Ferring B.V. v. Allergan, Inc.

166 F. Supp. 3d 415, 2016 U.S. Dist. LEXIS 46846, 2016 WL 1319160
CourtDistrict Court, S.D. New York
DecidedJanuary 7, 2016
Docket12 Civ. 2650
StatusPublished
Cited by5 cases

This text of 166 F. Supp. 3d 415 (Ferring B.V. v. Allergan, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ferring B.V. v. Allergan, Inc., 166 F. Supp. 3d 415, 2016 U.S. Dist. LEXIS 46846, 2016 WL 1319160 (S.D.N.Y. 2016).

Opinion

Sweet, District Judge

Plaintiffs Ferring B.Y., Ferring Int’l Center S.A., and Ferring Pharmaceuticals (collectively, “Ferring” or “Plaintiffs”) have moved for summary judgment dismissing the counterclaims of Allergan Inc., [417]*417Allergan USA, Inc., Allergan Sales, LLC (collectively “Allergan” or “Defendants”) to correct the inventorship of Patent Nos. 7,560,429 and 7,947,654 (collectively, the “Patents”). For the reasons set forth below, the motion is granted in part and denied in part.

I. Prior Proceedings

Familiarity with the prior proceedings and facts as alleged in the initial complaint filed by Ferring on April 5, 2012 is assumed and were set forth in the March 18, 2013 order (the “March 18 Order”) granting Defendants’ motion to dismiss. See generally Ferring B.V. v. Allergan, Inc., 932 F.Supp.2d 493 (S.D.N.Y.2013) reconsideration denied, No. 12 CIV. 2650 (RWS), 2013 WL 4082930 (S.D.N.Y. Aug. 7, 2013). Thereafter, on April 16, 2013, Ferring moved for reconsideration, or in the alternative, leave to file an amended complaint. The motion was denied on August 7, 2013, with leave granted to permit Ferring to move for leave to amend in compliance with the March 18 Order. Ferring B.V. v. Allergan, Inc., No. 12 CIV. 2650(RWS), 2013 WL 4082930 (S.D.N.Y. Aug. 7, 2013). On August 22, 2013, Fer-ring moved to amend the complaint. The motion was denied in its entirety on March 13, 2014. Ferring B.V. v. Allergan, Inc., 4 F.Supp.3d 612 (S.D.N.Y.2014).

Given the extensive factual background detailed in this Court’s other decisions, the following facts provide only a summary retelling of undisputed events for purposes of approaching the instant motion.1

Desmopressin is a synthetic analogue to vasopressin, a human hormone antidiuretic that regulates hydration and water reab-sorption by the kidneys. In 1987, Ferring introduced oral tablets containing desmo-pressin for treatment of certain urinary disorders. In some patients, desmopressin had the undesirable side effect of hypona-tremia, low sodium ion concentration in the blood. Ferring continued research on forms of desmopressin throughout the 1990s. By June 1999, Ferring had expressed an intent to pursue a feasibility study for a quick-dissolving sublingual, or orodispersible,2 form of desmopressin. By January 2001, Ferring had summarized its feasibility study. After months of testing, by May 2001 Ferring had confirmed the feasibility of an orodispersible formulation of desmopressin using a fish gelatin matrix, and by August Ferring signed a development contract to manufacture the form. Dr. Fein did not participate in any of this development work for an orodisper-sible formulation of desmopressin.

Dr. Fein first became involved with development of desmopressin at Ferring in August 2001.3 Thereafter, Ferring [418]*418scientists designed a clinical study to investigate the bioavailability of Ferring’s orodispersible desmopressin dose form, designated CS004. The parties dispute whether Dr. Fein was active in designing that study. CS004 tested the formulation work Ferring had done between 2000 and 2001, and ultimately demonstrated that the orodispersible dose form demonstrated improved bioavailability of desmopressin.

On May 7, 2002, Ferring filed Great Britain Patent Application No. GB0210397.6. Decl. of John W. Cox in Supp. of Ferring’s Mot. for Summary Judgment (“Cox Deck”), Ex. 31 (“GB Application.”). The GB Application disclosed a “pharmaceutical dosage form of desmo-pressin adapted for sublingual absorption.” It named no individual inventors. A series of patent filings by Ferring and Fein ensued.4

On September 20, 2002, Ferring filed PCT application IB02/04036, claiming the same subject matter as the Great Britain 0210397.6 application and listed Dr. Fein among the inventors. On May 7, 2003, Ferring filed a modified PCT application IB03/02368, which did not name Fein. PCT/IB03/02368 matured into U.S. patent application 10/513,437, with a filing date of May 7, 2003. On June 18, 2009, Ferring filed U.S. patent application 12/487,116 as a continuation of application 10/513,437. On July 14, 2009 Ferring’s U.S. patent application 10/513,437 issued as U.S. Patent No. 7,560,429. Cox Deck Ex. 13 (the “ ’429 Patent”).

On June 18, 2009, Ferring filed U.S. patent application 12/487,116 as a continuation of its previously filed U.S. patent application 10/513,437. In a Preliminary Amendment dated November 6, 2009, Fer-ring amended U.S. Patent Application No. 12/487,116 to add claims directed to “[a]n orodispersible pharmaceutical dosage form of desmopressin acetate which disintegrates in the mouth within 10 seconds.” Ferring added a dependent claim that additionally limited this “orodispersible pharmaceutical dosage form of desmopressin acetate which disintegrates in the mouth within 10 seconds” to one “which is adapted for sublingual administration.” Ferring did not add back Dr. Fein as an inventor when it reinserted a claim to U.S. patent application 12/487,116 for desmopressin adapted for sublingual administration. On May 24, 2011, Ferring’s U.S. patent application 12/487,116 issued as U.S. Patent No. 7,947,654. Cox Deck, Ex. 14 (“the ’654 patent”).

Allergan, the assignee of Dr: Fein’s interest in the ’429 and ’654 patents, in its First Amended Answer to Plaintiffs’ First Amended Complaint filed April 3, 2014 (the “FAA”), counterclaimed pursuant to 35 U.S.C. § 256 to correct the inventorship of the ’429 and ’654 patents to substitute Dr. Fein as the sole inventor, or in the alternative, to add Dr. Fein as a joint inventor. Ferring filed a motion for summary judgment to dismiss all of these counterclaims on September 10, 2015. Oral argument was held and the motion deemed fully submitted on December 12, 2015.

II. Applicable Standard

Summary judgment is appropriate only where “there is no genuine issue as to any [419]*419material fact and ... the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c). A dispute is “genuine” if “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The relevant inquiry on application for summary judgment is “whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.” Id. at 251-52, 106 S.Ct. 2505. A court is not charged with weighing the evidence and determining its truth, but with determining whether there is a genuine issue for trial. Westinghouse Elec. Corp. v. N.Y. City Transit Auth., 735 F.Supp. 1205, 1212 (S.D.N.Y.1990) (quoting Anderson, 477 U.S. at 249, 106 S.Ct. 2505). “[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson, 477 U.S. at 247-48, 106 S.Ct. 2505 (emphasis in original).

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166 F. Supp. 3d 415, 2016 U.S. Dist. LEXIS 46846, 2016 WL 1319160, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ferring-bv-v-allergan-inc-nysd-2016.