OPINION
Defendants Allergan, Inc.; Allergan USA, Inc.; and Allergan Sales, LLC (collectively, “Allergan”); Serenity Pharmaceuticals Corporation, Serenity Pharmaceuticals, LLC (collectively, “Serenity”), Reprise Biopharmaceutics, LLC (“Reprise”), Dr. Seymour H. Fein (“Fein”) and Dr. Ronald V. Nardi (“Nardi”) (collectively, the “Defendants”) have moved pursuant to Rules 8, 9(b), and 12(b)(6) of Federal Rules of Civil Procedure to dismiss the complaint § the “Complaint”) of plaintiffs Ferring B.V., Ferring International, Center S.A., and Ferring Pharmaceuticals Inc. (collectively, “Ferring” or the “Plaintiffs”) alleging seventeen causes of action arising out of the obtaining and use of certain patents by the Defendants.
Based upon the conclusions set forth below, the Defendants’ motion is granted as to Counts 4-17 and denied as to counts 1-3.
I. The Facts & Prior Proceedings
Desmopressin is a synthetic hormone used to treat a variety of disorders related to excessive urine production. (See Compl. ¶¶ 27-28).
Ferring developed the world’s first pharmaceutical desmopressin products, launching desmopressin in Denmark in 1972 as a treatment for central diabetes insipidus. (Id. ¶ 29). Over the past several decades, Ferring almost single-handedly built the' current desmopressin market by leading the industry in developing novel formulations and obtaining regulatory approval to treat an increasing number of disorders. (Id. ¶¶ 29-^14). Given its efficacy, safety profile, and worldwide commercial success, Ferring markets various desmopressin products today under the Minirin® tradename and continues to conduct research and development (“R & D”) on desmopressin. (Id. ¶¶ 29, 30).
‘ Given desmopressin’s success in treating central diabetes insipidus, a Ferring affiliate in 1984 awarded Dr. Jens Peter Norgaard (“Norgaard”), then a medical doctor in Denmark, a grant to investigate the possibility of effectively treating nocturnal enuresis. (Id. ¶ 31). Norgaard’s work established that desmopressin successfully treated children suffering from this disorder, enabling Ferring to obtain regulatory approval and launch desmopressin for this purpose. (Id.) After becoming an employee with a Ferring affiliate, Norgaard also led the effort to gain regulatory approval for desmopressin as a treatment for nocturia, further expanding the reach of desmopressin therapy and Ferring’s Minirin® products. (Id. ¶¶32, 33). During the 1990s, Norgaard also investigated an adverse side effect associated with desmopressin, hyponatremia, in which excessive water retention causes an imbalance in
Dr. Thomas Senderovitz (“Senderovitz”) joined Ferring soon thereafter to build a pharmacokinetics department and began collaborating with Norgaard. (Id. ¶ 35). Senderovitz began pooling data both from in and outside of Ferring to generate comprehensive analyses of desmopressin’s properties, known internally as the EMF study. (Id. ¶¶ 35, 37). Norgaard and Senderovitz confirmed that desmopressin was far more potent than previously understood and that even low doses may yield maximum antidiuretic effect, while higher doses merely extend duration of action. (Id. ¶¶ 35, 36). Given these findings and the understanding that higher dosages may increase the risk of hyponatremia, Norgaard and Senderovitz proposed dosages designed to achieve maximum plasma levels of approximately 6-7 pg/ml or lower, yielding a duration of six hours or less. (Id.) Their studies later served as a basis for Ferring clinical studies targeted at further evaluating the efficacy of low doses of desmopressin. (Id. ¶ 38).
On August 30, 2001, Ferring decided to proceed with an orodispersible formulation project, and Senderovitz and his pharmacokinetics group developed study protocols in support of this endeavor, (Id. at ¶44.) Consistent with previous development plans considered in the 1990s, these protocols specified using the orodispersible formulation as a sublingual tablet. (Id.)
Fein and Nardi worked together in Fer-ring’s former Tarrytown, New York office beginning in the 1990s. (Id. ¶46). An “Employment Agreement” executed in connection with the promotion allegedly manifests Nardi’s “agree[ment] to assign his ownership rights to any invention (or any improvement upon or addition to an invention) applicable to the business then being carried on by Ferring that Nardi made, discovered, or participated in the discovery of’ during the course of his employment. (Id. ¶ 48).
When Nardi joined Ferring, he began working with Fein, then a consultant for Ferring. (Id. ¶ 52.) In 1997, Fein became an employee at Ferring with the position of Executive Director, Clinical Research and Medical Affairs. (Id. ¶ 53.) He was an employee for just one year, however, and then resumed his consulting role. (See id. ¶¶ 54-56.) In 2001, while Fein was a consultant, his “duties and responsibilities ... expanded to include assisting with developing (and potentially patenting) a desmopressin formulation.” (Id. ¶ 56.) Fein “continued to hold himself out as Medical Director” during that period. (Id. ¶ 59). For most of their tenure, neither Nardi or Fein nor that office had any involvement in desmopressin R & D. (Id. ¶ 50). After Nardi became Executive Vice President, Research and Development and Chief Scientific Officer on August 1, 2001, his responsibilities expanded to include Ferring’s development of the new orodispersible desmopressin formulation. (Id. ¶ 47, 50). His performance objectives and bonus criteria for 2001/2002 depended in part on obtaining patent protection for this formulation. (Id. ¶ 50).
Fein became a senior management member of - Ferring’s high-level Research Development Marketing committee (“RMDC”) (Id. ¶ 57) and began travelling to Copenhagen to attend various meetings concerning Ferring’s global research and development. (Id.) Fein also later served as the sponsor on several Ferring clinical studies, signing on Ferring’s behalf and holding himself out as Medical Director, Ferring Research and Development. (Id.
As of December 2001, Nardi was unaware of the status of the orodispersible study, internally designated CS004. (Id. ¶ 51.) When he inquired about its status, Senderovitz informed him that the protocol, specifying sublingual delivery and naming Senderovitz as study sponsor, had been completed. (Id.) Fein similarly did not participate in any desmopressin meetings until 2002. (Id. ¶ 57).
Ferring filed a patent application on an orodispersible desmopressin formulation in Great Britain on May 7, 2002, without identifying any inventors, and then filed a Patent Cooperation Treaty (“PCT”) application on September 20, 2002, identifying an initial set of six inventors, (Id. ¶¶ 62, 63), including Fein and Nardi based on their representations that they allegedly contributed the “sublingual” aspect of the orodispersible formulation. (Id. ¶ 65). With Nardi and Fein listed as inventors, Nardi could claim that he had fulfilled his performance objective of obtaining patent protection for the orodispersible desmopressin formulation. (Id. ¶ 65). In a May 2002 memorandum, Fein asserted that he made these alleged contributions jointly with Nardi and did so in the course of his regular duties at Ferring. (Id. ¶ 66).
Ferring terminated Nardi soon after the PCT filing. (See id. ¶ 67). In his severance agreement, Nardi reaffirmed that he would fulfill the post-employment obligations detailed in his August 1, 2001, employment agreement. (Id. ¶¶47, 48, 68, 69). He reaffirmed that he would assign his ownership rights to any inventions he made, discovered, or participated in discovering in the course of his employment. (Id. ¶ 68). He also reaffirmed that he would return all electronic and hard copy documents and materials containing information relating to Ferring’s business, including trade secret and confidential information. (Id. ¶ 69). Nardi further reaffirmed that he would keep secret, at all times, information concerning Ferring’s organization, business, and finances, including Ferring trade secrets. (Id.) During his termination and severance process, Nardi provided explicit assurances that he was complying with his obligations and returning all of his hard copy files and electronic documents on his home computer. (Id.) Ferring terminated Fein shortly thereafter on November 7, 2002, and directed him to return all Ferring materials, including computer files, wherever located. (Id. ¶ 70).
Before leaving Ferring, Fein incorporated CNF Pharma, LLC (“CNF”) with Linda Cheng (“Cheng”), a consultant for Fer-ring. (Id. ¶¶ 52, 77). Cheng, working with Maria Cheng (“Maria Cheng”) at Markus Research, Inc. (“Markus”), continued to consult for Ferring after the termination of Fein and Nardi and to have access to confidential and trade secret Ferring information, including the research of Norgaard and Senderovitz. (Id. ¶ 78). CNF and Markus have the same address: 120 North Main. Street, Suite 400, New City, New, York, 10956. (Id. ¶ 80). Fein and Cheng sought investors for the commercialization of . desmopressin (Id. ¶ 79), but kept their CNF venture and joint activities secret from Ferring. (Id. ¶ 77). On May 6, 2003, Fein filed a PCT patent application (App. No. PCT/ US03/14463) claiming priority to Ferring’s May 7, 2002 British application, (See id. ¶ 74.) Approximately six months later, he applied for what would ultimately issue as his U.S. Patent No. 7,799,761 (the “'761 Patent”), which disclosed various pharmaceutical compositions containing low dosages for desmopressin; he again claimed pri
Fein filed his patent application in 2003 and represented that his patent would be directed to some sort of subject matter relating to sublingual desmopressin. (Id. ¶¶ 73-74). In 2004, in response to Fer-ring’s inquiry, Fein’s counsel stated that these applications contained no confidential Ferring information. Ferring now claims that Fein and Nardi used Ferring “confidential, trade secret, proprietary, and privileged information” to design and conduct clinical studies of desmopressin and to obtain and commercialize patents. (Id. ¶¶ 75-76). Fein subsequently filed a divisional application for what would issue as U.S. Patent No. 7,405,203 (the “'203 Patent”), and a continuation application for what would issue as U.S. Patent No. 7,579,321 (the “'321 Patent”). (See id. Exs. A, B). Fein assigned his interest in these applications to defendant Reprise in 2008. (Id. ¶¶ 84, 90).
Fein and Cheng approached Nardi for help in their venture and in locating potential investors by at least 2004, and Nardi began working for CNF Pharma as a consultant. (Id. ¶ 81). Fein later incorporated Serenity, located at the same address as CNF and Markus, to focus on desmopressin and seek investors, hiring Nardi as a paid consultant. (Id. ¶82, 83). Fein then incorporated Reprise, located at the same address as Serenity Corp., CNF, and Markus, to similarly focus on desmopressin and investors. (Id. ¶¶84, 85). Fein and Nardi are principals of and equity participants in Reprise, and Cheng and Maria Cheng are partners. (Id. ¶ 84). Fein assigned his rights in patent applications relating to desmopressin to Reprise. (Id. ¶ 90). In 2009, Serenity was incorporated with Fein having the title of Chief Medical Officer. (Id. ¶ 105).
When Fein obtained a patent on July 29, 2008, U.S. Patent No. 7,405,203 (the “'203 patent”), Fein’s alleged invention had changed. This patent included claims directed to treatment methods involving maximum plasma concentration of lower than 10 pg/ml. (Id. ¶¶ 91, 92). He obtained a second patent on August 25, 2009, U.S. Patent No. 7,579,321, the '321 patent, also including claims involving maximum plasma concentrations of lower than 10 pg/ml. (Id. ¶¶ 94, 95). Both patents list Fein as the sole inventor. (Id. ¶¶ 91, 94).
On April 1, 2010, Reprise and Serenity entered into a global agreement with Allergan for the development and commercialization of SER-120, a Phase III investigational drug comprising a desmopressin formulation for intranasal administration. (Id. ¶ 106). Despite Fein, Nardi, Cheng and Maria Cheng all having past employment at Ferring where they worked on desmopressin, none of the parties to the SER-120 agreement attempted to clear any of the claims or otherwise contact Ferring during any due diligence before the agreement. Reprise purportedly assigned the two issued patents to Allergan, as well as a pending patent application. (Id.) The '761 patent claimed compositions purportedly establishing plasma concentrations lower than 10 pg/ml of desmopressin. (Id. ¶¶ 97-99). It also lists Fein as sole inventor. (Id. ¶ 97).
In 2011, Ferring brought entitlement proceedings against Fein and Reprise concerning a European patent application in the District Court of The Hague in the Netherlands. In response, Allergan, Serenity, Reprise, and Fein brought patent entitlement claims against Ferring. (Id. ¶ 107).
On January 11, 2012, Allergan, Serenity, Reprise, and Fein filed certain exhibits in the Netherlands proceedings alleged by Ferring to contain its confidential and
On January 22, 2012, Ferring demanded that Fein, Reprise, Serenity, and Allergan withdraw their exhibits, and return all Ferring information. (Id. ¶ 114).
The Complaint was filed on April 5, 2012. On June 29, 2012, Defendants’ filed the instant motion to dismiss, and the motion was heard and marked fully submitted on September 19, 2012.
II. Discussion
On a motion to dismiss pursuant to Rule 12(b)(6), all factual allegations in the complaint are accepted as true, and all inferences are drawn in favor of the pleader. Mills v. Polar Molecular Corp.,
To survive a motion to dismiss pursuant to Rule 12(b)(6), “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’ ” Ashcroft v. Iqbal,
In addition, the expiration of the statute of limitations is an affirmative defense under which the defendant bears the burden of proof. Fed.R.Civ.P. 8(c). With regard to motions to dismiss based on a statute of limitations defense, “[although the triggering of inquiry notice is an issue ‘often inappropriate for resolution on a motion to dismiss,’ where ‘the facts needed for determination of when a reasonable investor of ordinary intelligence would have been aware of the existence of fraud can be gleaned from the complaint and papers ... integral to the complaint, resolution of the issue on a motion to dismiss is appropriate.’ ” Masters v. GlaxoSmithKline,
A) Counts 1-3 (Inventorship Claims) Are Not Barred By Laches
Unacceptable neglect or delay in promptly asserting a claim for relief, if such neglect or delay causes prejudice to
A delay of more than six years “after the omitted inventor knew or should have known of the issuance of the patent will produce a rebuttable presumption of laches.” Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys. Inc.,
The application of laches “is committed to the sound discretion of the district court.” Serdarevic v. Advanced Med. Optics, Inc.,
According to the Complaint, Fer-ring notified Fein in early 2003 that it was removing Fein and Nardi as inventors from its patent filings because their contributions were “unpatentable” (see Compl. ¶¶ 71-72). On April 17, 2003, Fein’s counsel responded that Fein would pursue “his own patent application” on “subject matter relating to sublingual desmopressin with alleged low dosage possibilities.” (See id: ¶ 73; Reeves Deck Ex. 4 (4/17/2003 Email from W. Speranza to P. Barclay)).
According to the Defendants, Ferring had “actual notice” of this correspondence and “relied upon these documents in framing the complaint.” (Def. Memo, at 7 n. 5) (citing Cortee Industries, Inc. v. Sum Holding L.P.,
Specifically, in a letter dated December 9, 2004, Ferring’s counsel raised “concerns that Fein’s patent application might include confidential Ferring data.” (See Compl. ¶ 75; Reeves Deck Ex. 5 (4/29/2003 Letter from P. Barclay to W. Speranza)). Ferring’s general counsel acknowledged that she had “noted the publication of PCT/US 2003/014463 entitled “Pharmaceutical composition including low dosages of desmopressin.” Id. Ferring’s counsel also stated that “Ferring will take all necessary steps to protect its rights and interest,” and expressly threatened to “commence formal legal action” against Fein and his attorney if they did not respond “with a satisfactory explanation within 14 days.” Id. After Fein’s attorney responded, Fein did not hear from Ferring until it filed its
On the other hand, according to Ferring, the plain language of the statute demonstrates that the patent must be issued first and the laches clock does not run prior to issuance. Under 35 U.S.C. § 256, district courts may correct inventorship of issued patents in the following situations.
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, ... [t]he court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
35 U.S.C. § 256. Ferring contends that only once a patent is issued, can a § 256 claim accrue, and that “[district courts do not have the power to correct inventorship of pending patent applications.” (PL Opp. at 10-11). Thus, Ferring avers that the laches period here should be measured from the date that the patents-in-suit were issued, September 21, 2010 for the '761 patent, August 25, 2009 'for the '321 patent, and July 29, 2008 for the '203 patent.
The Federal Circuit recently issued a decision addressing this issue in Hot v. Chu. With respect to inventorship claims, the Court reaffirmed its prior holding in Advanced Cardiovascular that laches for a § 256 claims does not begin prior to issuance. Specifically, the Federal Circuit held that “the laches period for a § 256 correction of inventorship claim begins to run when the omitted inventor knew or should have known of the issuance of the patent, regardless of whether the omitted inventor knew or should have known of the omitted inventorship while the patent application was pending before the PTO.” Hor,
Allergan has also asserted one delay period for all three patents-in-suit, but “each patent is a separate chose in action.” Stark v. Advanced Magnetics, Inc.,
Here, the '761 patent was issued on September 21, 2010, the '321 patent was issued on August 25, 2009, and the '203 patent was issued on July 29, 2008. Thus, the period between patent issuance and the April 5, 2012 filing date ranges from one year and six months to three years and eight months, which are less than the six-year delay required to invoke a presumption of laches. Accordingly, the laches period began to run once the patents-in-suit were issued and Ferring’s § 256 claims are not barred by laches.
B) Counts 4 And 5 (Ownership Claims) Are Time Barred And Dismissed
Where the complaint “clearly shows the claim is out of time,” it should be dismissed with prejudice. See Troni v. Holzer, No, 09 Civ. 10239(WHP),
Counts 4 and 5 assert that Ferring is entitled to ownership of the patents-in-suit. Specifically, in Count 4, Ferring has contended that it is a rightful owner of Fein’s patents because - Nardi co-invented- the claimed subject matter and was required by his Employment Agreement to assign ownership rights to any invention he developed while employed at Ferring. (See Compl. ¶¶ 167-172).
To begin with, Ferring has contended that “third-party transferees of misappropriated patents are proper defendants in inventorship and ownership actions.” (See Pl. Opp. at 21) (citing Yeda Research & Dev. Co. Ltd. v. Imclone Sys. Inc.,
Although Count 4 is asserted against all Defendants, there are no allegations that Allergan was involved in the inventions or that Allergan is a party to, or beneficiary of, Nardi’s Employment Agreement. Allergan is not alleged to have any involvement with Fein’s and Nardi’s work until 2010. (See Compl. ¶ 106). In Count 5, Ferring has also alleged that the obligation to assign Fein’s patents was implied, rather than contractual. (See Compl. ¶¶ 181-83). As with Count 4, Fer-ring has not alleged that Allergan was involved in the invention of the claimed subject matter or that it was involved with Fein’s consulting relationship with Fer-ring. Accordingly, Counts 4 and 5 are dismissed as against Allergan with prejudice.
Ferring has contended that “by virtue of Fein’s and Nardi’s positions at Reprise and Serenity, Reprise and Serenity are liable for the actions of their members or officers when acting in these capacities.” However, Counts 4 and 5 assert that Nardi and Fein are obliged to assign patents to Ferring by virtue of associations with Fer-ring that ended in 2002, several years before Reprise- or Serenity were even formed. Thus, Counts 4 and 5 are also dismissed with respect to Reprise or Serenity because Ferring nowhere alleges that Reprise or Serenity had any relationship or obligation to Ferring.
In addition, Ferring has recast Claims 4 and 5 as actions for replevin, so that the statute of limitations does not begin to run until “demand and refusal.” (See Pl. Opp. at 21) (citing Leadertex, Inc. v. Morganton Dyeing & Finishing Corp., No. 93 Civ. 3755(KTD),
Moreover, under Count 4, Fer-ring’s claim for patent ownership based on Nardi’s Employment Agreement is time-barred. In New York, actions sounding in breach of contract must be commenced within six years of the alleged breach. N.Y.C.P.L.R. 213(2) (McKinney 2012); Malone v. Bayerische Hypo-Und Vereins Bank, No. 08 Civ. 7277(PGG),
Ferring knew of Fein’s patent applications in 2003; but even ignorance of the applications cannot save the claim, because “[t]he plaintiff need not be aware of the breach or wrong to start the [limitations] period running.” See Marvel Worldwide, Inc. v. Kirby,
Under Count 5, Ferring seeks equitable relief for breach of “fiduciary duties to Ferring” (see Compl. ¶¶ 182-83). Claims based on breach of fiduciary duties must be brought within six years of when “the claim becomes enforceable, i.e., when all elements of the tort can be truthfully alleged in a complaint.” See IDT Corp. v. Morgan Stanley Dean Witter & Co.,
C) Counts 6 And 7 (Breach Of Common Law Duty) Are Dismissed
In Counts 6 and 7, Ferring has alleged that Fein and Nardi owed “common law duties,” such as “duties of confidentiality, loyalty, good faith and fair dealing with employer, and/or fiduciary duties.” (Compl. ¶¶ 186, 199). Fein and Nardi allegedly breached those duties by “using” Ferring “confidential information’-’ in designing and conducting clinical studies and obtaining and commercializing patents on Fein’s inventions, and by providing Fer-ring documents to other defendants- for submission as evidence in The Hague Ac
The alleged damages stem from the alleged breaches of common law duties because Fein “obtained at least three patents” and the non-Allergan defendants “have received at least $43 million in payments from Allergan to date.” (Id. ¶¶ 192, 204). Yet neither of these alleged harms, even if they were cognizable damages, could be “damages directly caused by [Allergan’s] misconduct,” as required to state a claim against Allergan. See Palmetto Partners, L.P. v. AJW Qualified Partners, LLC,
The alleged damages here are unrelated to the document submissions in The Hague. The last of Fein’s three patents were issued in 2010, the same year that Reprise and Serenity assigned the patent rights to .Allergan. (See Compl. ¶¶ 97, 106). The document submissions, however, did not occur until January 11, 2012. (See id. ¶ 108). The allegation of damages suffered were more than a year before the alleged breaches and thus unavailing.
The claims for breach of common law duties are also timé-barred. Since Fer-ring seeks equitable relief (see Compl. ¶¶ 196, 208), its breach of fiduciary duty claims are governed by a six-year statute of limitations that begins accruing “when all elements of the tort can be truthfully alleged in a complaint.” See IDT Corp.,
In addition, Ferring has not alleged that Allergan, Serenity or Reprise had a relationship with Ferring that would give rise to any common law duties. Accordingly, for the reasons stated above, Counts 6 and 7 are dismissed as to all parties.
D) Counts 8 And 9 (Aiding And Abetting) Are Dismissed
To state a claim for aiding and abetting breach of fiduciary duty under New York law, Ferring must allege “(1) a breach by a fiduciary of obligations to another, (2) that the defendant knowingly induced or participated in the breach, and (3) that plaintiff suffered damage as a result of the breach.” See Palmetto Partners,
Ferring has alleged that Allergan aided and abetted breaches of common law duties owed by Fein and Nardi by “requesting and/or accepting from [them] Ferring documents for use in activities adverse to Ferring’s interest including in submissions to the District Court of The Hague.” (Compl. ¶¶ 212, 221).
Ferring has not alleged that Allergan “knowingly induced or participated in” any
The harms alleged from the aiding and abetting claims include Fein’s “obtaining at least three patents” and defendants sharing “at least $43 million in payments from Allergan to date.” (Compl. ¶¶ 213, 222). Neither of these harms have been adequately alleged to have anything to do with the document submissions to the District Court of The Hague.
Allergan’s single alleged act of aiding and abetting relates to 'document submissions in The Hague. (See Compl. ¶¶ 212, 221). The alleged damages of the $43 million Allergan paid to Serenity and Reprise for assignment of the patents-in-suit (Compl. ¶¶215, 224), however, preceded The Hague submissions.
In addition, the tort of aiding and abetting breaches of common law duty does not encompass a “should have known” standard and actual knowledge is required. See Kaufman v. Cohen,
Ferring’s recitals concerning Allergan’s “knowing participation” in breaches are inadequate. Specifically, Ferring has alleged that Allergan (i) “request[ed] and/or accepted]” Ferring documents for use in The Hague action, and (ii) “knew or should have known [Fein’s or Nardi’s] employment history and consequéntly that [they owe] Ferring substantial common law duties.” (Compl. ¶¶ 212, 221). This allegation does not identify the “substantial assistance” required for knowing participation. See Kaufman,
Ferring’s allegations do not meet the applicable pleading standard. Ferring has offered no reason for Allergan to have known of any specific duties, contractual or implied, owed by either Fein or Nardi to Ferring. There is -no allegation that Allergan saw or even knew of Nardi’s Employment or Severance Agreements, or that Allergan had any actual knowledge whatsoever-of the nature of Nardi’s or Fein’s relationships with Ferring — relationships that concluded approximately eight years prior to the assignment of the patents to Allergan. Without an allegation of actual knowledge on the part of Allergan of the alleged common law duties, Counts 8 and 9 are dismissed as against Allergan.
The aiding and abetting claims are also untimely. The applicable limitations period for an aiding and abetting claim is the same as for the underlying violation, which in this case is an alleged breach of fiduciary duties. See Glonti v. Stevenson, No. 08-CV-8960 (CM),
E) Counts 10 And 11 (Breach Of Contract) Are Dismissed
Breach of contract under New York law requires: (1) the existence of an agreement; (2) adequate performance of the contact by plaintiff; (3) breach of contract by defendant; and (4) damages. Harsco Corp. v. Segui,
There are no allégations of a contractual relationship with any of the other Defendants. Ferring has not pled facts demonstrating that Fein, Allergan, Reprise or Serenity had a contractual relationship with Ferring or that any breaches of contract were committed. Accordingly, Fer-ring’s claims for breach of contract are dismissed as against these parties for improper pleading. See Swan Media Group, Inc. v. Staub,
The breach of contract claims are also time-barred. To the extent Nardi breached any contract by using Ferring information to develop desmopressin products or assist in obtaining patents, those breaches accrued no later than 2003, when Fein first pursued his patent applications independently. The six-year statute of limitations for breach of contract has run. See Marvel,
F) Count 12 (Interference With Contractual Relations) Is Dismissed
A tortious interference with contractual relations claim under New York law requires a plaintiff to prove: (1) the existence of a valid contract between itself and a third party; (2) the defendant’s knowledge of the contract; (3) the defendant’s intentional procurement of the third-party’s breach of. the contract; and (4) damages. See Mina Inv. Holdings Ltd. v. Lefkowitz,
Ferring’s allegation with respect to Allergan’s alleged involvement in purported breaches is that “U.S. and European counsel for Fein, Allergan, Serenity, and Reprise approached Nardi for assis
Fatally, Ferring fails to plead a requisite element of a claim for intentional interference with contractual relations, namely, that Allergan intended to induce any contractual breaches. See Jones v. City Sch. Dist. Of New Rochelle,
Count 12 also should be dismissed as against all other defendants because Ferring fails to plead any pecuniary damages resulting from alleged inducements of breach, as required by New York law. See Int’l Minerals & Resources, S.A. v. Pappas,
Ferring also has alleged that helping Fein develop desmopressin formulations and obtain patents were inducements of'breach (see id. ¶¶ 266, 270). In New York, the statute of limitations for intentional interference with contractual relations is three years. See N.Y.C.P.L.R. 214(4) (McKinney 2012). A claim accrues “at the time the injury is sustained.” Rosemeier v. Schenker Int’l, Inc.,
G) Count 13 (Misappropriation of Trade Secrets) Is Dismissed
To state a misappropriation claim, Ferring must allege that “(1) it possessed a trade secret, and (2) defendants are using that trade secret in breach of an agreement, confidence, or duty, or as a result of discovery by improper means.” Geritrex Corp. v. Dermarite Indus., LLC,
Ferring’s misappropriation claim is based on evidentiary submissions to a foreign ■ tribunal. (See Compl. ¶¶ 277-78). Because Ferring has conceded that Allergan did not submit the documents in breach of its own “agreement, confidential relationship, or duty” (PL Opp. at 23), the “analysis ... turns on whether [Ferring] sufficiently pleaded that [Allergan] used [Ferring’s] trade secrets as a ‘result of discovery by improper means.’ ” See Watts v. Jackson Hewitt Tax Servs., Inc.,
In Watts, as here, a party obtained allegedly confidential materials from the claimant’s former employees and then submitted them during discovery in an action involving the claimant. Id. at 277-78. The Court found that “[discovery by improper means” does not include purported “abuses of the civil discovery process.” Id. Ferring fails to distinguish Watts from the instant case.
In addition, even if there were such a relationship between Allergan and Ferring, Allergan’s use of that information, accepting and submitting documents in The Hague Action, does not constitute
Count 13 should also be dismissed because the limitations period for a misappropriation claim has already run. In New York, misappropriation claims must be brought within three years of “when the defendant discloses the trade secret or when he first makes use of plaintiffs ideas.” Synergetics USA. Inc. v. Alcon Laboratories, Inc., No. 08 Civ. 3669(DLC),
H) Count 15 (Conversion) Is Dismissed
The tort of conversion requires that the defendant, “intentionally and without authority, assumes or exercises control over personal .property belonging to someone else.” Marketxt Holdings Corp. v. Engel & Reiman, P.C.,
Count 15 is also time-barred. Conversion claims are subject to a three-year statute of limitations, which begins running when the alleged conversion takes place. See N.Y.C.P.L.R. 214(3) (McKinney 2012); see also Sporn v. MCA Records,
“Fraudulent concealment is a species of cdmmon law fraud.” Banque Arabe Et Internationale D’Investissement v. Maryland Nat’l Bank,
Misrepresentations or omissions must be pleaded with specificity or the claims will be dismissed. See, e.g., Ben Hur Moving & Storage, Inc. v. Better Bus. Bureau, No. 08 Civ. 6572,
In addition, “[i]t is well-settled that a complaint alleging fraud under New York law must comply with the heightened pleading standard under Rule 9(b) which requires that ‘the circumstances constituting fraud ... must be stated with particularity.’ ” Woods v. Maytag Co., No. 10 Civ. 0559(ADS)(WDW),
Ferring has contended that it is not required to plead fraudulent intent with particularity, relying on Rule 9(b)’s provision that “[m]alice, intent, knowledge and other conditions of a person’s mind may be alleged generally.” But “the relaxation of Rule 9(b)’s specificity requirement for scienter ‘must not be mistaken for license to base claims of fraud on speculation and conclúsory allegations’ ”. Shields v. City-trust Bancorp, Inc.,
“[W]hen pleading, scienter, plaintiffs must allege facts that give rise to a strong inference of fraudulent intent.” Woods,
Ferring has failed to plead with the requisite specificity the misrepresentations or omissions that form the basis of Ferring’s fraudulent concealment claim. “The particularity requirement of Rule 9(b) demands that a plaintiff ‘(1) detail the statements (or omissions) that the plaintiff contends are fraudulent, (2) identify the
Here, Ferring has alleged that Fein and Nardi made misrepresentations to Ferring or failed to disclose facts they had a duty to disclose (see Compl. ¶¶ 318-323), but has not identified when, where, or how these alleged misrepresentations or omissions occurred. (See Compl. ¶ 318) (alleging that “Fein has repeatedly assured Ferring that he would use no Ferring confidential, trade secret, proprietary or privileged information” without specifying when such assurances were given or to whom).
In addition, Ferring has not alleged that it relied on any specific misrepresentation or omission by either Nardi or Fein or that such alleged reliance is reasonable or justifiable. See, e.g., Kramer v. Schloss,
As to the other defendants, Ferring has not alleged a fiduciary relationship between Serenity and Reprise or any duty of Serenity and Reprise to Ferring. Count 16 does not allege that Serenity and Reprise acted with intent to defraud. Taken together, Count 16 is therefore dismissed as to those parties.
J) Count 17 (Unjust Enrichment) Is Dismissed
To state a claim for unjust enrichment in New York, a plaintiff must allege that: (1) the defendant was enriched; (2) the enrichment was at plaintiffs expense; and (3) the circumstances were such that equity and good conscience require defendant to make restitution. Intellectual Capital Partner v. Institutional Credit Partners LLC, No. 08 Civ. 10580,
Ferring has alleged that the Defendants have been unjustly enriched by using Ferring confidential information in “patenting, developing, and/or commercializing certain desmopressin formulations.” (Compl. ¶ 330). However, Ferring has not alleged a relationship between Allergan and Ferring to support a claim for unjust enrichment. Ferring has furthermore failed to plead the requisite relationship or connection between Ferring and Serenity or Reprise.
Ferring’s unjust enrichment claim is also time-barred. The limitations period for unjust enrichment claims is six years, and it starts running when the defendant commits the wrongful act that enriches him. See Cohen v. Cohen,
III. Conclusion
Based upon the facts and conclusions set forth above, the Defendant’s motion to dismiss is granted as to all counts, except for Counts 1 through 3.
It is so ordered.