The opinion of the court was delivered by: Roberts, District Judge.
Plaintiffs Biochem Pharma, Inc. ("Biochem") and Glaxo Wellcome Inc.
("Glaxo") and defendant Emory University ("Emory") are all dissatisfied
with the result of an Interference proceeding before the United States
Patent and Trademark Office ("USPTO") Board of Patent Appeals and
Interferences ("Board"). Biochem and Glaxo filed this lawsuit seeking
review of the Board's decision. Emory subsequently filed a related
lawsuit, Civil Action No. 01-389, seeking review of the same decision.
Emory filed in this action a Motion to Dismiss or to Transfer Venue, and
plaintiffs filed a Motion for Consolidation of Civil Action No. 01-389
with this case. Because the cases are closely related, they should be
consolidated. Because the convenience of the parties and witnesses and
the interests of justice will best by served by disposing of these
consolidated cases together with the underlying patent infringement
action in the Northern District of Georgia, the consolidated cases will
be transferred to that court pursuant to 28 U.S.C. § 1404 (a).
In 1996, Emory sued Biochem and Glaxo in the United States District
Court for the Northern District of Georgia. Emory alleged that Biochem
and Glaxo's marketing of Epivir, a compound effective against HIV,
infringed Emory's patent, U.S. Patent No. 5,539,116 (the "'116
Patent").*fn1 In May 1998, the USPTO initiated Interference proceeding No.
104,201 to determine whether Emory or Biochem had priority with regard to
the subject matter which underlies the '116 Patent. Biochem requested and
obtained a stay of the patent infringement litigation in Georgia pending
the completion of the USPTO's Interference proceeding.
On December 21, 2000, the Board issued its decision, awarding priority
to Biochem and Glaxo. Emory is dissatisfied with this aspect of the
decision. Biochem and Glaxo are dissatisfied with the Board's decision
not to address other issues in the Interference proceeding but, instead,
to deem those matters moot. Biochem and Glaxo filed this lawsuit on
December 21, 2000, the same day the Board announced its
decision. Biochem and Glaxo challenge the Board's decision pursuant to
35 U.S.C. § 146.*fn2 On February 16, 2001, Emory likewise filed a
§ 146 lawsuit, but in the Northern District of Georgia. On February
21, 2001, Emory filed in this Court another § 146 lawsuit challenging
the same Board decision. Emory has moved to dismiss or transfer Biochem's
lawsuit, and Biochem and Glaxo have moved to consolidate the two cases.
Biochem and Glaxo seek consolidation of the two § 146 cases in this
Court which relate to Interference proceeding No. 104,201. Emory opposes
consolidation based on its position that this lawsuit should be
transferred to the Northern District of Georgia and its representation
that it will dismiss Civil Action No. 01-389 once the Georgia court
assumes jurisdiction over Emory's § 146 case in that court.
Rule 42(a) of the Federal Rules of Civil Procedure provides for
consolidation of cases involving a common question of law or fact. The
district court has broad discretion in determining whether to consolidate
related cases. See Mylan Pharmaceuticals Inc. v. Henney, 94 F. Supp.2d 36,
43 (D.D.C. 2000). Consolidation is appropriate where, as here, the two
cases each involve review of the same underlying decision. See Id. at
43-44. When Emory filed its lawsuit, it correctly represented that Civil
Action No. 00-3047 was a related case. Biochem and Glaxo answered Emory's
lawsuit and filed a counterclaim restating their § 146 challenge
already set forth in this case.
It is beyond dispute that these two § 146 cases are inextricably
related. The Court exercises its discretion to grant plaintiffs' Motion
II. Transfer to the Northern District of Georgia
"For the convenience of parties and witnesses, in the interest of
justice, a district court may transfer any civil action to any other
district or division where it might have been brought."
28 U.S.C. § 1404 (a). Emory seeks transfer of this case to the United
States District Court for the Northern District of Georgia where the
underlying patent infringement case is pending. Plaintiffs oppose
transfer, preferring to litigate the § 146 issues in this district.
When lawsuits involving the same controversy are filed in more than one
jurisdiction, the general rule is that the court that first acquired
jurisdiction has priority. See Columbia Plaza Corp. v. Security National
Bank, 525 F.2d 620, 627 (D.C.Cir. 1975). In this case, there exists in
the Northern District of Georgia a first-filed, well-advanced, related
patent infringement action involving the same patent at issue in the
Interference action before the USPTO.
"The decision whether to transfer under § 1404(a) is left largely
to the district court's discretion, and of necessity depends on the facts
of each case." Smiths Industries Medical Systems, Inc. v. Ballard Medical
Products, Inc., 728 F. Supp. 6, 7 (D.D.C. 1989) (citing Stewart
Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 108 S.Ct. 2239, 101
L.Ed.2d 22 (1988); Van Dusen v. Barrack, 376 U.S. 612, 622, 84 S.Ct.
805, 11 L.Ed.2d 945 (1964)).
Transfer "under § 1404(a) is appropriate when there is an ongoing
related case in another jurisdiction." Id. (citing In re Scott,
709 F.2d 717, 721 & n. 10 (D.C.Cir. 1983)). "Piecemeal litigation in
the complex and technical area of ...