Litigation Details for Allergan, Inc. v. Ferrum Ferro Capital, LLC (C.D. Cal. 2015)

Allergan, Inc. v. Ferrum Ferro Capital, LLC (C.D. Cal. 2015)

Docket		Date Filed	2015-06-19
Court	District Court, C.D. California	Date Terminated	2015-12-28
Cause	28:1441 Notice of Removal	Assigned To	John Arnold Kronstadt
Jury Demand	Plaintiff	Referred To	Magistrate Judge Paul L. Abram
Patents	7,030,149; 7,320,976; 7,323,463; 7,642,258; 8,133,890; 8,354,409; 8,748,425
Link to Docket	External link to docket

Details for Allergan, Inc. v. Ferrum Ferro Capital, LLC (C.D. Cal. 2015)

Date Filed	Document No.	Description	Snippet	Link To Document
2015-06-19	1	Complaint (Attorney Civil Case Opening)	Batoosingh , including U.S. Patent Nos. 7,030,149 (“the ’149 patent”), 7,320,976, 22 7,642,258, 8,133,890…interest in each of 24 these six patents, including the ’149 patent. 25 22. COMBIGAN® or…claim of each of the six patents listed above, including the 27 ’149 patent. 28 23. Because…expiration of 7 Allergan’s patents covering COMBIGAN®, including the ’149 patent. These 8 ANDAs were filed…infringed Allergan’s duly issued patents, including 13 the ’149 patent. 14 25. In response,	External link to document
2015-06-19	26	Motion to Strike	Partes Review of U.S. Patent 9 No. 7,030,149 (hereinafter the “‘149 patent”) as the America Invents…four patents, finding them obvious and therefore not patentable. 9 As to the fourth patent, the …petitioning the United States Patent and Trademark Office’s 9 (“USPTO’s”) Patent Trial & Appeal Board…FFC’s position that Claim 4 of the ‘149 Patent is non-patentable as 24 obvious, Allergan cannot demonstrate… claims of the '463 patent 16 and claim 4 of the '149 patent cannot be reconciled. 17	External link to document
2015-06-19	27	Exhibit A - Allergan v Sandoz ED TX	United States Patent Nos. 7,030,149 (―the ‗149 patent‖); 7,320,976 (―the ‗976 patent‖); 7,323,463 (… The Patents-in-Suit 31. The patents-in-suit are U.S. Patent Nos. 7,030,149 (―the ‗149… (―the ‗463 patent‖); and 7,642,258 (―the ‗258 patent‖) (collectively, the ―patents-in-suit‖). The Court…claim 4 of the ‗149 Patent, claim 1 of the ‗976 patent, claims 1-6 of the ‗463 Patent, and claims 1-9 of…‗149 patent‖); 7,320,976 (―the ‗976 patent‖); 7,323,463 (―the ‗463 patent‖); and 7,642,258 (―the ‗258	External link to document
2015-06-19	28	Exhibit 4 - Plaintiffs' First RPD to KB	4. "The '149 patent" means U.S. Patent No. 7,030,149. 22 5. &…work with Regarding the validity or patentability of the '149 patent. 4 II REQUEST FOR PRODUCTION …) Concerning any Allergan patent, Including any "other Combigan patents 8 II listed in the FDA Orange…IPR petition that FFC flied against the '149 patent. 24 II REQUEST FOR PRODUCTION NO…9, 2015 IPR petition flied against the '149 patent. 27 28	External link to document

Allergan, Inc. v. Ferrum Ferro Capital, LLC: A Litigation Summary and Analysis

Case Background

The case of Allergan, Inc. v. Ferrum Ferro Capital, LLC (Case No. 8:15-cv-00992-JAK-PL) involves a complex dispute between Allergan, Inc. and Ferrum Ferro Capital, LLC, highlighting the issues surrounding reverse patent trolling and the inter partes review (IPR) process.

The Dispute

Allergan, Inc., a pharmaceutical company, was targeted by Ferrum Ferro Capital, LLC, an entity that sent a letter to Allergan claiming it was prepared to seek FDA approval for a generic version of Allergan's glaucoma drug, Combigan (brimonidine). Ferrum Ferro Capital enclosed a copy of an IPR petition it had filed with the Patent and Trademark Office (PTO) on the same day[1][3].

Allegations and Claims

Allergan alleged that Ferrum Ferro Capital had no genuine interest in developing or marketing the generic drug but was instead engaging in reverse patent trolling. Allergan claimed that Ferrum Ferro Capital had no principal place of business beyond a mail drop box and had not taken any substantial steps to develop or seek FDA approval for the generic drug[1][3].

Court Proceedings

Allergan filed a complaint in the U.S. District Court for the Central District of California, alleging extortion and unfair business practices against Ferrum Ferro Capital. However, the court dismissed the complaint for lack of federal subject matter jurisdiction on December 28, 2015[4].

Subject Matter Jurisdiction

The sole issue heard by the court was whether it had subject matter jurisdiction over the case. The court determined that it did not have the necessary jurisdiction to proceed with the case, leading to its dismissal without prejudice[4].

PTO Proceedings

Despite the court's dismissal, the PTO proceeded with the IPR petition filed by Ferrum Ferro Capital. However, the PTO declined to institute trial on the IPR petition, not because it found Ferrum Ferro Capital to be a troll, but for other reasons[1].

Reverse Patent Trolling

This case is part of a broader phenomenon where entities, often referred to as reverse patent trolls, exploit the IPR process to challenge pharmaceutical patents without any genuine intention of developing or marketing generic drugs. These entities often seek to profit from the potential devaluation of the target company's stock or by taking positions in companies that would benefit from the invalidation of the patent[1].

Industry Impact

The activities of reverse patent trolls, including hedge funds like Kyle Bass's Coalition for Affordable Drugs, have significant implications for the pharmaceutical industry. These entities can cause substantial financial and legal disruptions for companies holding patents, even if the challenges are ultimately unsuccessful[1].

Legal and Financial Consequences

The case highlights the challenges faced by companies targeted by reverse patent trolls. Despite efforts to fight back through the courts and the PTO, these companies often find little success. The lack of a standing requirement in IPR proceedings and the high rate of patent invalidation by the PTO contribute to the persistence of this issue[1].

Conclusion

The Allergan, Inc. v. Ferrum Ferro Capital, LLC case underscores the complexities and challenges associated with reverse patent trolling and the IPR process. It emphasizes the need for careful assessment and strategic decision-making by companies facing such challenges and suggests that legislative changes may be necessary to address these issues effectively.

Key Takeaways

• Reverse Patent Trolling: Entities like Ferrum Ferro Capital exploit the IPR process without intending to develop or market generic drugs.
• Lack of Jurisdiction: Courts may dismiss complaints for lack of subject matter jurisdiction, limiting the avenues for companies to fight back.
• PTO Proceedings: The PTO may decline to institute IPR trials, but this does not necessarily address the underlying issue of reverse patent trolling.
• Industry Impact: Reverse patent trolling can cause significant financial and legal disruptions for pharmaceutical companies.
• Legal Challenges: Companies face difficulties in fighting back through the courts and the PTO.

Frequently Asked Questions

Q: What is reverse patent trolling?

A: Reverse patent trolling involves entities challenging pharmaceutical patents through the IPR process without any genuine intention of developing or marketing generic drugs, often to profit from the potential devaluation of the target company's stock.

Q: Why did the court dismiss Allergan's complaint?

A: The court dismissed Allergan's complaint for lack of federal subject matter jurisdiction.

Q: What was the outcome of the IPR petition filed by Ferrum Ferro Capital?

A: The PTO declined to institute trial on the IPR petition, but not because it found Ferrum Ferro Capital to be a troll.

Q: How do reverse patent trolls typically operate?

A: Reverse patent trolls often send demand letters and file IPR petitions, threatening to seek FDA approval for generic versions of patented drugs, but they usually lack the capability or intention to do so.

Q: What are the implications for pharmaceutical companies targeted by reverse patent trolls?

A: These companies can face significant financial and legal disruptions, including potential devaluation of their stock and the costs associated with defending against IPR challenges.

Sources:

1. Perlman, A., & Kayali, K. (2017). Reverse Patent Trolling: Nontraditional Participants in the Inter Partes Review Process. Westlaw Journal Pharmaceutical.
2. Federal Motor Carrier Safety Administration. (2024). FY 2022 FOIA log.
3. Practical Law. (n.d.). Case 8:15-cv-00992-JAK-PLA Document 68-1 Filed.
4. Casetext. (n.d.). Allergan, Inc. v. Ferrum Ferro Capital, LLC.