Ferring B.V. et al v. Allergan Inc. et al

Filing 294

SEALED OPINION: For the reasons set forth above, Ferring's motion to dismiss is denied, Counterclaim Plaintiffs and Al lergan's motion for substitution is granted, and both parties' motions to seal are granted. The Clerk of the Court i s requested to amend the caption by substituting Reprise and Serenity for Allergan as counterclaimants. In light of the protective order entered in this case, the parties are directed to jointly submit a redacted version of this Opinion to be filed publically within one week of the date of this Opinion. So Ordered. (Signed by Judge Robert W. Sweet on 9/7/2017) (js)

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~--· ~ "' i'"-'-"'-"'· :.. 'A'.-..- n~.:-:n.·;;:-~-.----~--------------- UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ----------------------------------------x FERRING B.V., FERRIN G INTERNATIONAL CENTERS.A., and FERRING PHARMACEUTICALS INC., 12 Civ. 2650 SEALED OPINION Plaintiffs and CounterDefendants, -against- I I I SDC. DN'~----::::.:.-:...7'=:_ ALLERGAN, INC., ALLERGAN USA, INC., ALLERGAN SALES, LLC, SERENITY PHARMACEUT ICALS CORPORATION, SERENITY PHARMACEUTICALS, LLC, REPRISE BIOPHARMACEUTICS, LLC, SEYMOUR H. FEIN , and RONALD V. NARDI, L)CU ~ ,rF t'·IT .ECT <(YN!C/\LLY Ff I .ED DOC #; - DATE !LED: II Defendants and Counterclaimants. I --- -- ------------------------------------x A P P E A R A N C E S: Attorneys for Pla intiffs GIBBONS P.C. One Gateway Center Newark, NJ 07102 By: William P. Deni, Jr., Esq. Jeffrey A. Palumbo, Esq . FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 901 New York Avenue, N.W. Washington, D.C. 20001-4413 By: James B. Monroe, Esq. Paul W. Browning, Esq. Adriana L. Burgy, Esq. Charles T. Collins-Chase, Esq. Pier D. DeRoo , Esq. 1 1 l 'l WOMBLE CARLYLE SANDRIDGE & RICE, LLP Atlantic Station 271 17th St., NW, Suite 2400 Atlanta, GA 30363 By: John W. Cox, Ph.D. Joshua Adam Davis, Esq. WOMBLE CARLYLE SANDRIDGE & RICE, LLP 222 Delaware Avenue, Suite 1501 Wilmington, DE 19801 By: Mary Bourke, Esq. Attorneys for Defendants GIBSON, DUNN & CRUTCHER LLP 200 Park Avenue, 48th Floor New York, NY 10166-0193 By: Joseph Evall, Esq. GIBSON, DUNN & CRUTCHER LLP 3161 Michelson Drive Irvine, CA 92612-4412 By: Jeffrey Thomas, Esq. Zachariah J. Lloyd, Esq. JONES DAY 250 Vesey Street New York, NY 10281-1047 By: James Sottile, IV, Esq. Christopher J. Harnett, Esq. Shehla Wynne, Esq. Kevin V. McCarthy, Esq. 1 Sweet, D.J. Defendants Serenity Pharmaceuticals Corpo l ation and Serenity Pharmaceuticals, LLC ("Serenity") and Reprise Biopharmaceutics, LLC ("Reprise") ( collecti vel , the "Counterclaim Plaintiffs") have moved pursuant to Federal Rule of Civil Procedure 25(c) for substitution of C unterclaim Plaintiffs in place of Defendants Allergan, In ., Allergan USA, Inc., and Allergan Sales, LLC ("Allergan") S. A., and Ferring Pharmaceuticals Inc. in his patent ( "Ferring" or the "Plaintiffs") have moved pursuant to Federal R le of Civil Procedure 12(b) to dismiss the counterclaims o Allergan for which the Counterclaim Plaintiffs seek substit tion for lack of standing. Based on the facts and conclusions set forth below, the motion of the Counterclaim Plaintiffs is g anted, and the motion of Ferring is denied without prejudice to renew. This action has presented an ever-changing kaleidoscope of patent law issues since its inception by Ferring on April 5, 2012. It is hoped that all these issues will be determined at the trial presently scheduled for October 10, 2017. 1 Allergan has joined in Counterclaim Plaintiffs' motion for substitution. (See Dkt. No. 277.) 2 Prior Proceedings This patent infringement action was filed f y Ferring on April 5, 2012 . Allergan's motion to dismiss the l complaint and Ferring's motion for summary judgment on Allergan's counterclaims have been resolved by opinions of JMarch 19, 2013 , and January 7, 2016, respectively. See Ferring Inc., 932 F. Supp. 2d 493 (S.D.N.Y. 2013) ~ .V. (moti l n to dismiss); Ferring B.V. v. Allergan, Inc., 166 F. Supp. 3dl 415 2016) v. Allergan, (motion for summary judgment) . Discovery (S.D . N.Y. as completed in 1 2015. What has remained at issue are the counterclaims initially asserted by Allergan seeking a determination th t t Dr. Seymour Fein ("Fein u) is the co-inventor of U.S. Patent Nos. 7,56 0 ,42 9 ("the '4 29 Patentu) and 7,947,654 ("the '654 Pa !ent,u and, with the ' 429 Patent , the "Ferring Patentsu). On July 10, 2017, Ferring moved to dismiss the counterclaims of Allergan and the putative counterclaims of Serenity and Reprise for lack of standing and t i of their submissions . seal portions (Dkt. Nos. 263, 266.) On J uly 11, 2017, Counterclaim Plaintiffs moved to be substituted for Allergan as counterclaimants, (Dkt. No. 269), and on Ju l y 24 , 2017, to seal 3 portions of their submissions, (Okt. No . 282) . The motions were heard and marked fully submitted on August 9 , Facts The facts and prior proceedings of this li l igation have been previous l y set forth in the opinions of th i Court dated March 19 , 2013 , August 7 , 2013 , March 13 , 2014, January 7, 2016, June 14 , 2016 , and October 28 , 2016 . Familiarit~ is assumed. The following facts provide a summary retelling as r elevant to the instant motion . i . The Ferring Patents In 1987 , Ferring in troduced oral tablets c r ntaining desmopressin , which Ferring researched throughout the 1990s . 2 Ferring , 166 F . Supp . 3d at 417 . By May 2001, Fi rring had I confirmed the feasibility of a quick - dissolving s u blingual , or orodispersible , form of desmopressin and , by 1 Au~ust 2001, Ferring decided to develop this formulation co l ercially . 3 Id. 2 Desmopressin is a synthetic hormone used to treat disorders related to excessive urine production. Ferring , 1166 F. Supp. 3d at 417. 3 Orodispersible formulations are so l id unit dosage forms , which disintegrate in the mouth within a minute in the presence 4 Around this time , Fein became involved with Fe l ring and the development of desmopressin . Id . On May 7 , 2002 , Ferring filed Great Brita'n Patent Application No . GB0210397.6 (the "GB Application"), which · · I · disclosed a "pharmaceutical dosage form · desmopressin a d apte d of for sublingual absorption " and named no invent1 r. Id. at 418 . In the succeeding months and throughout the early 2000s, Fein and Ferring proceeded to file many patents regardi g this subject matter . See Ferring B.V . v. Allergan, Inc ., No . 12 Civ. 2650 (RWS) , 2015 WL 5671799 , at *2 - *3 (S . D. N. Y. Sep, . 22 , 2015) (detailing the many Fein and Ferring patents). !Two of Ferring ' s patents based on the GB Application are of rel , vance to the present inquiry, the histories for which continue below. On September 20, 2002 , Ferring filed PCT application IB02/04036, claiming the same subject matter as l the GB Application and naming Fein as one of the invenf ors. Ferring, 166 F. Supp . 3d at 418 . Fein has since asserted that he holds the patents on low dose , sublingual inventions I overed Application. See Ferring , 2015 WL 5671799, at *f ; by the GB (Declaration of saliva due to super disintegrants in the for r ulation. Ferr i ng , 166 F. Supp. 3d at 417 n.2 (citation ad quotation marks omitted) . 5 of Dr . Seymour Fein dated July 24, 2017 ("Fe i n Deel."), at 2, Dkt. No. 281) . On May 7 , 2003, Ferring filed a modified Pr T application l IB03/02368 (the "PCT Application") that claimed priority to the GB Application, removed low dose and sublingual l claims from the application , and did not name Fein as an invent , r. Ferring, 166 F . Supp. 3d at 418 . On June 18 , 2009 , as a continuation of the PCT Application, Ferri ng filed U.S. Application No. 10/513,437 (the "' 437 I 200 ~ Application"), which was issued on July 14 I Patent. Id. I' as the ' 429 Also on June 18 , 2009 , Ferring filed U.S. Application No. 12/487,116 (the "'116 Applicati l n") as a I continuation of the '437 Application, and to wh i ch, on November 6 , 2009 , a claim was added directed to "[a]n orodispersible pharmaceutical dosage form of desmopressin acet l te which I disintegrates in the mouth within 10 seconds." Id. Ferring did -I · · · · not inc l u d e Fein as an inventor on t h' is patent app l' ication either. Id . On May 24 , 2011, the ' 116 Applicati J n issued as the '654 Patent. Id. 6 ii . March 2007 Agreement Assignment to R~prise In M ch 2007, re in a ssigned intellectual property rights ar in his desmopres sion inventions o Reprise , a orporation in wh ich Fein was a pr i ncipa l and equit y partner. lsee Fe rring , 2015 WL 5671 799 , at *6 ; (Declaration of Charle s T . oll i ns - Chase dated Jul y 10 , 201 7 ("Collins-Chase Decl .n ) , E . C (the "March 2007 Agreement ,n Dkt . No . 265 ; Fe in Deel ., at previous l y had formed Serenity , through which ) . Fein ha d a lso lein and others int ended to commerci a lly ma r ket fein's inven t i ns . Perring , 2015 WL 5671799 , at *6 . Under the t e rms of the March 2 007 Agreemenl , Fein assigned to Repr i se hi s enti re right in : (March 2007 Agreement , a t Non - AGN 00098046 . } 7 Appendix A to the March 2 007 Agr eement det l i l ed in the being tra nsfe rred to Repris AGN00098046 ; see id . , at Non-AGN00098048-50 . ) -- 4 he rights (Id ., at Non- - .. - (Declaration of Christopher J . Harnett dated Ju y 24 , 2017 ("Harnett Deel.") , Ex. 4 , at FERAI.L0 000075 , Dkt j No . 280 ; s ee id . , FERALL0000063 . ) The ' 761 Patent claimed pr l o rity over-::e GB Application . (See id . , at FERALL000006 3 . ) parties do not dispute that w at has been was intended to be attached t he March 2007 Agreement . 8 Appendix A further describes the assigned to Reprise through an abstract , which describes t e transferred invention rights a s: (March 2007 Agreement , at Non -AGN0009850 . ) iii. The Three-Way Agreement and th e Marchi 2010 Agreement with Allergan On March 31 , 2010 , Allergan en tered into ap r eemen s wit h Reprise and Serenity to assist with the developkent of low dose desrnopressin formulat i ons, which culminated in l everal ag reement s detailing the assignment of al l righ s , title , and interest in Fein's desmopressin invention pa en s from Reprise to Allergen and o which Serenity was also a coitcactual party . See Perring , 20 15 WL 56717 99 , at *7; (Coll ins-c ase Deel., Ex . B ( the "Three - Way Agreement) ; D eclaration of Shehla Wynne dated I 9 July 11 , 2017 ( "Wynne Deel . "), Ex . 2 (the "Marlh 2010 Agreement") , Dkt . No . 27 1). ... The Three-Way Agreement states , in releva t part , that • {Three-Way Agreement , ~t AGN_FER000 004989 . ) The Three-Way Agreement def 'nes as : ( Id. , a t AGN_ FE R00000 4985 . ) 10 11111111 The Thr ee - Way Agreement defines - s the (I d ., at AGN_ FE R000004986 . ) - The Three-Way Agreement ' s { Id ., at AGN_ FER000005010) . s The March 2010 Agreement - not list any ' the sections detai l i ng as signed Repris l and Se re nity pa tent righ s t o Allergan . (See March 2010 Agre ment , at AGN_FER0000051390 - 40 . ) -- Lastly, the Three-Wa y Agreemen - .. whic, included 1111 low dose desmoprl ssin . (Three - Way Agreeme n t , at AGN_ F'ER00000498 8- 89 . ) 5 The Repris e pa en t a s signmen ts noted in Ex ibi t 1 . 2 o f the Th ree-Way Agre eme nt we re identical to the assi g men ts listed in the relevant sections of the March 2010 Agreeme nt . (See CollinsChase Dec L , Ex . E, at 10 3 : 22 -1 05 : 11 , 111 : 21-11 ~ : 13 . -}11 - - - -- -- - -- - - -- iv. Dissolution of the Three-Way Agreeme J t On March 6, 2017, the Food and Drug Administration's ("FDA") approved a new product developed by Al lergan and Serenity, at which point Allergan chose to exe , cise its contractual option to withdraw from the Three-Way Agreement and th e March 2010 Agreement. (See Wynne Deel., Ex. 1, at 3; Declaration of Shehla Wynne dated August 1, 2017 ("Wynne Deel. 2"), Ex. 3 , Dkt. No. 291.) Under those terms, all of the rights, title, and interest acquired by Allergan under fhe Three-Way Agreement reverted to Reprise and Serenity effective May 28 , 201 7. (See March 2010 Agreement § 13. 5 (b) ; Th rel -way Agreement, at AGN_FER000005003.) The Applicable Standards A court may dismiss a case "for lack of subject matter jurisdiction under Rule 12(b) (1) when [it] lacks the statu t ory I or constitutional power to adjudicate it." Makarova v. Un i te d States, 201 F.3d 110, 113 (2d Cir. 2000) (citin1 Fed. R. Civ. P. 12(b) (1)). When there are disputed factual issues I , a district court may "resolve them in the manner it sees fit,, and may refer to evidence outside the pleadings. Advanced Vid l o Techs., LLC v . 12 HTC Corp ., 103 F . Supp . 3d 409 , 415 (S . O.N . Y. 2015) (citing Co. , 436 C~ossgates Alliance For Envtl . Renewal , Inc . v . Pyramid F.3d 82 , 87 - 88 (2d Cir. 2006)) , aff ' d , 677 F . Ab p ' x 684 (Fed. Cir . 2017) . Furthermore , " in any case requirin J determination of Article III standing , once [a] motion to dismiss for lack of . Article jurisdiction under Fed . R. Civ . P . 12 (b) (1) put [s] III s t anding in issue , [a] District Court has lreway as to the procedure i t wishes to follow . " All i ance For Envtl. Re newal , Inc. v . Pyramid Crossga t es Co ., 436 F . 3d 82 , 87-88 2006) . A plaintiff asse r ting subject matte r (2d Cir . jur~sdiction has the burden of establishing its existence by a prepol derance of the evidence . Makarova , 201 F.3d at 113 . When stating a claim for correction of inventorship under 35 U. S . C . § 256 , a party must satisfy " the requirements for constitutional standing- namely injury , causation , and redressability ." Larson v. Correct Craft , I nc ., 569 F . 3d 1319 , 1326 (Fed . Cir . 2009). A par t y can demons t rate l onstitutional standing by showing an ownership or concrete financial interest in the patent , see id . at 1326 - 27 , or "concrete land particularized reputational inj u ry ," Shukh v . S~agate Tech ., LLC , 803 F . 3d 659 , 663 (Fed . Cir. 2015) . I n the lcontext of patent own e rship assignments , federal law requi 1es that such 13 conveyance be in writing . See Advanced Video Techs ., 103 F . Supp . 3d at 417 (citing 35 U. S . C . § 261) ; see a~so Abraxis I Bioscience , Inc . v . Navinta LLC , 625 F . 3d 1359 , 1366 ( Fed . Cir. 2010) ("[A]n appropriate writ t en assignment is l ecessary to transfer legal title from one to the other . ") . Standing must be shown as of the date the suit was filed. Advanced Video Techs ., 103 F . Supp . 3d at 416 ("[A] plain t iff who lack k ' enforceable title to [a] patent at the inception of [his] lawsuit ' will be unable to show ' injury in fact , ' and is thus un l ble to meet his burden to show that he has Article III standing to pursue his claim . " (quoting Abraxis Bioscience , 625 F . 3d at 1363)) . Federal Rule of Civil Procedure 25(c) provi des that "[i]f a n interest is transferred , t he action may be continued by or against the original par t y unless the cour t, on motion , orders the tra n sferee to be substituted in the ac t ion or joined with the original party . " Fed . R . Civ . P . 25(c) . Rul l 25(c) "substitution is a procedural mechanism designe1 to facilitate the continuation of an action when an interest in a lawsuit is transferred and does not affect the substant ive [rights of the parties ." Fashion GS LLC v . Anstalt , No . 14 Civ . 5719 (GHW), 201 6 WL 7009043 , at *2 (S.D . N.Y. Nov. 29 , 2016) (quoting Travelers Ins . Co . v. Broadway W. St . Assocs ., J 64 F.R . D. 154 , I 14 I 164 (S . D. N.Y . 1995)) . Decisions made pursuant to Rule 25 are "generally within the sound discretion of the ttial court ." In re Rates - Vieer Pa ent Litig . , o . 09 Civ . 406 856261 , at *l (5 . D. N. Y. Mar . 10 , 2011) (LTS) , 2011 WL (quoting Organic Cow , LLC v. C r . for New Eng. Dairy Compact Research, 335 F . 3d 66 , 71 (2d Cir . 2003)) ('nternal quo a ion marks omi tted) . As such, "{t ]he primary consideration in deciding a motion purs ant to Rule 25 (c) is whether subs i tut i on will expedite and simplify the action. " Id . The Motion to Substitute is Granted and The Motion to Dismiss is Denied i . The Standing Issu~~ Require a Factual Determination and are Appropriatel;( Determined at Th.al The issue presented by the instant motions is whether Fe in assigned o Reprise and , in turn , Allergan , any intellectual property rights which Defendants contest that F in helped invent and wh i ch have been incorporated into the Ferring Patents . Coun ercla ' mants contends the assignments occur , ed in two steps: Fein assigned particular patent appl icat ions and the embodied in tho s e applications to , eprise in the March 2007 Agreement, it was the parties' inten J to assign a ll of Fein ' s right s , ti le , and interest in low dose desrnopress i n 15 inventions-his alleged inventive contributions to t he Ferring Patents-and those rights were then a ssigned to llergan under the terms of the Three-Way Agreement . 6 Ferring contends that the terms of both agreements , and principally the f l ilure to identify any Ferring patents or applications in any of the assignment documents , removes the Counterclaima n ts ' ability to claim standing. After a review of the assignment agreements , each can establish that Fein's intellectual property rigt ts have been transferred. Yet the scope of the transferrable rights-namely, if Fein had any relevant rights to transfer in the first placeremains tethered to the degree to which Fein can ultimately establish that he was involved in the invention of the Ferring Patents . As such , the question of standing is b st resolved at I trial while substitution of the parties is appropriate at this I ti me . 6 The Counterclaim Plaintiffs' argument of untimeliness as to the question of standing is incorrect. Although at times frustrating , standing "represents a jurisdictio al requirement which remains open to review at all stages oft e litigation . " Nat ' l Org. for Women , Inc. v . Scheidler, 510 U. S . 249 , 255 (1994) 16 The March 2007 Agr e ement can be read to transfer any in ter ests Fein had i n low dose desmopressin to As detailed above , , that claimed intell ectual property rights t o inve nt i ons that underlay the GB Application , the same intellectual property con ested by the parties today and which also led to the Ferring [ Patents. Furthermore , the - at the time of the March 2007 Agreement is reasonab l e: neither p a t ent had been issued , nor at the time did Fein believe that Ferring was stating a clai to his cla imed i nventions . See E'erring , 2015 WL 5671799 , at *8 (S . D. N. Y. Sept. 22 , 2015) ; (Harnett Deel . , Exs . 2-3 ; Fein Deel . , at 2-3) . As such, the March 2007 Agreement is "reasonably suscept i ble to [ Co unterclaimants ' ] pro f fered interpretat io n u a J d permits the concl usion tha Reprise received through the Ma•ch 2007 Agreement the contested property rights. Inte1 1J ctual Ven ures I LLC v . Erie Indem . Co ., 850 F . 3d 1315, 1322 (Fe4 . Cir . 2017 ) . Similar considerations undergird t he concl sion that the Three - Way Ag reement and March 2010 Agreement could have transferred Reprise's rights in Fein ' s Allergan . Like inte ~ lec~ual he March 200 7 Agreement, nei the 17 J p r operty to the Three -Way Agreement nor March 20 10 Agreement ; however , as descri b~d above , the agreement s assign to Allergan Like the March 2007 Agreement, these inclusions indicate an intention to assign to Allergan whatever rights Fein possessed at the time in the invention o f low do se desmopressin and previously given to Repr ise . Evidence presented i ndicates t ha this was the intension of the parties at the tir~ . (See Fein Deel. , at 3 . ) in the agreement does no impact this interpretation , particula rly since at t hat time , the degree to which Fein had any claim to i nventorsh i p of those patents was unresolved . Perring has noted that because the Th r ee -Way Agreeme nt 1111 I (Three - Way Agreement, at AGN 18 ER000004986 . ) In addition, the agreement stated • (Three - Way Agreement , at AGN_FER000004999 . ) To the extent t hat Ferring of the Ferring Patents , Perr ing argues that w~ s sucl a co - inven t or clauses demonstra te that the Ferring Patents cannot fall within t he scope of the assignments. While the language as described above appears to assign Dr. Fein's rights , if any , to AllergaB under the different 20 10 agreements, that interpretation s in tensi on and could be in consist en t wit h th e provisions relie~ upon Ferring . However , whether the conflicting provi ~ ions by resulted from a scriv ener ' s e rror or an incorrect repres f ntation, particularly i n light of the ntent of the parties , present s factual disputes irresolvable on t he instant mo ion and should be addressed at trial . Moreover , whether the ri ghts could have been transf erred under the terms of the agreements described abo, e is only part of the question ; what is similarly irresolvable at present , and remains to be dete r mi ne ' , is t he nature and b r eadth of the 19 rights transferre d by Fein. That question forms the very basis of the pending trial, where the question of Fein 's inventorship I of the Ferring Patents is to be determined . The extent to which Fein had rights in Ferring Patents, and the relationship between Ferring and Fein in the inventorship of the intellect u al pr o perty implicated in the Ferring Patents, direct ly connects with the degree to which Fein was an owner of s b ch intellectual I property, sole or othe rwise. As such, " [w]here an issue of s t anding is so closely related to, if not inextric ably entwined with, an issue on the merits, district courts have some leeway as to the procedure it wishes to fo ll ow ." Leighton Techs . LLC v. Oberthur Card Sys., S.A., 531 F. Supp. 2d 591, 594 2008) (S .D.N. Y. (internal quotation marks and citation omitted) . As the question of inventorship is mean ingfully connected with the issue of standing , it is proper to wait until the conclusion of trial to make a determination. See All. For Envtl . Renewal, 436 F.3d at 88 (stating that "where the evidence concerning standing overlaps with evidence on the merits, the Court might pre fe r to proceed to trial and make its j uri sdictiona l of the evidence"). 20 ru~ ing at the close - - _l _ -· iii . Substitution Is Appropriate "Substitut ion of a successor in interest . 25(c) . under Rule is generally within the sound discretion of the trial court .'" Taberna Capital Mgmt ., LLC v . Jaggi , No . 08 Civ . 11355 (DLC), 2010 WL 1424002 , at *2 (S . D. N. Y. Apr . 9, 2010) (quoting Organic Cow , LLC v . Center for New Eng. Dairy Compact Research , 335 F . 3d 66 , 71 (2d Cir . 2003) . "[D]istrict courts within the Second Circuit have suggested that a primary consideration in deciding a motion pursuant to Rule 25(c) is whether substitution will expedite and simplify the action." Banyai v . Mazur , No. 00 Civ. 9806 (SHS), 2009 WL 3754198, at *3 (S . D. N. Y. Nov . 5 , 2009) ; see also FDIC v . Tisch , 89 F.R.D. 446 , 448 (E.D.N.Y. 1981) ("The decision to order substitution or joinder is to be made by considering how the conduct of the lawsuit will be most facilitated . ,, ) . Substitution is appropriate here. The terms of the March 2010 Agreement provide that upon early termination of the agreement by Allergan, any assigned rights to Fein 's intellectual property-the parameters of which remain to be determined-revert to Reprise and Serenity. § (Mar d h 2010 Agreement 13 .S (b) . ) Counterclaim Plaintiffs intend to pursue these 21 alleged interests vigorously at the upcoming trial . All relevant discovery has already occurred and will be unaffected by the substitution . Substitu tion will " not affect the substantive rights of the parties ," and any arguments that could have been used for or against Allergan can be used with Counterclaim Plaintiffs now in their place . Travelers Ins . Co. , 164 F. R . D. at 164 (S.D.N . Y. 1995) (collecting cases) . Accordingly, the motion to substitute parties is granted. The Parties' Motions to Seal are Granted Both parties have also moved to have portions of their respective memoranda of law and accompanying declarations sealed pursuant to the protective order previously fil l d in this case. (S ee Dkt . No. 124 . ) These are judicial documents "relevant to the performance of the judicial function and useful in th e judicial process" and to which a "presumption of access attaches ." Lugosch v . Pyramid Co. of Onondaga , 435 F.3 d 110 , 119 (2d Cir . 2006) ; see id. at 119 - 20 (outlining the competing interests to be weighed when sealing materials). After considering the presumption of public access to judicial documents against the privacy interests of the proprietary and confidential materials submitted , both mo tions are granted. See 22 In re New York Times Co. to Unseal Wiretap & Search Warrant Materials , 577 F . 3d 401 , 410 n . 4 (2d Cir . 2009) ("When litigation requires disclosure of trade secrets, the court may disclose certain materials only to the attorney l involved."); Encyclopedia Brown Prods. , Ltd. v. Home Box Office, Inc., 26 F. Supp . 2d 606 , 612 (S.D . N.Y . 1998) ("Potential damage from release of t rade secrets is a legitimate basis for sealing documents and restricting public access during trial. " (collecting cases)) . 23 • ..c,. ,. Conclusion For the reasons set forth above, Ferring's mot ion to dismiss is denied, Counterclaim Plaintiffs and Al lergan's motion for substitution is granted, and both parties' motions to seal are granted. The Clerk of the Court is requested to amend the caption by substituting Reprise and Serenity for Allergan as counterclaimants. In light of the protective order entered in this case, the parties are directed to jointly submit a redacted version of this Opinion to be filed publically within one week of the date of this Opinion. It is so ordered. New York, NY September f , 2017 ROBERT W. SWEET U.S.D.J. 24

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