Ferring Pharmaceuticals Inc. et al v. Serenity Pharmaceuticals, LLC et al
| Ferring Pharmaceuticals Inc., Ferring B.V. and Ferring International Center S.A. |
| Serenity Pharmaceuticals, LLC and Reprise Biopharmaceutics, LLC |
| 1:2017cv09922 |
| December 20, 2017 |
| US District Court for the Southern District of New York |
| Foley Square Office |
| Robert W. Sweet |
| Patent |
| 28 U.S.C. ยง 2201 |
| None |
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The following documents for this case are available for you to view or download:
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Filing
711
ORDER: Neither counsel for the Perring Plaintiffs nor counsel for the Counterclaimants, Serenity and Reprise, has identified any information that needs to be redacted from this court's March 11, 2020 decision and order (Dkt. No. 670). (See Dkt. Nos. 674, 675.) The Clerk of Court is directed to unseal the opinion at Docket Number 670. (Signed by Judge Colleen McMahon on 10/8/2020) (mml)
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Filing
700
NOTICE TO COUNSEL: Please upload unredacted versions - in both Word and PDF format - of your respective Findings of Fact and Conclusions of Law to a folder on the trial's Box. I also need a translation table that gives me OUR trial exhibit numbe r for the various exhibits that were also cited in Judge Castel's Findings of Fact and Conclusions of Law. I recognize that not all of the exhibits before Judge Castel were part of our case. The sooner you can get me a translation table, the bet ter. At oral argument, you should be prepared to discuss the significance of various specific findings made by Judge Castel, including whether the key differences between the Fein patents (which do not claim a specific dose, but rather claim any dose that would lead to a specific result) and the Ferring patents (which do claim specific dosages) are relevant to inventorship issues, and whether the shift in the burden of proof makes any difference. (Signed by Judge Colleen McMahon on 7/16/2020) (mml)
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Filing
695
REMOTE PUBLIC ACCESS INFORMATION FOR TRIAL: The Court will be conducting a bench trial from July 6-16 in Ferring Pharmaceuticals In c. et al v. Serenity Pharmaceuticals, LLC. Chief Judge Colleen McMahon will be in an open courtroom (Courtroom 24A), with the parties participating via videoconference. The public is free to attend in person or dial-in. Dial by your location + 1 301 715 8592 US (Germantown) + 1 312 626 6799 US (Chicago) + I 646 876 9923 US (New York) + 1 253 2 15 8782 US (Tacoma) + 1 346 248 7799 US (Houston) + 1 669 900 6833 US (San Jose) Meeting ID: 979 9713 4374 Password : 585807. Audio or video reproduction of the proceeding is strictly prohibited. (Signed by Judge Colleen McMahon on 7/6/2020) (mml)
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Filing
690
TRIAL PROCEDURES: I thank counsel for taking the time to go over your proposed remote-access platforms with James Griffenkrantz, the court's audio-visual specialist, as well as for educating me. As a result of your conversations, his recommendat ion, and one other consideration, I have made two decisions that could not be made during last week's conference call. First, the trial will be "all remote," at least in the sense that all the witnesses will testify remotely. Second, t he provider will be TrialGraphix, using the product TRIALanywhere. The decision to go "all remote" became a no-brainer when I reviewed our draft protocols for Phase II Re-entry with the court's senior staff. Under the protocols we are adopting, individuals who have traveled abroad in the preceding two weeks will not be permitted to enter the courthouse. We have five or six witnesses - about half of our witnesses, and all but one non-expert - who would be traveling in from Europe. Putting to one side the issue of whether they could get into the United States at all - which just introduces additional uncertainty in a situation where no more is needed - they would have to arrive in New York by June 22 so they could quarantine f or two weeks before we would allow them into the courthouse. At some point, this just gets silly. Given all the constraints we face, the witnesses should testify from where they reside. I will have read their directs and the expert reports. T can wat ch their crosses. Every witness for both sides gets the same benefit and suffers from the same perceived handicaps. It is the fairest way to proceed. Whether counsel would prefer to cross examine remotely or from the courtroom is up to you, but you need to work it out, because I will not have just one side's lawyers in the courtroom. I am convinced that it can be done safely from the courtroom, and there are certainly good reasons to want you in the courtroom with me (it is a huge courtro om, you know how easy it will be to keep socially distanced). But if counsel from Texas have a problem living out of a suitcase in Manhattan for two weeks (and this could take seven or eight trial days, because I am convinced the remote trial will r un longer), then everyone should just be remote. If we have a glitch that costs us a few hours, or a day, it is more easily dealt with if we are all working remotely. If it were safe, I might consider having lead trial counsel come to court after I h ave heard all the witnesses, so we can have a real bench trial closing argument, with a lot of give and take, lawyers answering my questions as well as making their points. I would not expect - indeed, I would strongly discourage - bringing a lot of people to court for closing argument. After speaking with you and with both vendors, Mr. Griffenkrantz recommends that we use TrialGraphix, and I will adopt his recommendation. While both vendors offer an excellent product, the court has a modicum o f experience with this vendor. Mr. Griffenkrantz strongly prefers its normal model of in-court tech support (as, I confess, do I, Luddite that I am). Although TrialGraphix has indicated that it would adapt its product to use one of the platforms supp orted by the court (Skype for Business, for example). I would actually prefer to use the platform on which the product was created - which I understand is a secure version of Zoom - provided I can be given a computer on which I can watch the testimon y that will have no connection to the court's secure intranet. I understand that TrialGraphix will provide me with a laptop for this purpose; I can then use my own court-issued laptop to take notes (which I will most certainly need to do), know ing that they will automatically be stored on the court's secure system. The various protocols that Ms. Bourke described in her letter of May 19, 2020 - including especially the shipping of sealed binders to witnesses - strike me as eminently se nsible. I will be working off a hard copy set of exhibits, because I like to take notes on exhibits as we use them. Whether an attorney is present with witnesses during their testimony is entirely up to you; I rather expect that one will be present, which would make it even easier to deal with exhibits, since the sealed binders could be provided to counsel, who, as officers of the court, could be counted on not to break the seals or show the documents to their clients prematurely. Making these decisions now means that we should be in a position to proceed without difficulty by July 6. TrialGraphix will arrange for the installation of equipment with Mr. Griffenkrantz and with each side individually. Please let me know what else I can help you with prior to trial. Meanwhile, I have a lot of reading to do. (Signed by Judge Colleen McMahon on 5/27/2020) (mml)
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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)
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Filing
678
NOTICE TO COUNSEL: Counsel, l have not bothered you since we adjourned this trial. However, I need to advise you that I fully intend to try this case starting May 26 - or no later than a week of two after that. This is a bench trial. I can take testi mony in writing (as I usually do at bench trials) and listen to cross examination conducted remotely. Alternatively, witnesses who are located in other countries and cannot travel to court can have their depositions submitted instead - and I am sure that all the really relevant witnesses were deposed. But I need to get this case tried, and I am notprepared to wait until the world is back to normal to get it done. Bench trials are the one type of proceeding that can go forward, even during a pandemic. Let me know how you wish to proceed. Just understand that we are going to proceed. (Signed by Judge Colleen McMahon on 4/23/2020) (ama)
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Filing
669
DECISION ON MOTIONS IN LIMINE denying as moot 642 Motion in Limine; granting 646 Motion in Limine; denying 649 Motion in Limine; denying 651 Motion in Limine. This constitutes the decision and order of the court. It is a written opinion. The Clerk is directed to remove the following motions from the court's list of open motions: Docket ## 642, 646, 649, and 651. (Signed by Judge Colleen McMahon on 3/11/2020) (mml)
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Filing
654
RULING ON REQUESTS TO SEAL denying 634 Motion to Seal Document. The court, for its rulings on the patties' requests to file certain documents under seal and to redact portions of those documents from the public record (Document #634): Affidav it of Seymour H. Fein (Docket #623). All of counterclaimants' requests to keep certain materials under seal are DENIED. No real reason has been given why this information (much of which would have to be part of the record in the bankruptcy proce eding of Avadel) is such a big secret. Information concerning licenses that are pertinent to this action is not confidential information. The fact that some information about the termination of various licensing agreements may have been kept confiden tial to date does not make it a trade secret or otherwise justify cloaking it in secrecy. It is part of the history of the commercial dealings of parties to this lawsuit concerning the product at issue in this lawsuit. The affidavit at Docket #623 shall be filed in unredacted form by Friday, February 28 at 5 PM. Affidavit of Chrisotpher Vellturo, PhD (docket #634). Dr. Vellturo is Ferring's damages expert. The court is not going to award secret damages, as further set forth in this Orde r. Direct Testimony of Andrew Carter (Docket #625). The redaction requests are extensive and would effectively force the court to evaluate the question of a reasonable royalty (assuming we get there) in secret, which I will not do. Moreover the par ties' description of what is contained in many of these paragraphs in simply not accurate - conclusions by an expert that are "based on" allegedly confidential data that is not set out in the paragraph do not thereby become "co nfidential" conclusions. And the court will not be making "secret" findings of fact in this case, as further set forth in this order. I expect proper filings to be made by close of business tomorrow. This order does not address Serenit y/Reprise's request for permission to file proposed findings of fact and conclusions of law under seal. (Docket # 605). But the parties need to understand that I will be filing a PUBLIC decision. I will not be making findings of fact or conclus ions of law under seal. I will not seal "damages analysis" simply because it relies on the terms of agreements between and among the parties to this lawsuit or to the products at issue in this lawsuit. Both parties want to seal documents th at simply do not contain "highly proprietary" information. The formula for Coca Cola is "highly proprietary" information in which the owner has a significant privacy interest. The fact that you have agreements with each other rel ating to the products that underlie this lawsuit - agreements that underlie this lawsuit - is not private information. I realize that a rather liberal standard of "confidentiality" was permitted by my predecessor. The Second Circuit has made is quite clear that this practice is no longer to be followed. This constitutes the decision and order of the court. (Signed by Judge Colleen McMahon on 2/27/2020) (mml)
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Filing
598
NOTICE TO COUNSEL: Counsel, I have letters asking to seal various filings (apparently in their entirety) because they contain material that you have designated as "confidential" pursuant to your protective orders. (See, Docket## 574, 592, 594) The time for protective order presumptions has passed. If you want me to seal a document, you need to provide me with a copy of the document, suitably marked so I can distinguish between what is proposed to be redacted and what can remain pub lic (not everything could possibly be confidential). And you need to provide me with a reason why each thing you propose to redact is in fact confidential. As you will recall, when you entered into the protective order, it contained an addendum sayi ng that my presumption is that material can be made public; so you need to convince me otherwise. In short, I can either deny your letter motions or I can await your presentation of enough information so that, on a redaction by redaction basis, I can make a ruling. (Signed by Judge Colleen McMahon on 2/5/2020) (mml)
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Filing
585
ORDER granting 584 Letter Motion for Extension of Time to File. OK. (Signed by Judge Colleen McMahon on 1/29/2020) (mml)
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Filing
578
MEMORANDUM DECISION AND ORDER DENYING DEFENDANTS' MOTIONS FOR RELIEF UNDER FEDERAL RULE OF CIVIL PROCEDURE 60(b) denying 569 Motion to Vacate. For the above reasons, Ferring's motion to vacate the Collateral Estoppel Opinion is DENIED. The Clerk is directed to remove the motions at Docket Number 569 from the Court's list of open motions. One further note: the court is distressed to see that the appeal from Judge Sweet's Equitable Esloppel Order - which has some impact o n the upcoming trial in this case - is not on an expedited track. That being so, I am considering, not a postponement of the trial - that is not going to happen - but whether to rule on all issues except those that might be impacted if Judge Sweet 's Equitable Esloppel Order were overturned, and to hold my ruling on those issues pending a decision in the federal Circuit. The pru1ies may feel free to weigh in on that. (As further set forth in this Order.) (Signed by Judge Colleen McMahon on 12/27/2019) (cf)
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Filing
571
OPINION AND ORDER: For the foregoing reasons, Ferring's Letter Motion (ECF No. 557) is GRANTED IN PART and DENIED in part. Within 30 days of the date of this Order, Counterclaimants shall produce documents responsive to Categories 5 through 10. SO ORDERED. (Signed by Magistrate Judge Stewart D. Aaron on 11/1/2019) (kl)
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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.
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Filing
488
OPINION AND ORDER re: 343 MOTION to Preclude Ferring from presenting argument or evidence directed to untimely dislcosed claim construction positions and to impose sanctions for deposition misconduct, filed by Reprise Biopharmaceut ics, LLC, Serenity Pharmaceuticals, LLC, Avadel Specialy Pharmaceuticals, LLC. For the foregoing reasons, Counterclaimants' motion (ECF No. 343) is DENIED. Within 30 days of the date of this Order, Dr. Dressman shall be made available by Ferring for a continued deposition not to exceed two hours. SO ORDERED. (Signed by Magistrate Judge Stewart D. Aaron on 4/24/2019) (kl)
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Filing
421
OPINION AND ORDER: The Shared Preamble and the Asserted Claims of the 203 and 321 Patents are construed consistent with this Opinion. It is so ordered. (Signed by Judge Robert W. Sweet on 1/22/2019) (ne)
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Filing
408
OPINION AND ORDER re: 221 MOTION to Amend/Correct 18 Amended Complaint, 115 Answer to Counterclaim filed by Ferring Pharmaceuticals Inc., Ferring B.V., Ferring International Center S.A. For the reasons set forth above, Plaintiff's motion forleave to amend its complaint and its counterclaims in reply is denied. It is so ordered. (Signed by Judge Robert W. Sweet on 1/4/2019) (rro)
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Filing
300
OPINION AND ORDER re: 117 MOTION for Preliminary Injunction filed by Reprise Biopharmaceutics, LLC, Serenity Pharmaceuticals, LLC, Avadel Specialy Pharmaceuticals, LLC: For the reasons set forth above, Defendants' motion for a preliminary injunction is denied with leave to renew. (Signed by Judge Robert W. Sweet on 11/8/2018) (jwh)
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