Ferring Pharmaceuticals Inc. v. Serenity Pharmaceuticals, LLC
- Colleen McMahon
- 1:17-cv-09922
- U.S. District Court · Southern District of New York
- 3
Ferring Pharmaceuticals v. Serenity Pharmaceuticals: Judge McMahon denied reconsideration of a prior partial judgment-on-the-pleadings ruling in a patent dispute.
The counterclaimants and the other parties to the patent dispute were affected because the court left its earlier partial ruling in place and denied reconsideration.
What happened
In Ferring Pharmaceuticals Inc. v. Serenity Pharmaceuticals, LLC, the counterclaimants asked the court to reconsider an earlier order that had denied in part and granted in part their motion for judgment on the pleadings.
The counterclaimants argued that the court had misunderstood the requirements for improper inventorship under patent law and had misapplied rules about whether an issue decided in an earlier proceeding could control a later one. The court said these arguments mischaracterized its earlier conclusions and relied on quotations taken out of context.
Chief Judge Colleen McMahon ruled that the motion merely repeated arguments the court had already considered and rejected, rather than identifying controlling law or facts the court had overlooked. She denied the motion and directed the clerk to remove it from the list of pending motions.
The detailed version
- Ferring Pharmaceuticals Inc. v. Serenity Pharmaceuticals, LLC · No. 1:17-cv-09922
- Colleen McMahon
- May 13, 2020
Background
The counterclaimants sought reconsideration of the court’s earlier decision that had denied in part and granted in part their motion for judgment on the pleadings. The opinion identifies the earlier ruling as Docket No. 676. The dispute concerns patents, improper inventorship, patent validity, and whether an earlier decision should prevent relitigation of an issue.
Arguments
The counterclaimants argued that the court had interpreted 35 U.S.C. § 102(f) as requiring only one of two steps for proving improper inventorship—showing that Dr. Fein was not the inventor. The court rejected that characterization, stating that it was aware of both required steps and that the quoted passage had been taken out of context.
The court explained that 35 U.S.C. § 256 and § 102(f) have different legal effects. Under § 256, Ferring sought to replace Dr. Fein with Ferring employees as the inventors while leaving the patent valid. Under § 102(f), Ferring sought to defend against a patent-infringement claim by asking the court to invalidate the patents, regardless of who the inventor was.
The opinion also addressed collateral estoppel, which is a rule that can prevent a party from relitigating an issue decided in an earlier proceeding. The court had previously concluded that the different effects of §§ 256 and 102(f) changed the equitable-estoppel analysis and weighed against applying collateral estoppel. It stated that the equitable considerations involved in seeking to replace an inventor and those involved in using estoppel to invalidate a patent were materially different. The court further stated that collateral estoppel applies only when the matter in the later proceeding is identical in all respects to the matter previously decided.
Ruling
Chief Judge Colleen McMahon held that the motion was simply a request to reconsider the court’s analysis and reach a different result. Because that is not a proper basis for reconsideration, the court denied the motion. The court directed the clerk to remove Docket No. 676 from the list of pending motions. The opinion does not state that the underlying patent claims were finally resolved by this order.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.