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)
~--· ~ "' 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
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?