Ferring B.V. v. Allergan, Inc.
343 F. Supp. 3d 284
S.D. Ill.2018Background
- Ferring sued in 2012 claiming inventorship over desmopressin formulation patents owned by Allergan; Allergan counterclaimed in 2014 asserting inventorship over Ferring's patents.
- After multiple procedural rulings and partial dismissals, the only remaining live issue at trial was whether Fein was a co‑inventor of the Ferring Patents ('429 and '654).
- Assignment and transfer agreements (March 2007 Agreement, Three‑Way Agreement, and 2017 Dissolution/Reversion) created disputed factual issues about who held rights in the patents at various times.
- Trial began February 2018; Fein testified about his intent to transfer rights but also acknowledged factual gaps about ownership at the time of prior agreements.
- The court denied Ferring’s Rule 52(c) motion to dismiss counterclaims for lack of standing and denied joinder of Fein under Rule 17, finding any prior rights Fein held had been transferred and were held by Reprise and Serenity when substitution occurred in 2017.
- Ferring moved under 28 U.S.C. § 1292(b) to certify the court’s May 24, 2018 Standing Opinion for interlocutory appeal and to stay proceedings pending appeal; the court granted both motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a historical gap in standing (present earlier but cured by later substitution) requires dismissal | A historical defect that was cured before it was acknowledged cannot require dismissal; Rule 25(c) substitution can cure standing gaps | The gap in standing when counterclaims were filed is dispositive and cannot be cured by later substitution; dismissal is required | Court certified the question for interlocutory appeal, finding it a controlling legal issue with substantial grounds for disagreement |
| Whether the Standing Opinion involves a controlling question of law warranting §1292(b) certification | Reversal would terminate the action because counterclaims are the only remaining claims | Opposes interlocutory appeal because trial would be delayed if appeal affirmed | Court: Yes — reversal would end the case, so issue is controlling |
| Whether interlocutory appeal will materially advance termination of the litigation | Immediate appeal could terminate the case and avoid a potentially null trial | If appeal affirms, delay will push trial further; but proceeding now risks trying a case without jurisdiction | Court: Certifying appeal will materially advance litigation because avoiding a trial that might be a nullity outweighs delay |
| Whether a stay pending appeal is warranted (Nken factors) | Stay justified: reasonable likelihood of success on the unique standing question; irreparable harm if trial proceeds; minimal prejudice to defendants; public interest in avoiding waste | Defendants note added delay and ongoing pendency of related Delaware case | Court granted stay: likelihood of success and irreparable harm favor stay; no substantial prejudice; public interest supports conserving resources |
Key Cases Cited
- Mentor H/S, Inc. v. Med. Device All., Inc., 244 F.3d 1365 (Fed. Cir. 2001) (joinder can cure a technical jurisdictional defect involving IP rights)
- Caterpillar Inc. v. Lewis, 519 U.S. 61 (1996) (a jurisdictional defect cured before trial means dismissal is improper)
- Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198 (Fed. Cir. 2005) (reacquisition of rights before judgment can restore standing)
- Grupo v. Atlas Global Group, L.P., 541 U.S. 567 (2004) (limits on extending Caterpillar where jurisdictional issues were raised before verdict)
- Nken v. Holder, 556 U.S. 418 (2009) (four‑factor framework for stays pending appeal)