Forest Labs., Inc. v. Amneal Pharms. LLC
Compliance with registered agent statute in Delaware establishes consent to jurisdiction in Delaware for all causes of action.
Case Name: Forest Labs., Inc. v. Amneal Pharms. LLC, Civ. No. 14-508-LPS, 2015 U.S. Dist. LEXIS 23215 (D. Del. Feb. 26, 2015) (Burke, M.J.)
Drug Product and Patent(s)-in-Suit: Namenda XR® (memantine hydrochloride); U.S. Patents Nos. 5,061,703 (“the ’703 patent”), 8,039,009 (“the ’009 patent”), 8,168,209 (“the ’209 patent”), 8,173,708 (“the ’708 patent”), 8,283,379 (“the ’379 patent”), 8,329,752 (“the ’752 patent”), 8,362,085 (“the ’085 patent”), and 8,598,233 (“the ’233 patent”)
Nature of the Case and Issue(s) Presented: This case presented the issue of whether compliance with Delaware’s state statute for foreign corporations to have a registered agent for acceptance of service of process was consent to jurisdiction within Delaware courts for any cause of action. Forest sued Mylan in Delaware for patent infringement resulting from Mylan’s ANDA seeking approval to market generic Namenda XR. Mylan, based in West Virginia, had registered as a foreign corporation to do business in Delaware, and as such, had identified a registered agent within Delaware to accept service of process.
Mylan argued that recent Supreme Court precedent required the Court to find that no general jurisdiction was present. In other district court cases in Delaware, the courts had come to the opposite conclusions on the issue of whether general jurisdiction was present. As such, Mylan argued that the court did not have personal jurisdiction and should dismiss the case.
Forest argued that Mylan had consented to jurisdiction because Mylan had appointed a registered agent in Delaware to accept service of process for any cause of action against Mylan. As such, it did not matter if the court did or did not have general jurisdiction over Mylan under the “minimum contacts” test as it had consented to jurisdiction. Further, the recent Supreme Court case did not eliminate the ability of a party to consent to jurisdiction. The court agreed.
Why Forest Prevailed: The court first addressed the seminal Supreme Court decision in International Shoe and what effect it had on the issue of a defendant’s consent to jurisdiction. The court held that International Shoe did not eliminate the ability of a party to consent to jurisdiction in a forum. In fact, the court identified several Supreme Court decisions subsequent to International Shoe that emphasized that a party may consent to personal jurisdiction.
Next, the court determined that consent to jurisdiction may occur when a party complies with a state registration statute. The court rejected the argument that International Shoe overruled such determination because it required “minimum contacts,” since the Supreme Court never expressly made such a holding. Moreover, subsequent cases had recognized that a party could consent to venue such that it would seem illogical that a party could then not consent to jurisdiction. Finally, the Third Circuit had recognized that a party could consent to jurisdiction. Thus, the court rejected Mylan’s argument on this point.
The court next examined the Delaware statute, and determined that it provided consent to jurisdiction in Delaware for any cause of action. The statute did not specify just certain causes of action for which the registered agent could accept service of process. Moreover, the Delaware State Supreme Court had recognized that this statute applied to all causes of action. Thus, Mylan had consent to jurisdiction in Delaware for all causes of action.
Lastly, the court rejected Mylan’s argument that the recent Supreme Court decision in Daimler changed the law as to consent. The court determined that the Daimler decision was in regard to general jurisdiction and “minimum contacts” under International Shoe. Indeed, the Daimler decision indicated that it was unlike other Supreme Court decisions that involved consent to jurisdiction. As such, the Daimler decision did not overrule or change the law as to consent.
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