Case Name: Torrent Pharmaceuticals Ltd. et al v. Daiichi Sankyo Co., Ltd., et al, Civ. No. 16-C-2988, 2016 U.S. Dist. LEXIS 96448 (N.D. Ill. July 25, 2016) (Pallmeyer, J.)
Drug Product and Patent(s)-in-Suit: Benicar® (olmesartan medoxomil); U.S. Patent No. 6,878,703 (“the ’703 patent”)
Nature of the Case and Issue(s) Presented: This case concerns the issue of personal jurisdiction over defendant patent holders. Plaintiffs asserted that the court had either general or specific jurisdiction over the Defendants. Plaintiffs argued that general jurisdiction existed because Defendants were parties to a case before the court that was almost the same case as here, and never challenged jurisdiction in that case. Plaintiffs argued that specific jurisdiction existed based on various activities conducted by Defendants, such as obtaining the ’703 patent, licensing activities related to the ’703 patent, and that Defendants had employees in the jurisdiction, and conducted sales in the jurisdiction.
Defendants argued that general jurisdiction was not present because the law regarding the scope of general jurisdiction had significantly changed since the prior case. Under the current law, general jurisdiction did not exist. As to specific jurisdiction, Defendants argued that they had not performed any relevant activities in the jurisdiction in that Plaintiffs failed to identify any activities related to the enforcement of the ’703 patent in this jurisdiction. The court found that it lacked personal jurisdiction over Defendants.
Why Defendants Prevailed: The court found that it lacked general jurisdiction over Defendants because the case law had changed. In particular, the court found that the Supreme Court in Daimler AG v. Bauman had significantly reduced the scope of general jurisdiction to cases in which a defendant was incorporated or had its principal place of business within that district. The court rejected Plaintiffs’ argument that Defendants had waived or acquiesced to general jurisdiction by defending themselves in a similar case because those actions of defending oneself were not “purposefully availing” oneself of the benefits of the forum.
As to specific jurisdiction, the court firstly determined which activities were relevant to the analysis. Where the patent holder was the defendant, the court found that only activities related to the enforcement or defense of validity in the forum were relevant to the issue of specific jurisdiction. As such, Defendants’ sales activities and number of employees within the jurisdiction were irrelevant. Plaintiffs only alleged that Defendants had conducted “licensing activities” in the forum, which the court found to be too vague to establish specific jurisdiction. Lastly, the court noted that its analysis would be different in the scenario were the ANDA filer the defendant, but that the Federal Circuit does not require the analysis to be the same when the branded drug manufacturer is the defendant.
