratory
relief. The case is therefore dismissed.
I. BACKGROUND
A. The Parties’ Corporate and Contractual Relationships
In 1997, defendant Genentech, Inc. (“Genentech”) and LeukoSite, Inc.
(“LeukoSite”) entered into a Development Collaboration and License Agreement,
dated December 18, 1997 (the “License Agreement”).1 LeukoSite was “the owner
or exclusive licensee of certain technology and other proprietary know-how” for
1
Aff. of Robert W. Trenchard in Supp. of Def. Genentech, Inc.’s Mot. to Dismiss
(Docket Item (“D.I.”) 10), Ex. A. Delaware law governs the License Agreement. Id.
§ 13.3.
certain identified products, which Genentech desired to use.2 LeukoSite and
Genentech agreed to collaborate to develop LDP-02, a monoclonal antibody.3
Plaintiff Millennium Pharmaceuticals, Inc. (“Millennium”) is the surviving
entity of a 1999 merger with LeukoSite.4 In 2004, Genentech and Millennium
agreed to terminate the License Agreement through a Termination Agreement
dated May 12, 2004 (the “Termination Agreement”).5 In the Termination
Agreement, the parties cross-licensed intellectual property from their work related
to LDP-02, and Genentech returned the rights to make, use, and sell LDP-02 to
Millennium.6 Genentech granted Millennium, among other things, “a non-
exclusive, paid-up, royalty free, world-wide license” for “GNE Patents.”7 GNE
Patents are defined as
any United States patent or patent application, including any division,
continuation, or continuation-in-part thereof and any foreign patent or
patent application or equivalent corresponding thereto and any letters
patent or the equivalent thereof issuing thereon or reissue,
re-examination, supplemental protection certificate or extension
thereof, (i) which is owned or controlled by GNE or to which GNE
has a transferable or sublicensable interest and (ii) which is necessary
for the research, development or commercialization of LDP-02,
2
Trenchard Aff. Ex. A at 1.
3
Id. at 1, § 1.26.
4
Compl. ¶ 7. All citations to the Complaint are to Plaintiffs’ Verified Complaint. D.I. 1.
5
Compl. ¶ 23. Delaware law governs the Termination Agreement. Trenchard Aff. Ex. B
§ 13(d).
6
Compl. ¶ 23; Trenchard Aff. Ex. B at §§ 3, 4.
7
Trenchard Aff. Ex. B § 4.
Derivatives or Antibody Products, including without limitation GNE’s
interest in Joint Patents. Notwithstanding the foregoing, “GNE
Patents” shall not include (a) the Excluded GNE Patents, or (b) any
claim of a GNE Patent directed to a use of LDP-02, a Derivative or an
Antibody Product in the Field for a disease indication other than an
inflammatory bowel disease, which use is conceived and reduced to
practice after the Effective Date.8
The Termination Agreement defined “Excluded GNE Patents” as several identified
patents not relevant here, as well as “any other patents or intellectual property
owned by a Third Party for which direct licenses are generally available from such
Third Party.”9 A “Third Party” is defined as “a person or entity who or which is
not a party” to the License Agreement.10
In 2008, plaintiff Takeda Pharmaceuticals U.S.A., Inc. acquired Millennium.
Millennium and plaintiff Takeda Pharmaceuticals America, Inc. are wholly owned
subsidiaries of Takeda Pharmaceuticals U.S.A.11
Between 1990 and 2009, Roche was a majority stockholder of Genentech.12
In 2009, Roche acquired the rest of Genentech’s stock, and Genentech became a
8
Id. § 1(e).
9
Id. § 1(c)(i).
10
Trenchard Aff. Ex. A § 1.53 (definition of Third Party in License Agreement), Ex. B
§ 8 (identifying which definitions of License Agreement survived the termination of that
Agreement).
11
Compl. ¶¶ 2, 6-7. Takeda and Roche operate through subsidiaries in different
countries, and this opinion simplifies those corporate structures by referring only to
Takeda and Roche unless it is necessary to identify the specific entity, such as
Millennium.
wholly owned subsidiary of Roche.13 Takeda alleges that after Genentech became
a wholly owned subsidiary of Roche, Roche “consolidated all of its U.S
pharmaceutical operations” in Genentech.14 Genentech’s campus is now allegedly
Roche’s headquarters for its United States pharmaceutical operations, and the two
companies share office space at Roche’s principal place of business in New
Jersey.15
The parties worked to develop the LDP-02 antibody, which eventually
became an active ingredient in ENTYVIO.16 ENTYVIO treats adult ulcerative
colitis and adult Crohn’s disease, and was first approved by the FDA in 2014.17
Takeda’s fiscal year 2017 sales of ENTYVIO were nearly $1.8 billion.18
B. Roche Files For Patent Rights Related To Antibody Technology.
In 2006, Roche filed patent applications in the United States and Europe,
including United States Patent Application 14/195,066 (the “‘066 Application”).19
12
Id. ¶ 36. The ultimate corporate parent of Roche is Roche Holding AG, a publicly
traded company organized and existing under the laws of Switzerland. Id. ¶ 8.
13
Id. ¶ 36.
14
Id. ¶ 38.
15
Id. ¶¶ 38-41.
16
Id. ¶¶ 17-18, 20-21.
17
Id. ¶ 13.
18
Id. ¶ 19. This figure was based on exchange rates when Takeda filed the Complaint.
19
Trenchard Aff. Exs. C & D. This Court may take judicial notice of these patent
applications and accompanying documents. See Wilkin v. Narachi, 2018 WL 1100372, at
*2 n.3 (Del. Ch. Feb. 28, 2018) (taking judicial notice of a World Intellectual Property
For each application, the applicant and assignee were Roche entities, not
Genentech.20 European Patent No. 2,007,809 (the “‘809 Patent”) is a foreign
counterpart of the ‘066 Application.21 The European Patent Office granted the
‘809 Patent in September 2012.22
The ‘066 Application included a power of attorney (“the Power of
Attorney”) through which Roche authorized several agents to prosecute that
application.23 A Genentech Vice President of Intellectual Property signed the
Power of Attorney on Roche’s behalf.24 Roche gave prosecution authority to six
Genentech in-house attorneys and one Genentech patent agent, among others.25
Takeda asserts that these Genentech employees “have responsibility for and
control the prosecution of the ‘066 Application on behalf of Genentech,” while no
Roche “patent attorneys or agents are identified.”26
Organization Patent Application); MicroStrategy Inc. v. Acacia Research Corp., 2010
WL 5550455, at *4 (Del. Ch. Dec. 30, 2010) (taking judicial notice of title pages of
patents and publicly filed patent assignment form).
20
Trenchard Aff. Exs. C & D.
21
Compl. ¶ 34.
22
Trenchard Aff. Ex. E.
23
Compl. ¶ 43; id. Ex. A.
24
Compl. ¶ 44.
25
Compl. ¶ 45; id. Ex. B.
26
Compl. ¶ 45.
The ‘066 Application was pending with the United States Patent and
Trademark Office when Takeda filed its complaint here.27 On August 6, 2018, the
Patent and Trademark Office allowed the ‘066 Application.28 Roche then paid the
required fees and disclosed relevant documents, though Takeda disputes the scope
and sufficiency of that disclosure.29
C. Roche Sues Takeda Alleging ENTYVIO Infringes the ‘809 Patent,
And Takeda Asserts It Has A License.
In February 2018, Roche sued Takeda in Germany on the basis that
ENTYVIO infringes the ‘809 Patent.30 In June 2018, Roche sued Takeda in Italy
as well.31
As a defense against Roche’s infringement claims, Takeda has asserted it
has a license. Takeda contends that under the Termination Agreement, Takeda has
a “non-exclusive, paid-up, royalty free, world-wide license” to use “GNE Patents.”
Takeda claims the ‘066 Application is a “GNE Patent” as defined in the
Termination Agreement because Genentech “controls” the Application, and that
Takeda has equal rights to the ‘809 Patent because it is a counterpart to the ‘066
27
D.I. 9 at 7.
28
D.I. 15 at 9.
29
Id.Compl. ¶ 47; see Aff. of Irena Royzman in Supp. of Pls.’ Opp’n to Genentech, Inc.’s
30
Mot. to Dismiss (D.I. 15), Ex. A.
31
D.I. 15 at 9.
Application. Takeda asserted a license defense against Roche in the German
litigation,32 and filed invalidity proceedings for the ‘809 Patent against Roche in
the United Kingdom in which Takeda also asserted that it has a license.33
On May 30, 2018, Takeda brought the dispute across the Atlantic by suing
Genentech in this case. Takeda seeks a declaratory judgment that Genentech
granted Takeda a license to the ‘066 Application and its foreign counterparts.34
Takeda also seeks an anti-suit injunction against Genentech, and anyone in active
concert or participation with it, in hopes of precluding or resolving Roche’s
infringement claims under the ‘066 Application and its foreign counterparts.35
In Takeda’s words, the relief it seeks in Delaware “will terminate the
controversy between the parties” and prevent “Genentech and its affiliates” from
continuing “to assert infringement claims against Takeda.”36 Even though Roche
is not a party to the License or Termination Agreements, Takeda asserts the relief it
32
Trenchard Aff. Ex. G at 58-59, 61.
33
Compl. ¶ 48; Royzman Aff. Ex. C ¶ 7. In briefing, Takeda stated it “also filed a nullity
action in Germany seeking to invalidate the German part of the ‘809 Patent.” D.I. 15 at
8.
34
Compl. ¶¶ 53-59.
35
Id. ¶ 59; id. at 17-18.
36
Id. ¶¶ 58-59.
seeks is appropriate and effective against Roche “[g]iven Genentech’s relationship
within” Roche.37
On July 23, 2018, Genentech moved to dismiss for lack of subject matter
jurisdiction, for failure to join Roche as an indispensable party, and for failure to
state a claim under the Termination Agreement. Takeda opposed the motion on
August 22. Genentech replied in support of its motion on September 7. The case
was reassigned to me on October 17, and I heard oral argument on December 7.
II. ANALYSIS
Genentech claims this case must be dismissed because this Court lacks
jurisdiction over Takeda’s claim, Roche has not been joined as a party, and Takeda
has failed to state a claim. I address subject matter jurisdiction first, as I can only
substantively review the pleadings if I have jurisdiction to do so.38
“When considering a motion to dismiss under Court of Chancery Rule
12(b)(1), the Court’s first task, when appropriate, is to assess whether the
fundamental predicates to subject matter jurisdiction exist.”39 “The Court then
37
Id. ¶ 56.
38
See K&K Screw Prods., L.L.C. v. Emerick Capital Invs., Inc., 2011 WL 3505354, at *6
(Del. Ch. Aug. 9, 2011) (“Because the issue of subject matter jurisdiction is a potentially
dispositive threshold issue, I consider first whether the Complaint pleads a justiciable
case or controversy.”); Gen. Elec. Co. v. Star Techs., Inc., 1996 WL 377028, at *1 (Del.
Ch. July 1, 1996) (“Since the Court’s subject matter jurisdiction is a dispositive, threshold
issue concerning the Court’s power to act, I do not address the venue issue or the motion
to stay this proceeding.”).
39
Hall v. Coupe, 2016 WL 3094406, at *2 (Del. Ch. May 25, 2016).
turns its focus to the ‘nature of the wrong alleged’ to determine whether
Chancery’s limited jurisdiction has been invoked.”40 “The plaintiff ‘bears the
burden of establishing this Court’s jurisdiction,’ and when determining whether
that burden has been met, the Court may consider the pleadings and matters
‘extrinsic to the pleadings.’”41
“The Court of Chancery can exercise subject matter jurisdiction only when a
case falls into one of three buckets.”42 Those buckets contain cases in which (i) “a
plaintiff states an equitable claim,” (ii) “a plaintiff requests equitable relief and
there is no adequate remedy at law,” and (iii) “jurisdiction exists by statute.”43
Takeda alleges its claims fall into the second bucket.44 Genentech responds that
Takeda has no controversy with Genentech, and that Takeda has an adequate
remedy at law.45 I find that while Takeda has an actual controversy with
Genentech that could justify a declaratory judgment, the relief Takeda seeks
40
Id. (quoting McMahon v. New Castle Assocs., 532 A.2d 601, 603 (Del. Ch. 1987)).
41
Id. (quoting Pitts v. City of Wilm., 2009 WL 1204492, at *5 (Del. Ch. Apr. 27, 2009)).
42
Delawareans for Educ. Opportunity v. Carney, 2018 WL 4849935, at *5 (Del. Ch. Oct.
5, 2018); see also Candlewood Timber Grp., LLC v. Pan Am. Energy, LLC, 859 A.2d
989, 997 (Del. 2004) (identifying the three ways the “Court of Chancery can acquire
subject matter jurisdiction”).
43
Delawareans for Educ. Opportunity, 2018 WL 4849935, at *5.
44
Compl. ¶ 9.
45
D.I. 9 at 10-15. Genentech also argues Takeda cannot obtain an anti-suit injunction.
Id. at 16-19. Because that issue raises nuanced questions about the scope of an injunction
I believe I lack jurisdiction to grant, I do not examine that issue.
(which is ultimately from Roche) can be adequately obtained at law. Therefore,
this Court lacks subject matter jurisdiction, and the case must be dismissed.
A. There Is An Actual Controversy Between Takeda And Genentech.
“Delaware courts are statutorily authorized to entertain an action for
a declaratory judgment, provided that an ‘actual controversy’ exists between the
parties.”46 To show an “actual controversy,” a party must show four factors:
(1) It must be a controversy involving the rights or other legal
relations of the party seeking declaratory relief; (2) it must be a
controversy in which the claim of right or other legal interest is
asserted against one who has an interest in contesting the claim; (3)
the controversy must be between parties whose interests are real and
adverse; (4) the issue involved in the controversy must be ripe for
judicial determination.47
Takeda has satisfied these elements. First, the controversy involves
Takeda’s rights under the Termination Agreement. Second, Takeda seeks a
declaration against Genentech, which has an interest in contesting that claim.
Genentech might contest such a claim to preserve its own rights to use the patent
without competition. Assuming Genentech did not have the authority to grant a
license, Genentech also may have an interest in avoiding a ruling that it granted
Takeda that license. Third, the controversy is real and adverse. Takeda and
Genentech disagree over Takeda’s legal rights under the Termination Agreement;
46
XI Specialty Ins. Co. v. WMI Liquidating Tr., 93 A.3d 1208, 1216-17 (Del. 2014).
47
Id. at 1217 (quoting Stroud v. Milliken Enters., Inc., 552 A.2d 476, 479-80 (Del.
1989)).
Genentech’s argument that Takeda has failed to state a claim to Roche’s patents
makes that clear.48
Finally, the issue is ripe for judicial determination. “Generally, a dispute
will be deemed ripe if ‘litigation sooner or later appears to be unavoidable and
where the material facts are static.’”49 Roche has sued Takeda for infringing
patents for which Takeda believes Genentech granted Takeda a license. Genentech
has argued the Termination Agreement did not give Takeda that license.50
But the fact that Takeda has satisfied the elements for obtaining a
declaratory judgment does not mean this Court has jurisdiction. “It is well settled
that the Declaratory Judgment Act does not independently confer jurisdiction on
this court.”51 I must therefore analyze whether there is an equitable basis for
jurisdiction.
48
D.I. 9 at 24-29.
49
XI Specialty Ins. Co., 93 A.3d at 1217 (quoting Julian v. Julian, 2009 WL 2937121, at
*3 (Del. Ch. Sept. 9, 2009)).
50
D.I. 9 at 24-29.
51
Reeder v. Wagner, 2007 WL 3301026, at *1 (Del. Ch. Nov. 1, 2007); see also Diebold
Comput. Leasing, Inc. v. Commercial Credit Corp., 267 A.2d 586, 591 (Del. 1970)
(stating this Court “has jurisdiction in a declaratory judgment action if there is any
underlying basis for equity jurisdiction measured by traditional standards”); Buczik v.
Wonchoba, 1993 WL 93444, at *1 (Del. Ch. Mar. 24, 1993) (“This Court will only
assume jurisdiction over a claim for declaratory relief if equity would independently have
jurisdiction over the controversy, without reference to the declaratory judgment statute.”).
B. Takeda Has An Adequate Remedy At Law That Prevents This
Court From Exercising Jurisdiction.
This Court does not “have jurisdiction to determine any matter wherein
sufficient remedy may be had by common law, or statute, before any other court or
jurisdiction of this State.”52 “The question is whether the remedy available at law
will afford the plaintiffs full, fair, and complete relief.”53
Genentech asserts Takeda has an adequate remedy at law in asserting the
license as a defense against Roche in the ongoing infringement litigation, as
Takeda has already done. Generally, “the ability of a party to obtain the equivalent
of injunctive relief by raising its contentions as a defense in an action at law[]
constitutes an adequate remedy that precludes injunctive relief in equity.” 54 Said
52
10 Del. C. § 342.
53
Delawareans for Educ. Opportunity, 2018 WL 4849935, at *5 (quoting Hughes Tool
Co. v. Fawcett Publ’ns, Inc., 315 A.2d 577, 579 (Del. 1974)).
54
Manor Healthcare Corp. v. Tolbert, 1986 WL 5476, at *3 (Del. Ch. May 13, 1986);
see also Buczik, 1993 WL 93444, at *2 (ruling plaintiff “clearly has an adequate remedy
at law because she may raise the release as an affirmative defense” in another action);
E.I. duPont de Nemours & Co. v. HEM Research, Inc., 1989 WL 122053, at *4 (Del. Ch.
Oct. 13, 1989) (granting motion to dismiss equitable rescission claim because “plaintiff
would have an adequate legal defense to an action by defendant under the instrument”).
El Paso Natural Gas Co. v. TransAmerican Natural Gas Corp., 669 A.2d 36 (Del. 1995),
is in accord. There, the Supreme Court noted that, generally, the interference of equity
requires the absence of an adequate remedy at law. 669 A.2d at 39. That ruling
specifically considered the assertion of a facially invalid forum selection clause as a
potential defense in a Texas action. El Paso’s specific ruling on forum selection clauses
was overruled by National Industries Group (Holding) v. Carlyle Investment
Management, 67 A.3d 373 (Del. 2013). There, the Supreme Court concluded this Court
had subject matter jurisdiction to issue an injunction ordering specific performance of a
forum selection cause. 67 A.3d at 385-86. In that case, asserting the clause as a defense
differently, “[w]here there is a defense cognizable at law the possessor of it has an
adequate remedy at law and equity will not enjoin his adversary from suing.”55
This Court has applied this principle to actions at law pending in Delaware’s
Superior Court, as well as actions pending in other states.56 Buczik v. Wonchoba is
an example of the former.57 The plaintiff sought a declaratory judgment that the
defendant had agreed to release its claims against the plaintiff, such that the
defendant could not maintain its Superior Court action against the plaintiff.58 This
Court concluded it lacked jurisdiction. The plaintiff had “an adequate remedy at
law because she may raise the release as an affirmative defense to [the] Superior
Court action.”59 Similarly, I conclude Takeda has an adequate remedy at law
because it can assert, and indeed has asserted, its purported license as a defense in
the infringement proceedings it ultimately seeks to enjoin.
in Kuwait was not an adequate remedy at law because the parties had agreed to have the
dispute heard in Delaware, not Kuwait. Id. El Paso’s general iteration of the principle
that an adequate remedy at law precludes equitable jurisdiction remains undisturbed.
55
Gray Co. v. Alemite Corp., 174 A. 136, 144 (Del. Ch. 1934).
56
See El Paso Nat. Gas Co. v. TransAmerican Nat. Gas Corp., 1994 WL 248195, at *3
(Del. Ch. May 31, 1994) (finding an adequate legal remedy in Texas), aff’d, 669 A.2d 36(Del. 1995); Manor Healthcare Corp., 1986 WL 5476, at *4 (finding an adequate legal
remedy in Oklahoma).
57
1993 WL 93444 (Del. Ch. Mar. 24, 1993).
58
Id. at *1.
59
Id. at *2.
Takeda questions the adequacy of its remedy in the German infringement
proceedings, claiming “the German infringement proceeding would not provide
relief that is as complete, prompt, or efficient as would Delaware’s disposition of
this case.”60 Takeda believes the German proceedings will not afford it “the
substantive protections” available in Delaware.61 Takeda questions, without an
evident factual basis, whether “discovery into Genentech’s control over the ‘066
Application,” a trial, live testimony, and cross-examination are available in
Germany.62 But Takeda has not explained why any procedural differences
between Germany and Delaware prevent the German court from entering full, fair,
and complete relief on Takeda’s license defense. Takeda also doubts whether the
German court can apply Delaware law “as effectively as Delaware courts could.”63
Takeda has not persuaded me the German court cannot resolve the dispute before
it; Delaware courts often apply Delaware procedures alongside the law of other
jurisdictions.64
60
D.I. 15 at 12.
61
Id. at 14.
62
Id.
63
Id.
64
See, e.g., In re Viking Pump, Inc., 148 A.3d 633, 660 (Del. 2016) (applying New York
law); QVT Fund LP v. Eurohypo Capital Funding LLC I, 2011 WL 2672092, at *8 (Del.
Ch. July 8, 2011) (applying German law); Kostolany v. Davis, 1995 WL 662683, at *3
(Del. Ch. Nov. 7, 1995) (applying Dutch law).
Takeda also asserts that a judgment from this Court would provide more
finality than a successful license defense in Germany, as a judgment here would
“obviat[e] the need for any further contractual or patent litigation in any forum
(including Germany, the United Kingdom, Italy, and the United States), and put[] a
complete end to Roche’s lawsuits asserting Genentech-controlled intellectual
property.”65 It is not clear to me that Roche would be bound by the requested anti-
suit injunction against “Genentech and each of its officers, agents, servants and
employees, and those persons in active concert or participation with them.”66
Takeda also seems unconvinced. The most Takeda could assert is that
“[d]epending on the scope of the injunction that issues and Roche’s conduct,
Roche certainly may be a party against whom the injunction could be enforced.”67
Takeda argues Genentech and Roche are one and the same for purposes of
this case based on Roche’s Power of Attorney, which empowers Genentech
employees to prosecute the ‘066 Application; Roche’s designation of Genentech as
its center of United States operations; and Roche’s coexistence with Genentech in
New Jersey office space. But Takeda’s attempt to equate Genentech with Roche
fails to show a Delaware ruling would provide more full, fair, and complete relief
than a European ruling on the license defense. In my view, the better course is to
65
D.I. 15 at 13.
66
Compl. at 18.
67
D.I. 15 at 25.
let the German court, with Takeda and Roche clearly before it, decide whether
Takeda has a license defense against infringement. That would directly answer the
contested question in a way that would bind Roche. The relief Takeda seeks here,
against Genentech, cannot be as full and complete as a ruling between Takeda and
Roche.
Finally, Takeda argues that the principles underlying a forum non
conveniens analysis support adjudicating its license defense here, rather than in the
foreign patent cases.68 Forum non conveniens applies in varied contexts,69 but this
is not one of them. That doctrine is a discretionary, multi-factor analysis that
assesses the hardship the plaintiff’s choice of forum may work on the defendant.70
But considerations such as the relative ease of access to proof do not inform
whether the Court has jurisdiction over the plaintiff’s claim. Said differently, the
Court’s subject matter jurisdiction does not depend on convenience.
Though Germany’s system may take a different approach than Delaware’s,
Takeda has failed to show that the German court is incapable of providing full,
fair, and complete relief on Takeda’s license defense. Justice Jacobs, writing as
68
D.I. 15 at 13-15. Takeda did not cite any decision applying forum non conveniens
factors to a subject matter jurisdiction analysis.
69
See Aranda v. Philip Morris USA Inc., 183 A.3d 1245, 1251 (Del. 2018) (discussing
differences between doctrines in applying forum non conveniens).
70
See Warburg, Pincus Ventures, L.P. v. Schrapper, 774 A.2d 264, 269 (Del. 2001) (“A
motion to stay or dismiss on the ground of forum non conveniens is addressed to the
sound discretion of the trial court.”).
Vice Chancellor, recognized that “[i]t is an unavoidable fact that a particular
choice of forum will often confer a tactical advantage of one kind or another upon
a litigant. But, that fact, standing alone, does not necessarily render the chosen
forum unfair or inadequate for the opposing parties.”71 Roche may have achieved
that first-mover advantage by asserting its European patent rights in Germany, but
Takeda nonetheless has an adequate remedy at law in that proceeding. As a result,
this Court lacks subject matter jurisdiction.
Genentech also argues Roche is a necessary party under Rule 19, and that
Takeda has failed to state a claim upon which relief can be granted. I decline to
decide these issues: I lack jurisdiction to do so, and addressing those issues in
tandem with the German court may risk inconsistent analyses or outcomes.72
C. The Dismissal Is Without Prejudice.
My conclusion depends on Takeda’s ability to assert a license defense in
Germany. As explained, Takeda has already done so, and has not convinced me
that the German court cannot fully evaluate that argument. I do not intend to
destroy Takeda’s ability to assert its license defense. If Takeda is prevented from
71
Manor Healthcare Corp., 1986 WL 5476, at *4.
72
See Baier v. Upper New York Inv. Co. LLC, 2018 WL 1791996, at *5 (Del. Ch. Apr.
16, 2018) (stating “jurisdictional challenges, both subject matter and personal, present
threshold inquiries” and declining to reach arguments concerning failure to state a claim).
asserting it in Germany or other jurisdictions, Takeda is not precluded from again
seeking relief here. The dismissal is without prejudice.73
III. CONCLUSION
For these reasons, Genentech’s motion to dismiss the Complaint is granted.
The Complaint is dismissed without prejudice.
IT IS SO ORDERED.
73
See Carlyle Inv. Mgmt. L.L.C. v. Moonmouth Co. S.A., 2015 WL 5278913, at *18 (Del.
Ch. Sept. 10, 2015) (granting motion to dismiss for lack of subject matter jurisdiction and
dismissing without prejudice); Carder v. Carl M. Freeman Cmtys., LLC, 2009 WL
106510, at *8 (Del. Ch. Jan. 5, 2009) (same). Because I am granting the motion to
dismiss under Rule 12(b)(1), not Rule 12(b)(6), Rule 15(aaa) does not apply and so the
dismissal is not presumed to be with prejudice.