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Acorda owns patents on its branded drugs.  Mylan seeks to manufacture and sell a generic version of Acorda’s drug.  Mylan filed an ANDA request with the FDA to sell its generic version.  Based on Mylan’s filing of the ANDA, Acorda sued Mylan for infringement of its patent in the district court in Delaware and Mylan moved to dismiss for lack of personal jurisdiction.  Mylan is incorporated in West Virginia and has its principal place of business there.  Mylan does business in Delaware and it has registered to do business in Delaware and appointed an agent to accept service in Delaware.  Mylan intends to sell its generic drug in Delaware once it receives FDA approval to do so. 

The district court denied Mylan’s motion to dismiss on the grounds that the Delaware court could exercise specific personal jurisdiction over Mylan.  Mylan’s ANDA conduct is “suit-related” and has a substantial connection with Delaware, because ANDA filings are tied to the deliberate making of sales in Delaware and the suit is about whether that in-State activity will infringe valid patents.  An ANDA is part of a plan by Mylan to commit real world acts that would make it liable for infringement if it commits them without Acorda’s permission.  Such directing of sales into Delaware is sufficient for minimum contacts.

In her concurrence, Judge O’Malley argues that the outcome was correct, but the court should have found that it had general jurisdiction over Mylan due to its registration to do business in Delaware, which constitutes consent to general personal jurisdiction. 

Acorda Therapeutics Inc. v. Mylan Pharmaceuticals Inc., Case Nos. 2015-1456, -1460 (March 18, 2016); Opinion by: Taranto, joined by Newman; concurring opinion by O’Malley; Appealed From: United States District Court for the District of Delaware, Stark, J., Sleet, J. Read the full opinion here.

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