932 F. Supp. 2d 493
S.D.N.Y.2013Background
- Ferring sues Allergan, Serenity, Reprise, Fein, and Nardi over desmopressin patents and related conduct (17 counts).
- Ferring developed desmopressin and led development of its desmopressin market under Minirin; Norgaard and Senderovitz conducted key analyses on dose efficacy and hyponatremia risk.
- Fein and Nardi had employment-related obligations and later formed CNF, Markus, Serenity, and Reprise to pursue desmopressin ventures; Fein is listed as sole inventor on multiple patents; Nardi’s and Fein’s post-Ferring activities are central to the action.
- In 2010, Allergan obtained patent rights through agreements with Reprise/Serenity for SER-120; 2012 Hague proceedings involved alleged confidential Ferring materials; Ferring seeks ownership, damages, and various equitable remedies.
- The court grants the motion to dismiss Counts 4–17, but denies dismissal of Counts 1–3; the analysis centers on laches, statute of limitations, and pleading sufficiency.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Inventor status challenges (Counts 1–3) barred by laches? | Ferring contends laches clock starts at patent issuance under §256. | Allergan argues laches runs from earliest notice and pre-issuance knowledge; delays bar claims. | Counts 1–3 not barred by laches; laches period begins at issuance and is under six years here. |
| Ownership claims time-barred (Counts 4–5)? | Ferring asserts entitlement to Fein’s patents via assignment/employee obligations. | Defendants contend breach-based ownership claims accrued early and are time-barred. | Counts 4–5 are time-barred and dismissed with prejudice. |
| Breach of common law duties and aiding/abetting (Counts 6–9) dismissed? | Ferring alleges confidentiality/loyalty breaches by Fein/Nardi aided by Allergan and others. | Defendants contend no cognizable duties or adequate pleading of aiding/abetting. | Counts 6–9 dismissed for lack of pleading and timeliness. |
| Breach of contract, interference, misappropriation, and related claims (Counts 10–13, 15–17) viability? | Ferring asserts contract-based and tort-based harms from post-employment activities. | Defendants argue lack of contractual relation with several defendants and timeliness/pleading flaws. | Counts 10–13, 15–17 dismissed on improper pleading, timeliness, and lack of causation/relationship. |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (pleading standard for plausibility; not mere conclusory assertions)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (plausibility standard; need factual content supporting claims)
- Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys. Inc., 988 F.2d 1157 (Fed.Cir. 1993) (laches applicable to §256 inventorship claims; accrual at issuance)
- Harsco Corp. v. Segui, 91 F.3d 337 (2d Cir. 1996) (elements of breach of contract claim; rule of pleading)
- Spencer v. Green, 42 A.D.3d 521 (2d Dep't 2007) (duty to disclose in fraudulent concealment requires fiduciary relationship)