Free Letter - District Court of Delaware - Delaware

Case 1 :08-cv-OOO21-GMS-LPS Document 60 Filed O4/08/2008 Page 1 of 2
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p AHd€YSOH Richard L. Horwitz
_-. COITOOI] LLP Fmt?
‘ ‘ ‘ Attorney at Law
1313 North Market Street [email protected]
P.O. Box 951 302 984-6027 Direct Phone
Wilmington, DE 1989943951 302 658-1192 Fax
302 984—6000
www.potterande¤·s0n.com
April 8, 2008
VIA ELECTRONIC FILING
The Honorable Leonard P. Stark
United States District Court
for the District of Delaware
844 N. King Street
Wilmington, Delaware 19801 ` ·
Re: Forest Laboratories Inc. v. Cobalt Laboratories Inc., et al.,
C.A. No. 08·~21·~GMS··LPS
Dear Magistrate Judge Stark:
Pursuant to the Court’s April 3, 2008 Order, defendants Orchid Chemicals &
Pharmaceuticals Ltd. ("Orchid India”) and Orchid Pharmaceuticals Inc. ("Orchid Delaware”)
submit this letter seeking the Court’s assistance in resolving the parties’ impasse regarding the
terms and scope of jurisdictional discovery.
Plaintiffs tiled a Complaint on January 10, 2008 alleging that Orchid India and Orchid
Delaware (collectively "Orchid") infringed U.S. Patent No. 5,061,703 by submitting an
Abbreviated New Drug Application (“ANDA") for memantine hydrochloride tablets. Orchid
Delaware filed an answer denying involvement in any activities giving rise to the alleged cause
of action, te., preparing and submitting the accused ANDA. Indeed, Orchid Delaware is a
holding company that has no employees or revenues, and takes no corporate actions which could
be attributed to Orchid India. r
Ordhid India moved to dismiss the complaint pursuant to Rule l2(b)(2) for lack of
personal jurisdiction on the grounds that the company has insufficient contacts with Delaware to
satisfy the state’s long-arrn statute and/or the requirements of due process. That motion is
presently pending before the Court.
Following discussions amongst counsel, the parties tiled a stipulation regarding
jurisdictional discovery that permitted Plaintiffs additional time to respond to the motion to
dismiss. The parties further stipulated that the terms and scope of jurisdictional discovery would
be set forth in a separate agreement. However, the parties are at an impasse concerning the terms
and scope of the jurisdictional discovery.

Case 1 :08-cv-OOO21—GIV|S-LPS Document 60 Filed O4/08/2008 Page 2 ot 2
The Honorable Leonard P. Stark
April 8, 2008
Page 2
Orchid’s Motion to Disrniss argues that the Court lacks personal jurisdiction over Orchid
India because the company has insufficient contacts with Delaware to satisfy the state°s long~arm
statute or the requirements of due process. Orchid contends that there is no "specific"
jurisdiction because no allegedly tortious act took place in the state nor has any injury been
inflicted within the state. See 10 Del. C. § 3104 and Orchid Indio ’s Opening Brief In Support Of
Its Rule 12(B)(2) Motion at pages 8-·l0. During the discussions regarding the scope of
jurisdictional discovery, Orchid asked counsel for the Plaintiffs to confirm that they do not plan
to contest this aspect of Orchidfs motion. Counsel for the Plaintiffs stated that they were not
prepared to do so.
Accordingly, Orchid seeks limited discovery of Plaintiffs regarding whether or not there
has been any alleged injury to Plaintiffs in Delaware. Orchid respectfully submits that such
discovery is plainly relevant to the question of whether jurisdiction exists pursuant to Delaware’s
long-arm statute. See l0 Del. C. § 3104 and Orchid Indio ’s Opening Brief In Support Oflis Rule ‘
i2(B)(2) Motion at pages 9—l0. For patent infringement, the situs ofthe injury is deemed to be
the location ofthe patent holders principal place of business. See, e. g. , Applied Biosystems, Inc.
v. Cruczchern, Lid., 772 F. Supp. 1458, 1468 (D.Del. l99l); Foster Wheeler Energy Corp. v.
MeiorllgeselZschoj?AG, CA. No. 91-214-SLR, 1993 WL 669447, at *5 (D.Del. Jan. 4, 1993)
(finding that any alleged injury would occur in New Jersey, the site ofthe plaintiffs principal
place of business, and not in Delaware, the state of incorporation). Although the apparent
owners ofthe asserted patent appear to be German corporations with their principal places of
business in Germany, and the apparent exclusive licensees appear to have their principal places
of business in New York, the fact remains that the Plaintiffs refused Orchid’s request to confirm
that they will not make any argument otherwise. Orchid does not deny that the Plaintiffs are
entitled to limited discovery regarding Orchid lndia’s lack of contacts with Delaware for
purposes of Orchid’s contention that "general” jurisdiction over Orchid India does not exit.
However, given the limited period for jurisdictional discovery and that Plaintiffs may attempt to
allege injury in Delaware in their reply to Orchid’s motion to dismiss, it is appropriate and in the
interest of efficiency for the Court to allow Orchid at this time to discover facts that may further
support its argument that there has been no injury to any Plaintiff in Delaware and to rebut any
arguments that the Plaintiffs might advance to the contrary.
Respectfully,
/s/ Richard L. Horwitz
Richard L. Horwitz
RLH / msb
859193 f 32657
cc: Clerk ofthe Court (via hand delivery)
Counsel of Record (via electronic mail)

Case 1:08-cv-00021-GMS-LPS

Document 60

Filed 04/08/2008

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Case 1:08-cv-00021-GMS-LPS

Document 60

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