Ferring Pharmaceuticals Inc. et al v. Serenity Pharmaceuticals, LLC et al

Filing 682

ORDER DENYING COUNTERCLAIMANTS' MOTION FOR RECONSIDERATION denying 676 Motion for Reconsideration. The motion is simply a request that the Court reconsider its analysis and reach a different result. (See Dkt. No. 677 passim.) That is not a proper motion for reconsideration; it is therefore denied. It is so ordered. The Clerk of the Court is directed to remove the motion at Dkt. No. 676 from the Court's list of pending motions and further set forth in this Order. (Signed by Judge Colleen McMahon on 5/13/2020) (rro)

Case 1:17-cv-09922-CM-SDA Document 682 Filed 05/13/20 Page 1 of 3

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
FERRING PHARMACEUTICALS INC.,
FERRING B.V., and
FERRING INTERNATIONAL CENTER S.A.,
Plaintiffs,
No. 17 Civ. 09922 (CM)(SA)

v.
SERENITY PHARMACEUTICALS, LLC, and
REPRISE BIOPHARMACEUTICS, LLC,
Defendants.
SERENITY PHARMACEUTICALS, LLC, and
REPRISE BIOPHARMACEUTICS, LLC
Counterclaim-Plaintiffs,
v.

No. 17 Civ. 09922 (CM)(SA)

SERENITY PHARMACEUTICALS, LLC, and
REPRISE BIOPHARMACEUTICS, LLC,
Defendants.

ORDER DENYING COUNTERCLAIMANTS’ MOTION FOR RECONSIDERATION
McMahon, C.J.:
Reconsideration of a previous order by the court is an “extraordinary remedy to be
employed sparingly in the interests of finality and conservation of scare judicial resources.” In re
Health Mgmt. Sys. Inc. Sec. Litig., 113 F. Supp. 2d 613, 614 (S.D.N.Y. 2000) (internal citations
and quotation marks omitted). “The provision for reargument is not designed to allow wasteful
repetition of arguments already briefed, considered, and decided.” Schonberger v. Serchuk, 742 F.
Supp. 108, 119 (S.D.N.Y. 1990). “The major grounds justifying reconsideration are ‘an
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Case 1:17-cv-09922-CM-SDA Document 682 Filed 05/13/20 Page 2 of 3

intervening change in controlling law, the availability of new evidence, or the need to correct a
clear error or prevent manifest injustice.’” Virgin Atl. Airways Ltd. v. Nat’l Mediation Bd., 956
F.2d 1245, 1255 (2d Cir. 1992). Motions for Reconsideration are not means to make the same
arguments already rejected by the Court after careful consideration. To these ends, a request for
reconsideration under Local Rule 6.3 must point to controlling law or factual matters put before
the court in it its decision on the underlying matter that the movant believes the court overlooked
and that might reasonably be expected to alter the conclusion reached by the court. See Schrader
v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995).
Counterclaimants seek reconsideration of the Court’s decision denying in part and granting
in part its motion for judgment on the pleadings. (Dkt. No. 676) The motion is based on
misrepresentations of the Court’s conclusions and subtle mischaracterizations of the law.1 For
example, Counterclaimants aver that the Court interpreted Ҥ 102(f) to require only one of the two
steps required to establish improper inventorship under 102(f)—i.e. … that Ferring need only
prove that Dr. Fein was not the inventor.” (Dkt. No. 677, Motion p. 4.) Supported by a quote taken
wholly out of context, this argument is premised on a fundamental mischaracterization of the
Court’s position.
As a threshold matter, the Court is plainly aware of both steps required to establish
improper inventorship under 102(f). The passage Counterclaimants quote speaks directly to the
different legal effects of sections 256 and 102(f). Through § 256, Ferring would have the Court
substitute Ferring employees for Dr. Fein as the inventor of the patents. The patent would remain

1

To point out just one, in SCA Hygiene, the Supreme Court explicitly noted that it did not
address the Federal Circuit's reversal of the District Court's equitable estoppel holding. SCA
Hygiene Prod. Aktiebolag v. First Quality Baby Prod., LLC, 137 S. Ct. 954, 960 (2017). That it
did not reverse Aukerman on the issue of equitable estoppel tells us nothing when it expressly
declined to consider the issue.
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Case 1:17-cv-09922-CM-SDA Document 682 Filed 05/13/20 Page 3 of 3

valid, but in the name of inventors other than Fein. Through 102(f) by contrast, Ferring defends
itself in a patent infringement suit by asking the Court to deem the patents invalid, no matter who
the inventor.
The Court has already noted that the different legal effects of each provision necessarily
changes the equitable estoppel determination and counsels against applying collateral estoppel.
These differing legal effects were the basis for the Court’s determination that applying equitable
estoppel in one instance – to deny Ferring’s quest to be substituted as the inventor and owner of
the patent – is a different matter than using equitable estoppel by way of collateral estoppel to
invalidate the patent. Regardless of whether the analyses underlying sections 256 and 102(f) are
the same, the equities associated with each are materially different. And, of course,
“Collateral estoppel is confined … to ‘situations where the matter raised in the second suit
is identical in all respects with that decided in the first proceeding ….’” Neaderland v. Comm’r,
424 F.2d 639, 642 (2d Cir. 1970).
The motion is simply a request that the Court reconsider its analysis and reach a different
result. (See Dkt. No. 677 passim.) That is not a proper motion for reconsideration; it is therefore
denied.
It is so ordered. The Clerk of the Court is directed to remove the motion at Dkt. No. 676
from the Court’s list of pending motions.

Dated: May 13, 2020

Chief Judge
BY ECF TO ALL PARTIES
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