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IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

PAR PHARMACEUTICAL, INC., and 

ENDO PAR INNOVATION COMPANY, 

LLC,

Plaintiff,

v.

ALKEM LABORATORIES LTD.,

Defendant.

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CIVIL ACTION NO. 2:23-CV-00400-JRG-RSP

(LEAD CASE)

 

MEMORANDUM ORDER

Before the Court is Defendant Mankind Pharma Limited’s Motion to Transfer Venue under 

28 U.S.C. §1404(a). (2:22-cv-399 Dkt. No. 28.) After consideration, the Court concludes that 

Mankind has not met its burden of showing that the District of Delaware would be a clearly more 

convenient venue than this forum. Accordingly, the Court DENIES Mankind’s Motion to 

Transfer. 

I. APPLICABLE LAW

A federal district court may transfer a case “for the convenience of parties and witnesses” 

to “any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). Section 

1404(a)’s threshold inquiry is whether the case could initially have been brought in the proposed 

transferee forum. In re Volkswagen AG, 371 F.3d 201, 202-03 (5th Cir. 2004) (“Volkswagen I”). 

The question of whether a suit “might have been brought” in the transferee forum encompasses 

subject matter jurisdiction, personal jurisdiction, and propriety of venue. Id. at 203. Only if this 

statutory requirement is met should the Court determine whether convenience warrants a transfer 

of the case. See id.; In re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir. 2008) (“Volkswagen 

II”). Once the moving party has established that the instant case could have been brought in the 

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transferee forum, the Court moves on to consider the private and public factors provided in 

Volkswagen I. 

The private interest factors are “(1) the relative ease of access to sources of proof; (2) the 

availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance 

for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious 

and inexpensive.” Volkswagen II, 545 F.3d at 315 (quoting Volkswagen I, 371 F.3d at 203). The 

public interest factors are “(1) the administrative difficulties flowing from court congestion; (2) 

the local interest in having localized interests decided at home; (3) the familiarity of the forum 

with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict 

of laws [or in] the application of foreign law.” Id. (quoting Volkswagen I, 371 F.3d at 203) 

(alterations in original). The factors are neither exclusive nor exhaustive, and no one factor is 

dispositive. Id.

The burden to prove that a case should be transferred for convenience falls squarely on the 

moving party. Id. Although the plaintiff's choice of forum is not a separate factor, respect for the 

plaintiff's choice of forum is encompassed in the movant's elevated burden to “clearly 

demonstrate” that the proposed transferee forum is “clearly more convenient” than the forum in 

which the case was filed. Id. at 314-15; In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. 2020) 

(applying Fifth Circuit law). While “clearly more convenient” is not necessarily equivalent to 

“clear and convincing,” the moving party “must show materially more than a mere preponderance 

of convenience, lest the standard have no real or practical meaning.” Quest NetTech Corp. v. Apple, 

Inc., No. 2:19-cv-118, 2019 WL 6344267, at *7 (E.D. Tex. Nov. 27, 2019). In considering a 

transfer under § 1404(a), the Court may consider undisputed facts outside of the pleadings but 

must draw all reasonable inferences and resolve factual disputes in favor of the non-movant. See 

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Vocalife LLC v. Amazon.com, Inc., No. 2:19-cv-00123, 2019 U.S. Dist. LEXIS 205696, 2019 WL 

6345191, at *2 (E.D. Tex. Nov. 27, 2019); cf. Trois v. Apple Tree Auction Cent. Inc., 882 F.3d 

485, 492-93 (5th Cir. 2018) (reviewing a transfer under § 1406); Ambraco, Inc. v. Bossclip B.V., 

570 F.3d 233, 238 (5th Cir. 2009) (reviewing enforcement of a forum-selection clause).

II. ANALYSIS

a. Venue In the District of Delaware

Mankind contends, and Par does not dispute, that venue is proper in Delaware and this 

action could1 have been brought in either district. As such, the Court finds the same.

b. The relative ease of access to sources of proof

Mankind contends that it is incorporated and headquartered in India but operates through 

its subsidiary, Lifestar Pharma, in the U.S. Mankind further represents that Glenmark 

Pharmaceuticals is its exclusive distributor of the relevant product in the U.S. Mankind argues 

that since Lifestar is headquartered in New Jersey, and only Lifestar communicated with the FDA 

regarding the product at issue, the relevant evidence is likely to be found in New Jersey, closer to 

Delaware. Mankind argues similarly as to Glenmark, Mankind’s exclusive distributor. Glenmark 

is also primarily located in New Jersey and as such, Delaware will also offer greater ease of access 

to their documents. Mankind also contends that since Par is also headquartered in New Jersey,

their documents too are likely closer to Delaware than Texas.

Par responds that Lifestar is not a party to the action and has no connection to the research 

and development or manufacture of the accused products in this case. Par argues that the

1 Mankind throughout its motion contends this motion should have been brought in Delaware since Par has

previously filed a similar case there but lost a motion for temporary restraining order. As such, Mankind in effect

argues that Par has filed this action in this Court to avoid that precedent. The Court does not consider such an 

allegation as material. First, it ignores that Par has not sought any similar motion in this Court to have another bite at 

the apple. Second, such an allegation would apply equally to Mankind which now apparently seeks transfer to 

Delaware for a more favorable outcome instead of New Jersey, which it indicates would be more convenient. 

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manufacturing is the key since the asserted patent is directed to a method of manufacturing. 

Therefore, Par contends it will be Mankind in India that has the relevant evidence, not Lifestar in 

New Jersey. Par argues that Glenmark is in New Jersey and not Delaware, or even within the 

District of Delaware’s subpoena power. Further, Par argues that because Glenmark purchases the 

accused tablets from Mankind, it has no role in manufacturing and thus little relevance to this case. 

The Court finds this factor is fairly neutral. While Lifestar and Glenmark are located closer 

to Delaware than this Court and are likely to have some relevant sources of proof, the Court expects 

they are stored digitally and are of little value by comparison to the documents of Mankind itself. 

Mankind’s sources of proof, in particular information regarding the manufacture of the accused 

product, are located in India, where such evidence is equally difficult to access from either this 

Court or Delaware. Further, Mankind has shown no greater ease of access in Delaware beyond 

relative proximity to New Jersey. As such, access to any physical evidence and any custodians is 

tied to New Jersey.

c. The Availability Of Compulsory Process To Secure The Attendance Of 

Witnesses

Mankind contends that given the locations of the parties, Glenmark, and Lifestar closer to 

Delaware, it is likely that former employees will be within the subpoena power of Delaware. 

Mankind argues the opposite is not true and there are no such unwilling witnesses near this Court.

Par contends this factor does not weigh in favor of transfer because while the unnamed 

non-party witnesses may be closer to Delaware, they have not been shown to be within the 

subpoena power of the District of Delaware.

The Court cannot credit unnamed former employees that may or may not be in the 

subpoena power of either Court. The Court is simply unable to evaluate whether these potential 

witnesses have relevant knowledge, are within the relevant subpoena power, or even exist. 

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Mankind bears the burden here of showing that the District of Delaware is clearly more convenient, 

it cannot satisfy its burden by merely suggesting witnesses might exist in such a way as to favor 

transfer.

d. The Cost of Attendance for Willing Witnesses

Under this factor, Mankind points to one witness from New York with knowledge of 

Mankind’s FDA approval process and three of Glenmark’s personnel in New Jersey 

knowledgeable of Glenmark’s operations, supply chain, and finances. Mankind contends that since 

these individuals are closer to Delaware than Texas, Delaware is a more convenient forum for 

them.

Par responds the relevant witnesses are in India and it is equally convenient for these 

witnesses to testify in Texas or Delaware. Par also questions Mankind’sidentification of witnesses. 

First, Par argues Mankind’s witness actually only has knowledge of the relationship between 

Lifestar and Mankind, which has no bearing on the dispute. As to the Glenmark employees, Par 

contends that their knowledge of the distribution and sale of the accused products is not relevant 

because it is likely to be undisputed and the subject of damages experts. 

The Court finds this factor slightly favors transfer. While the Glenmark witnesses are likely 

to provide undisputed testimony, that testimony is still relevant and carries weight in this analysis. 

However, the Court expects the greater weight of testimonial evidence, particularly regarding 

infringement, of which none of the witnesses identified by Mankind have relevant knowledge, to 

come from India. For such Indian witnesses, the Court expects Texas to be equally convenient as 

Delaware.

e. All Other Practical Problems That Make Trial of a Case Easy, Expeditious, 

and Inexpensive

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Practical problems include those that are rationally based on judicial economy. Particularly, 

the existence of related suits involving the same or similar issues may create practical difficulties 

that will weigh for or against transfer. Eolas Techs., Inc. v. Adobe Sys., Inc., No. 6:09-cv-446, 2010 

WL 3835762, at *6 (E.D. Tex. Sept. 28, 2010), aff’d In re Google, Inc., 412 F. App’x. 295 (Fed. 

Cir. 2011).

Mankind argues that the existence of an earlier case filed by Par asserting the same patent 

against another defendant in Delaware shows there is greater judicial economy than retaining the 

case here. Par contends it has filed two cases in this Court compared to the single case in Delaware 

making this district preferred.

The Court finds that the two districts have roughly equal interests to weigh in the judicial 

economy balance.

f. The Administrative Difficulties Flowing from Court Congestion

Mankind concedes this Court has a significantly faster time to trial than Delaware but 

suggests this factor should still be considered neutral as the “ability to set a fast-paced schedule is 

not particularly relevant to this factor.”

Mankind is wrong. In re DISH Network L.L.C. held that the ability to set a fast schedule is 

not particularly relevant, not that the reality that trials occur more quickly in this district is not 

relevant. Here, not even Mankind’s showing relies on the schedule the Court entered but rather on 

the statistics of actual trials. This factor weighs against transfer.

g. The Local Interest in Having Localized Interests Decided at Home

Mankind contends that as both Lifestar and Glenmark are incorporated in Delaware and 

Headquartered in New Jersey, Delaware has a greater localized interest in this action than Texas. 

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The Court finds that the local interest factor is neutral. Even if New Jersey had a local 

interest in the action, a local interest does not radiate out to nearby states such that Delaware has a 

local interest in this action merely on account of its proximity to a state that does.

h. Remaining Public Interest Factors

The parties agree that the remaining public interest factors are neutral. As such, the Court 

finds these factors are neutral.

i. Weighing of the Factors 

In view of the foregoing factors, the Court must determine whether the District of Delaware

is “clearly more convenient” than the Eastern District of Texas. The Fifth Circuit has been careful 

to emphasize that district courts should not merely engage in a “raw counting” exercise which 

tallies up the factors favoring transfer and the factors militating against transfer. In re RadmAX, 

Ltd., 720 F.3d 285, 290 n.8 (5th Cir. 2013) (“We do not suggest—nor has this court held—that a 

raw counting of the factors in each side, weighing each the same and deciding transfer only on the 

resulting ‘score,’ is the proper methodology.”). Instead, the Court must make factual 

determinations to ascertain the degree of actual convenience, if any, and whether such rises to the 

level of “clearly more convenient.” See id. Having weighed the foregoing factors, the Court 

concludes that the District of Delaware is not “clearly more convenient.”

III. CONCLUSION

The Court therefore DENIES Mankind’s Motion (Dkt. No. 28) for the reasons provided 

above.

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