Ferring Pharmaceuticals Inc. et al v. Serenity Pharmaceuticals, LLC et al
Filing
490
OPINION AND ORDER re: 330 MOTION to Strike to strike: (1) portions of Plaintiffs Final Invalidity and Unenforceability Contentions for U.S. Patent Nos. 7,405,203, 7,579,321, and 7,779,761 and (2) portions of the November 1, 2018 Opening Expe rt Report of Meindert Danhof, filed by Reprise Biopharmaceutics, LLC, Serenity Pharmaceuticals, LLC, Avadel Specialy Pharmaceuticals, LLC. For the foregoing reasons, Counterclaimants' motion (ECF No. 330) is DENIED. Counterclaimants sha ll have seven (7) days to propound twenty (20) written discovery requests to Ferring regarding the defenses at issue (in the form of interrogatories, requests to admit and/or document requests). Ferring shall respond to such requests within 30 day s thereafter. Upon receipt of Ferring's responses, for good cause shown, Counterclaimants may seek leave of this Court within seven (7) days to reopen the deposition of Dr. Spaans to make inquiry regarding the discovery responses. Within se ven (7) days of the date of this Order, counsel for Counterclaimants shall file a redacted version of the 5/1/19 Joint Letter on ECF and shall file the complete, unredacted version under seal with the Clerk of Court. (Signed by Magistrate Judge Stewart D. Aaron on 5/2/2019) (kl) Transmission to Sealed Records Clerk for processing.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
5/2/2019
Ferring Pharmaceuticals Inc. et al.,
Plaintiffs,
-against-
1:17-cv-09922 (CM) (SDA)
OPINION AND ORDER
Serenity Pharmaceuticals, LLC et al.,
Defendants.
Before the Court is the motion of Defendants/Counterclaim-Plaintiffs Serenity
Pharmaceuticals, LLC, Reprise Biopharmaceutics, LLC and Avadel Specialty Pharmaceuticals, LLC
(collectively, “Counterclaimants”), pursuant to Federal Rule of Civil Procedure 37(c)(1), to strike
(1) portions of the Final Invalidity and Unenforceability Contentions for U.S. Patent Nos.
7,405,203, 7,579,321 and 7,779,761 of Plaintiffs Ferring Pharmaceuticals Inc., Ferring B.V. and
Ferring International Center S.A. (collectively, “Ferring”); and (2) portions of the November 1,
2018 Opening Expert Report of Meindert Danhof, Ph.D. (Not. of Mot., ECF No. 330.) The Court
has considered Counterclaimants’ memorandum of law (ECF No. 331), Ferring’s opposition (ECF
No. 356), Ferring’s Declaration of Mary W. Bourke (ECF No. 357), Counterclaimants’ reply (ECF
No. 377), Counterclaimants’ Declaration of Lisamarie LoGiudice (ECF No. 378) and the parties’
Joint Letter emailed to my Chambers on May 1, 2019 (“5/1/19 Joint Letter”). As set forth below,
the Court DENIES Counterclaimants’ motion, but awards the relief set forth herein. 1
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I have the authority to decide this motion via Order, rather than issuing a Report and Recommendation
to Chief Judge McMahon, since I am declining to issue the sanctions sought. See Ferring Pharm. Inc. v.
Serenity Pharm., LLC, No. 17-CV-09922 (CM) (SDA), 2019 WL 1782387, at *1 (S.D.N.Y. Apr. 24, 2019).
Counterclaimants contend in the May 1, 2019 Joint Letter that Ferring made “untimely
and incomplete disclosure of its prior art invalidity defenses” in violation of court directives, and
“that permitting Ferring to introduce evidence at trial directed to those defenses would be
unfairly prejudicial.” (5/1/19 Joint Letter at 1.) Ferring counters that its new expert, Dr. Spaans
(who replaced Dr. Danhof due to medical reasons), provided an expert report regarding the
matters about which Counterclaimants complain; that Counterclaimants’ expert “devoted 28
pages of his . . . responsive report” to addressing these matters; and that Dr. Spaans was asked
questions at deposition regarding these matters. (Id. at 3.)
Rule 37(c)(1) of the Federal Rules of Civil Procedure states that “[i]f a party fails to provide
information . . . as required by Rule 26(a) or (e), the party is not allowed to use that information
. . . to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially
justified or is harmless.” Fed. R. Civ. P. 37(c)(1).
Despite the seeming self-executing nature of the preclusion sanction contained in
Rule 37, imposition of such sanction remains within the trial court’s discretion; the
text of the rule provides that, after affording the dilatory party an opportunity to
be heard, the Court has the discretion to impose less severe sanctions. . . . Indeed,
courts have “broad discretion” to determine the nature of any sanction that
should be imposed under Rule 37, “based on all the facts of the case.” Further, as
preclusion of evidence is a “harsh remedy,” it “should be imposed only in rare
situations.”
Cates v. Trustees of Columbia Univ. in City of New York, No. 16-CV-06524 (GBD) (SDA), 2019 WL
1433709, at *3 (S.D.N.Y. Apr. 1, 2019) (citations omitted).
The Court finds in its discretion that the severe sanction of preclusion is not warranted
here, since any failures by Ferring were harmless. Counterclaimants were able to take the
deposition of Dr. Spaans and to prepare a report of their own expert regarding the matters at
issue. Nevertheless, given Ferring’s belated assertion of its defenses, in order to protect
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Counterclaimants against any prejudice, the Court will permit Counterclaimants to take the
additional discovery set forth below.
For the foregoing reasons, Counterclaimants’ motion (ECF No. 330) is DENIED.
Counterclaimants shall have seven (7) days to propound twenty (20) written discovery requests
to Ferring regarding the defenses at issue (in the form of interrogatories, requests to admit
and/or document requests). Ferring shall respond to such requests within 30 days thereafter.
Upon receipt of Ferring's responses, for good cause shown, Counterclaimants may seek leave of
this Court within seven (7) days to reopen the deposition of Dr. Spaans to make inquiry regarding
the discovery responses.
Within seven (7) days of the date of this Order, counsel for Counterclaimants shall file a
redacted version of the 5/1/19 Joint Letter on ECF and shall file the complete, unredacted version
under seal with the Clerk of Court.
Dated: New York, New York
May 2, 2019
SO ORDERED.
________________________________
STEWART D. AARON
United States Magistrate Judge
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