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Judge Sweet Holds that Standing Question Cannot Be Resolved Until Trial

On September 14, 2017, District Judge Robert W. Sweet (S.D.N.Y.) denied the motion of Ferring B.V., et al. (“Ferring”) to dismiss for lack of standing a patent infringement suit brought by Allergan, Inc., et al. (“Allergan”). 

Allergan argued that it had standing to seek a declaration that a third party, Dr. Seymour Fein, is a rightful co-inventor of two patents owned by Ferring.  According to Allergan, it obtained rights to the two patents through a so-called “Three-Way Agreement” with Fein’s original assignee Reprise Biopharmaceutics, LLC (“Reprise”) (of which Fein was a principal and equity partner). 

Ferring, however, disputed both (1) that Fein is a co-inventor of the patents and (2) that the Three-Way Agreement properly gave any rights to Allergan.  While the exact terms of the assignment agreements remain under seal, it is clear that Ferring took issue with the fact that the terms of the Three-Way Agreement and the original assignment to Reprise failed to “identify any Ferring patents or applications” such as the patents-in-suit.  This, Ferring argued, “remove[d] [Allergan’s] ability to claim standing” as to inventorship issues of those patents.

The court denied Ferring’s motion to dismiss, but saved the ultimate holding on standing for trial.  While the Court noted that the assignment agreements “indicate[d] an intention to assign to Allergan whatever rights Fein possessed at the time of the invention,” it also explained that there were “conflicting provisions” in the assignment agreements that were in “tension” with this interpretation.  The Court noted a trial was necessary to assess whether Fein was in-fact a co-inventor (and therefore, had any right of patent ownership to convey) and, if so, to sort through the conflicting provisions and determine the true intent of the Three-Way Agreement. 

-By Ryan Mott and Lewis Popovski

Case: Ferring B.V., et al. v. Allergan Inc., et al, No. 12 Civ. 2650 (S.D.N.Y. September 14, 2017).