Michael A. Amon (SBN 226221)
`amon@fr.com
`FISH & RICHARDSON P.C.
`555 West Fifth Street, 31st Floor
`Los Angeles, California 90013
`Tel: (213) 533-4240/Fax: (877) 417-2378
`
`Jonathan E. Singer (SBN 187908)
`singer@fr.com
`FISH & RICHARDSON P.C.
`12390 El Camino Real
`San Diego, California 92130
`Tel: (858) 678-5070/Fax: (858) 678-5099
`
`John M. Farrell (SBN 99649)
`farrell@fr.com
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, California 94063
`Tel: (858) 678-5070/Fax: (858) 678-5099
`
`Attorneys for Plaintiffs
`ALLERGAN, INC. and ALLERGAN SALES, LLC
`(Additional counsel listed on signature page)
`
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`SOUTHERN DIVISION
`
`
`Case No.
`
`COMPLAINT FOR CIVIL
`EXTORTION, MALICIOUS
`PROSECUTION, AND UNFAIR
`BUSINESS PRACTICES ARISING
`FROM U.S. PATENT LAWS
`
`
`
`ALLERGAN, INC., ALLERGAN
`SALES, LLC,
`
`Plaintiffs,
`
`v.
`
`FERRUM FERRO CAPITAL, LLC;
`KEVIN BARNES,
`
`Defendants.
`
`
`
`JURY TRIAL DEMANDED
`
`
`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`VIRNETX EXHIBIT 2021
`Mangrove v. VirnetX
`Trial IPR2015-01046
`
`Page 1 of 18
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`

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`Plaintiffs Allergan, Inc. and Allergan Sales, LLC (collectively, “Allergan”), by
`
`their attorneys, alleges the following claims against Defendants Ferrum Ferro Capital,
`
`LLC (“FFC”) and Kevin Barnes (“Barnes”) (collectively “Defendants”):
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`NATURE OF THE ACTION
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`1.
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`This is a civil action arising out of Defendants’ attempt to extort
`
`Allergan by misusing the Inter Partes Review (“IPR”) process established by the
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`America Invents Act (“AIA”), H.R. 1249, enacted to reform 35 U.S.C. §§ 1 et seq.
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`Defendants’ conduct raises substantial issues related to the misuse of the patent
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`system and the processes established by the AIA, and constitutes attempted civil
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`extortion and malicious prosecution under California law in addition to violating
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`California’s Unfair Competition Law codified at California Bus. & Prof. Code §§
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`17200 et seq.
`
`THE PARTIES
`
`2.
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`Allergan, Inc. is a corporation organized and existing under the laws of
`
`the State of Delaware, with a principal place of business at 2525 Dupont Drive,
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`Irvine, California 92612.
`
`3.
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`Allergan Sales, LLC is a limited liability company organized and
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`existing under the laws of the State of Delaware, with a principal place of business at
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`2525 Dupont Drive, Irvine, California 92612.
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`4.
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`On information and belief, FFC is a Delaware limited liability company
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`without any principal place of business. On information and belief, FFC maintains a
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`mail drop box at 717 N. Union Street, #78, Wilmington, Delaware 19805.
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`5.
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`On information and belief, Kevin Barnes in a citizen of the state of New
`
`York, who resides at 515 W. 59th Street, Apartment 19A, New York, New York
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`10019.
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`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
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`JURISDICTION AND VENUE
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`6.
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`This Court has original jurisdiction over all causes of action asserted
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`herein pursuant to 28 U.S.C. §§ 1331, 1338, or 1367. As described in detail below,
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`this complaint necessarily raises issues related to Defendants’ misuse of the patent
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`laws of the United States of America, and the processes established by the AIA,
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`which amended the patent laws of the United States.
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`7.
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`FFC has filed an objectively baseless IPR petition for the express
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`purpose of monetizing the petition, including by attempting to extort compensation
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`from Allergan. The objective baselessness of FFC’s IPR petition necessarily raises
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`federal issues that are actually disputed and substantial. Moreover, the issues raised
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`by this complaint are not limited to the facts of or parties involved in this case, but
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`rather apply to many other AIA petitioners attempting similar extortionate schemes.
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`Indeed, the behavior complained of herein—the use of the IPR process in an effort to
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`extract compensation from patent-holders—has been the subject of extensive debate
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`in Congress and the national press, as evidenced by the attached recent op-ed in the
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`Wall Street Journal. See Ex. A, attached. This Court’s exercise of jurisdiction over
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`these important and far-reaching federal issues will not disrupt the balance struck by
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`Congress between the federal and state courts.
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`8.
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`Given the importance and potential impact of this dispute on the federal
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`system and the laws governing the AIA, this Court can and should exercise
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`jurisdiction over this case under 28 U.S.C. §§ 1331 and 1338.
`
`9.
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`This Court has personal jurisdiction over FFC because FFC specifically
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`reached out to Allergan, which is resident in this Judicial District, for the purposes of
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`extorting Allergan under the guise of settlement of an IPR petition authorized under
`
`the AIA. FFC has hired counsel based in this Judicial District for the purpose of
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`aiding in its efforts to extort Allergan under the guise of settlement from Allergan.
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`The harm caused by FFC and suffered by Allergan has occurred in this district and
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`was directed at this district by FFC. In addition, through its conduct, FFC has sought
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`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`Page 3 of 18
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`to allegedly do business in this Judicial District and to avail itself of the laws in this
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`Judicial District.
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`10. This Court has personal jurisdiction over Kevin Barnes because Mr.
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`Barnes, acting through FFC, specifically reached out to Allergan, which is resident in
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`this Judicial District, for the purposes of extorting Allergan under the guise of
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`settlement of an IPR petition authorized under the AIA. Mr. Barnes, through FFC,
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`has hired counsel based in this Judicial District for the purpose of aiding in its efforts
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`to extort Allergan under the guise of settlement from Allergan. The harm caused by
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`Mr. Barnes and suffered by Allergan has occurred in this district and was directed at
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`this district by Mr. Barnes. In addition, Mr. Barnes, through FFC, has sought to
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`allegedly do business in this Judicial District and to avail himself of the laws of the
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`state in this Judicial District.
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`11. Allergan’s complaint originates from Defendants’ attempts to extort
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`Allergan under the guise of settlement, and Defendants’ associated conduct and
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`activities in this Judicial District. As such, this Court has specific personal
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`jurisdiction over Defendants.
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`12. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and/or
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`1391(c).
`
`FACTUAL ALLEGATIONS REGARDING ALLERGAN’S INNOVATIVE
`TREATMENT FOR GLAUCOMA AND OCULAR HYPERTENSION
`
`13. Allergan incorporates and realleges Paragraphs 1-12 of this Complaint as
`
`if repeated verbatim in this Paragraph.
`
`14. Allergan is one of the world’s leading and most innovative
`
`pharmaceutical companies. One of the specialties of Allergan is research and
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`development of products for treating diseases of the eye.
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`15. Glaucoma is an incurable disease of the eye that damages the optic nerve
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`over time, resulting in vision loss, and often, blindness. It afflicts approximately 70
`
`million patients worldwide. While the cause of glaucoma is unknown, a symptom
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`3
`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`of the disease is a dramatic escalation of the pressure inside the eye, known as
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`intraocular pressure. Elevated intraocular pressure is known as ocular hypertension.
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`16. While incurable, the elevated intraocular pressure found in glaucoma
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`and ocular hypertension patients can be treated with eye drops to control pressure,
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`slowing the progression of the diseases. For many patients, one type of drop a day is
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`not enough—these patients must administer multiple medications, many of which
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`require multiple doses taken at different times of day.
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`17.
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` In part to solve this problem, Allergan developed COMBIGAN®, which
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`is a combination of brimonidine and timolol for “topical ophthalmic use” in treating
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`patients suffering from glaucoma and/or ocular hypertension. The development of
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`COMBIGAN® required the investment of tens of millions of dollars by Allergan and
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`thousands of hours in research and development.
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`18. Allergan is the holder of an approved New Drug Application (“NDA”)
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`No. 21-398 for brimonidine tartrate/timolol maleate ophthalmic solution 0.2%/0.5%,
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`sold under the COMBIGAN® trademark.
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`19. COMBIGAN® has proven to be a significant improvement for treating
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`glaucoma and ocular hypertension due, in part, to its having comparable efficacy to
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`brimonidine and timolol administered separately and to its superior safety profile.
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`20. NDA No. 21-398 for COMBIGAN® is associated with at least six
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`patents duly issued to Chin-Ming Chang, Gary J. Beck, Cynthia C. Pratt, and Amy L.
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`Batoosingh , including U.S. Patent Nos. 7,030,149 (“the ’149 patent”), 7,320,976,
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`7,642,258, 8,133,890, 8,354,409, and 8,748,425.
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`21. Allergan, as assignee, owns the entire right, title, and interest in each of
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`these six patents, including the ’149 patent.
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`22. COMBIGAN® or approved methods of using COMBIGAN® are
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`covered by at least one claim of each of the six patents listed above, including the
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`’149 patent.
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`23. Because of its success in the marketplace, numerous generic
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`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`Page 5 of 18
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`pharmaceutical companies, including Sandoz, Inc., Hi-Tech Pharmacal Co., Inc.,
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`Alcon Laboratories, Inc., Falcon Pharmaceuticals, Ltd., Apotex, Inc., Apotex,
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`Corporation, and Watson Laboratories, Inc. (collectively “the Competitors” or
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`“Allergan’s Competitors”), have filed Abbreviated New Drug Applications
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`(“ANDA”) with the United States Food and Drug Administration (“FDA”), seeking
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`approval to market generic versions of COMBIGAN® before the expiration of
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`Allergan’s patents covering COMBIGAN®, including the ’149 patent. These
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`ANDAs were filed pursuant to the Hatch-Waxman Act, the statute that governs
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`generic drug approvals.
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`24. As contemplated by the Hatch-Waxman Act, Allergan sued the
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`Competitors for a judgment that the Competitors’ generic formulations disclosed in
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`their various ANDA applications infringed Allergan’s duly issued patents, including
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`the ’149 patent.
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`25.
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`In response, the Competitors sought declaratory judgment that
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`Allergan’s patents, including the ’149 patent, were invalid.
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`26.
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`Included among the validity challenges raised by the Competitors were
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`claims that the ’149 patent was invalid as obvious in light of certain prior art,
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`including the DeSantis, Timmermans, Stewart, and Larsson references.
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`27. The cases between Allergan and the Competitors were tried to the bench
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`in the United States District Court for the Eastern District of Texas in August 2011,
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`the Honorable T. John Ward presiding. In support of their validity challenges on the
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`’149 patent, the Competitors introduced lengthy expert witness testimony at trial,
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`including from a treating ophthalmologist and an ophthalmic formulator. Those
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`experts addressed the DeSantis, Timmermans, Stewart, and Larsson references.
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`28.
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`In August 2011, the district court entered judgment in favor of Allergan
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`on the Competitors’ validity challenges to the ’149 patent, rejecting the Competitors’
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`arguments and testimony. The district court rejected defendants’ arguments over
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`each of the DeSantis, Timmermans, Stewart, and Larsson references.
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`5
`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`29. On May 1, 2013, the United States Court of Appeals for the Federal
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`Circuit affirmed the district court’s judgment rejecting the Competitors’ validity
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`challenge to the ’149 patent. In September of that same year, the Court of Appeals
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`denied a petition for rehearing and rehearing en banc, and issued its mandate. The
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`United States Supreme Court denied certiorari in 2014. As a result of that litigation,
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`the Competitors are enjoined from launching their generic versions of COMBIGAN®
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`until April 2022.
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`FERRUM FERRO CAPITAL’S FALSE AND
` EXTORTIONATE CONDUCT
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`30. Allergan incorporates and re-alleges Paragraphs 1-29 of this Complaint
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`as if repeated verbatim in this Paragraph.
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`31. On information and belief, FFC was formed as a Delaware Limited
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`Liability Company on November 3, 2014.
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`32. On information and belief, FFC is a privately held venture fund.
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`33. On information and belief, Kevin Barnes is one of FFC’s founders.
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`34. On information and belief, FFC has no principal place of business,
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`maintaining merely a mail drop box located at 717 N. Union Street, #78, Wilmington,
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`Delaware 19805. A photo of that location is available at https://maps.google.com/:
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`6
`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`35. Consistent with its “mail drop box” “place of business,” FFC’s website,
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`http://www.ferrumferro.com, is a shell, with no information available on it about any
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`of FFC’s supposed activities. A print-out of all of the pages of FFC’s website is
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`attached hereto as Exhibit B.
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`36.
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`Indeed, FFC’s website is almost identical to the website of another
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`venture fund owned by Mr. Barnes, which he has named Hyacinth Sloop Capital,
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`LLC. A print-out of all of the pages of Hyacinth Sloop Capital’s website,
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`http://www.hyacinthsloop.com, is attached hereto as Exhibit C.
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`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
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`37. On information and belief, FFC has no facilities in which to conduct
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`research and development to create a generic formulation of Allergan’s
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`COMBIGAN®, or any other pharmaceutical drug.
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`38. On information and belief, FFC has not financed any research and
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`development activities to create a generic formulation of Allergan’s COMBIGAN®,
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`or any other pharmaceutical drug.
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`39. On information and belief, FFC has hired no scientists or other personnel
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`capable of performing any research and development activities to create a generic
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`formulation of Allergan’s COMBIGAN®, or any other pharmaceutical drug.
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`40. On information and belief, FFC has hired no regulatory or other
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`personnel necessary to prepare, submit and prosecute an ANDA application for any
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`generic drug with the FDA.
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`41. On March 9, 2015, FFC sent a letter to Allergan. A copy of that letter is
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`attached as Exhibit D.
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`42. FFC’s March 9, 2015 letter falsely represented to Allergan that FFC was
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`prepared to “seek [Federal Food and Drug Administration (“FDA”)] approval via a
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`Paragraph III ANDA filing to produce and market a generic brimonidine
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`tartrate/timolol maleate ophthalmic solution with [an unnamed] Contract
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`Manufacturing Partner (“CMP”).” Ex. D at 2.
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`43. Attached to the March 9, 2015 letter, FFC included an incomplete
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`“proposed FDA filing” for generic brimonidine tartrate/timolol maleate ophthalmic
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`solution, attached hereto as Exhibit E. FFC’s “proposed ANDA filing” is clearly a
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`sham.
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`44.
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`In the sham “proposed FDA filing,” FFC named its fictitious generic
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`brimonidine tartrate/timolol maleate ophthalmic solution “Combivious,” apparently
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`as some kind of play on the words “COMBIGAN®” and “obvious.” The fictitious
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`ANDA filing further lists its date of submission as “03/XX/2015.” Moreover, FFC
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`included only the first page of the three-page FDA application to market an
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`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
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`abbreviated new drug. Notably, FFC omitted the certification acknowledgment and
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`the signature page of the form from what it sent Allergan.
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`45. Also attached to the March 9, 2015 letter was an IPR petition that FFC
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`filed with the United States Patent and Trademark Office (“PTO”) on March 9, 2015
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`challenging the validity of Allergan’s ’149 patent. That IPR petition is attached
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`hereto as Exhibit F.
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`46.
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`IPR is a trial proceeding established by Congress and the President when
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`they enacted into law the AIA, which amended 35 U.S.C. §§ 1 et seq. IPRs are
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`conducted before the Patent Trial and Appeal Board (“PTAB”) of the PTO whereby a
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`third party may seek a review of the patentability of one or more claims in a patent.
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`47. The third party filer has the option to withdraw its IPR petition.
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`48. FFC’s IPR petition is based on the same prior art as that previously
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`argued by Allergan’s Competitors in the prior U.S. District Court and Court of
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`Appeals litigation, namely the DeSantis, Timmermans, Stewart, and Larsson
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`references. FFC’s IPR petition further raises the identical invalidity arguments over
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`those references—obviousness—that the District Court and the Federal Circuit
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`already rejected.
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`49. Moreover, rather than accept the majority Federal Circuit opinion
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`affirming the district court’s judgment on the ’149 patent, FFC’s IPR petition instead
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`purports to rely on the dissenting opinion of Judge Dyk as a basis for asserting the
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`’149 patent is invalid. In so doing, the IPR petition significantly and falsely
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`characterizes what the dissent said about claim construction.
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`50. FFC’s March 9, 2015 letter explicitly threatens Allergan with its IPR
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`petition as follows: “[FFC] is confident that at a minimum, the IPR petition for the
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`’149 patent presents a significant and terminal threat to Allergan’s exclusive rights to
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`distribute Combigan.” Ex. D at 2.
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`51.
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`In an apparent effort to place additional pressure on Allergan, FFC’s
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`March 9, 2015 letter highlighted the fact that “upon institution of the IPR by the
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`PTAB, formerly time-barred defendants, such as [Allergan’s Competitors], will have
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`the opportunity to file petitions of their own in the ongoing invalidation proceedings.”
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`Id.
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`52. FFC’s letter further stated that “Allergan should be mindful that FFC’s
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`IPR could result in [Allergan’s Competitors] joining the fast-track challenge of the
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`’149 patent.” Id.
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`53.
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`In the concluding part of its letter, FFC attempts to extract compensation
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`from Allergan by stating that it “firmly believes that a company such as Allergan
`
`should be given a single opportunity to support FFC’s core social and investment
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`interests before other time-barred producers are able to file for joinder in the ’149
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`Patent IPR, and before FFC files additional IPR petitions against the COMBIGAN®
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`patents and proceeds with a Paragraph III filing. As such, FFC is amenable to
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`discussing an immediate and confidential settlement with Allergan.” Id. at 3.
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`54. FFC’s letter set a deadline of March 18, 2015 for Allergan to contact
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`FFC to discuss this “single opportunity” to “support” FFC’s “core social and
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`investment interests” in settlement of FFC’s IPR petition. Id.
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`55. On March 18, 2015, Allergan contacted FFC to obtain further
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`information regarding FFC’s demands.
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`56. On March 18, 2015, FFC, including Mr. Barnes, informed Allergan that
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`it would not disclose its demands unless Allergan first signed a non-disclosure
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`agreement. The draft non-disclosure agreement initially provided by FFC, in addition
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`to requiring confidentiality of settlement discussions, contained a term that barred the
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`use of anything learned under the non-disclosure agreement as a basis for bringing an
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`action against Mr. Barnes or FFC. Allergan refused to sign such an NDA, but
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`ultimately did enter into a modified NDA to speak to Mr. Barnes confidentially.
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`57. While these activities were ongoing, Mr. Barnes—FFC’s founder—
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`publicly stated that he sees “multiple pathways to monetization” of the IPR filing
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`against the ’149 patent. That statement is attached hereto as Exhibit G, page 4.
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`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
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`58.
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`Indeed, Allergan has learned that Hyacinth Sloop Capital, LLC, Mr.
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`Barnes’s other known entity, has threatened to file an IPR challenging the validity of
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`another company’s patent that covers a different drug. Allergan suspects that
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`Hyacinth Sloop and Mr. Barnes are similarly seeking to extort that other
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`pharmaceutical company.
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`59. Defendants’ (and third parties’) extortionate tactics necessarily raise
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`questions regarding the scope and reach of the IPR procedure for challenging the
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`validity of patents, involving substantial questions of patent law.
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`COUNT I – ATTEMPTED CIVIL EXTORTION
` UNDER CALIFORNIA PENAL CODE §§ 518 ET SEQ.
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`60. Allergan incorporates and re-alleges Paragraphs 1-59 of this Complaint
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`as if repeated verbatim in this Paragraph.
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`61. Defendants’ IPR petition regarding the ’149 patent is objectively
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`baseless and filed for an improper purpose. The IPR petition is based on the same
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`prior art and the same grounds already rejected by the District Court and the Federal
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`Circuit in the litigation between Allergan and the Competitors. Compounding the
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`matter, the IPR relies on a false characterization of the Federal Circuit opinion.
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`62. Defendants did not have and still do not have a reasonable basis for
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`filing the IPR petition against the ’149 patent based on the same prior art and the
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`same grounds that were already rejected by the U.S. District Court and the Federal
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`Circuit in the litigation between Allergan and the Competitors.
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`63. Defendants’ reason for filing the IPR petition is in an attempt to extort
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`Allergan through the guise of providing Allergan a “single opportunity” to “support”
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`FFC’s “core social and investment interests” in settlement of the IPR.
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`64. As described above, Defendants sent to Allergan a letter expressly
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`threatening Allergan if Allergan did not enter into an immediate and confidential
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`settlement regarding the IPR petition. Because Defendants’ threats against the ’149
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`patent are objectively baseless, Defendants’ conduct constitutes attempted extortion
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`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`Page 12 of 18
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`under California Penal Code §§ 519, 523 and 524, giving rise to this civil action.
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`65. Defendants’ unlawful purpose in filing the IPR petition against the ’149
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`patent and sending their letter to Allergan is further shown by Defendants’ fraudulent
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`claims to be prepared to file an ANDA for a generic brimonidine/timolol combination
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`product, and by proposing a name for it, “Combivious,” that is plainly a sham.
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`66. Defendants’ unlawful purpose and their consciousness of the same is
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`also manifest, by among other things, FFC’s initial refusal to provide any settlement
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`terms absent Allergan signing a non-disclosure agreement that forbade Allergan from
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`using any information learned in settlement talks as a grounds for bringing a lawsuit
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`against Defendants.
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`67. Further manifestation of Defendants’ unlawful purpose and
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`consciousness of the same is demonstrated by Mr. Barnes’ admission that there are
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`“multiple pathways to monetiz[e]” the IPR petition related to Allergan’s ’149 patent.
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`68. Further manifestation of Defendants’ unlawful purpose and
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`consciousness of the same is demonstrated by Defendants’ attempts to intimidate
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`Allergan into settling quickly by threatening that “upon institution of the IPR by the
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`PTAB, formerly time-barred defendants, such as [Allergan’s Competitors], will have
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`the opportunity to file petitions of their own in the ongoing invalidation proceedings.”
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`69. Defendants’ “settlement” offer is an attempt by FFC to use the threat of
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`an objectively baseless IPR petition and fake ANDA filing to extort Allergan.
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`70. Defendants have improperly used the IPR process because Defendants’
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`statements and actions reveal that they do not have a genuine desire to proceed with
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`the IPR or to invalidate Allergan’s ’149 patent, but rather used the IPR process in an
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`effort to extort Allergan as Defendants knew that they could withdraw their IPR
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`petition if Allergan succumbed to their demand.
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`71. Defendants have improperly used the FDA’s ANDA process because
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`Defendants do not have a desire or intent to proceed with a generic brimonidine
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`tartrate/timolol maleate ophthalmic solution, but simply used the false “proposed
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`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`FDA filing” to further Defendants’ efforts to extort Allergan as Defendants never
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`actually formulated or filed for a generic solution.
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`72. Defendants’ activities constitute attempted civil extortion under
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`California law and are contrary to public policy.
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`73. As a proximate cause of Defendants’ actions, Allergan has suffered
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`disruption to its business, loss of productivity, loss of business goodwill, substantial
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`litigation expense, additional operational expense, and other damages in an amount to
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`be proven at trial, but in any event in excess of $100,000.
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`COUNT II – UNFAIR COMPETITION UNDER CALIFORNIA BUSINESS &
`PROFESSIONS CODE §§ 17200 ET SEQ.
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`74. Allergan incorporates and realleges Paragraphs 1-73 of this Complaint as
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`if repeated verbatim in this Paragraph.
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`75. Defendants’ conduct described herein constitutes unfair, unlawful and/or
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`fraudulent business acts or practices under California Business and Professions Code.
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`§§ 17200 et seq., including but not limited to:
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`a. Creating a limited liability company with no offices, and only a mail
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`drop box for the purpose of attempting to extort Allergan;
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`b. Preparing a false “proposed FDA filing” for a hypothetical generic
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`brimonidine tartrate/timolol maleate ophthalmic solution in furtherance
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`of Defendants’ attempts to extort Allergan through the guise of a
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`settlement of the IPR proceeding;
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`c. Falsely representing to Allergan that Defendants were prepared to “seek
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`FDA approval via a Paragraph III ANDA filing to produce and market a
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`generic brimonidine tartrate/timolol maleate ophthalmic solution with
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`[an unnamed] Contract Manufacturing Partner (“CMP”)”;
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`d. Filing an objectively baseless IPR petition for the unlawful purpose of
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`extorting Allergan; and
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`e. Attempting to intimidate Allergan into settling quickly by threatening
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`13
`COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
`Case No.
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`that “upon institution of the IPR by the PTAB, formerly time-barred
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`defendants, such as [Allergan’s Competitors], will have the opportunity
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`to file petitions of their own in the ongoing invalidation proceedings.”
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`76. As a proximate cause of Defendants’ actions, Allergan has suffered
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`disruption to its business, loss of productivity, loss of business goodwill, substantial
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`litigation expense, additional operational expense, and other damages in an amount to
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`be proven at trial, but in any event in excess of $100,000.
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`COUNT III – MALICIOUS PROSECUTION UNDER CALIFORNIA LAW
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`77. Allergan incorporates and realleges Paragraphs 1-76 of this Complaint as
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`if repeated verbatim in this Paragraph.
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`78. Defendants’ conduct in filing the IPR petition constitutes malicious
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`prosecution under California law by, among other things:
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`a. Creating a limited liability company with no offices, and only a mail
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`drop box for the purpose of attempting to extort Allergan;
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`b. Filing an objectively baseless IPR petition for unlawful purpose of
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`extorting Allergan;
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`c. Preparing a false “proposed FDA filing” for a hypothetical generic
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`brimonidine tartrate/timolol maleate ophthalmic solution in furtherance
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`of Defendants’ attempts to extort Allergan through the guise of a
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`settlement of the IPR proceeding;
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`d. Falsely representing to Allergan that Defendants were prepared to “seek
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`FDA approval via a Paragraph III ANDA filing to produce and market a
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`generic brimonidine tartrate/timolol maleate ophthalmic solution with
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`[an unnamed] Contract Manufacturing Partner (“CMP”)” in furtherance
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`of Defendants’ attempts to extort Allergan through the guise of a
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`settlement of the IPR proceedings; and
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`e. Furthering their extortionate acts by attempting to intimidate Allergan
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`into settling quickly with threats that “upon institution of the IPR by the
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`PTAB, formerly time-barred defendants, such as [Allergan’s
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`Competitors], will have the opportunity to file petitions of their own in
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`the ongoing invalidation proceedings.”
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`79. As a proximate and substantial cause of Defendants’ actions, including
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`the filing and maintenance of an objectively baseless IPR petition, Allergan has
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`suffered disruption to its business, loss of productivity, loss of business goodwill,
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`substantial litigation expense, additional operational expense, and other damages in
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`an amount to be proven at trial, but in any event in excess of $100,000.1
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiffs Allergan, Inc., and Allergan Sales, LLC prays for the
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`following relief against Defendants:
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`1.
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`For judgment in favor of Allergan that Defendants have engaged in
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`attempted civil extortion in violation of California Penal Code §§ 519 et seq.;
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`2.
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`For judgment in favor of Allergan that Defendants have violated
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`California’s unfair competition law, codified at Bus. & Prof. Code §§ 17200 et seq.;
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`3.
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`For judgment in favor of Allergan that Defendants’ filing and
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`maintenance of an objectively baseless IPR constitutes malicious prosecution under
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`California law;
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`4.
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`For a permanent injunction prohibiting Defendants, including their
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`officers, agents, employees, and all persons acting in concert or participation with
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`them who receive actual notice of the Court’s Order, from pursuing the objectively
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`baseless IPR petition that Defendants filed against Allergan’s ’149 patent or any other
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`IPR petitions against Allergan;
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`5.
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`For a permanent injunction prohibiting Defendants, including their
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`officers, agents, employees, and all persons acting in concert or participation with
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`1 Allergan recognizes that a claim for malicious prosecution requires that the objectively
`baseless IPR have concluded in its favor. However, given PTAB’s statutory timeline for deciding
`an IPR – 6 months from filing for the institution decision or 18 months from filing for a final
`decision – Allergan thought it judicially economical and prudent to allege the cause of action now
`rather than have t