Case 2:15-cv-01455-WCB Document 505 Filed 10/09/17 Page 1 of 6 PageID #: 25355
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ALLERGAN, INC.,
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` Plaintiff,
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`v.
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`TEVA PHARMACEUTICALS USA, INC., et
`al.,
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` Defendants.
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` Civil Action No. 2:15-cv-1455 WCB LEAD
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`PLAINTIFF’S RESPONSE TO DEFENDANTS’ NOTICE REGARDING DOCUMENT
`PRODUCTION ACCORDING TO THE COURT’S OCTOBER 6, 2017 ORDER
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`Defendants have repeatedly asserted that Allergan’s assignment of the patents-in-suit to
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`the Saint Regis Mohawk Tribe (“Tribe”) and receipt of a field-limited exclusive license back is a
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`“sham,” but have provided absolutely no basis as to why in any of its communications to this
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`Court or to Allergan. In an effort not to further burden the Court on these issues, Allergan has
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`been trying to gain Defendants’ consent to add the Tribe as a party to this suit. This past
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`Thursday, Defendants finally stated that they oppose joining the Tribe as a party but, to date,
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`have not clarified why. Defendants’ unsolicited October 6 filing (Dkt. 504), which propounds a
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`list of discovery requests as to the assignment and license between Allergan and the Tribe, goes
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`well beyond what the Court ordered Allergan to produce (Dkt. 503) and is an improper fishing
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`expedition. Allergan will produce the materials that the Court has ordered—most of which
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`Defendants already have—but Defendants’ additional discovery requests should be denied.
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`I.
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`FACTUAL BACKGROUND
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`On September 8, 2017, Allergan assigned the patents-in-suit to the Tribe and received a
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`field-limited exclusive license to those patents back from the Tribe. On that same day, Allergan
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`Case 2:15-cv-01455-WCB Document 505 Filed 10/09/17 Page 2 of 6 PageID #: 25356
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`notified the Court of the transactions (Dkt. 479) and informed the Court that, although the
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`transaction would have no impact on the litigation, it expected to join the Tribe as a plaintiff in
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`due course. Allergan also produced all agreements between Allergan and the Tribe—including
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`both the assignment agreement and the license agreement relevant here—to the Defendants on
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`that same day.
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`After the parties filed their respective findings of fact and conclusions of law, Allergan
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`sought Defendants’ consent to join the Tribe as a co-plaintiff under Fed. R. Civ. P. 25(c),
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`confirming to Defendants that the Tribe would not assert sovereign immunity in this case. In
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`response, Defendants initially stated that they believed addition of the Tribe was unnecessary
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`under Fed. R. Civ. P. 25(c), but could not determine their position on Allergan’s request absent
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`seeing a draft motion. After further discussion, Allergan provided a draft motion, which
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`prompted a meet and confer between the parties on Thursday, October 5. On that call,
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`Defendants notified Allergan that Defendants would oppose a motion to join the Tribe under
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`Rule 25(c) because they allegedly could not determine whether or not the transaction was a
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`“sham.” Defendants provided no authority or specific basis for their allegations that the
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`assignment and license transactions, which agreements they’ve had for a month, are a “sham.”
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`On the call, Defendants also did not raise the specific document requests that they now put
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`before this Court, in violation of Local Rule CV-7(h).
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`Upon learning of Defendants’ opposition to a straight-forward joinder motion late last
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`week, Allergan intended to file an opposed motion to join the Tribe as a co-plaintiff, and will do
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`so by the October 13 deadline that the Court has set for the parties to file their briefs addressing
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`the issue of whether the Tribe should be joined. Allergan will also produce all the materials
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`identified in the Court’s October 6 Order by October 10, and produce to the Court
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`Case 2:15-cv-01455-WCB Document 505 Filed 10/09/17 Page 3 of 6 PageID #: 25357
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`contemporaneously with this filing the assignment and license documents already provided to
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`Defendants. (See Exs. A-D.)
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`II.
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`ARGUMENT
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`Under the agreements between Allergan and the Tribe, there is no question, and
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`Defendants have raised none, that Allergan assigned the patents-in-suit to the Tribe (Exs. A and
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`B (Short and Long Form Assignment Agreements) and received back a limited, exclusive field-
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`of-use license for FDA-approved uses of Restasis® in the United States. (Ex. C (License
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`Agreement) at § 2.1.) The Tribe, in turn, retained enforcement rights and rights to practice the
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`patents in all other fields, and ongoing royalties for Allergan’s use in its exclusive field, as well
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`as other rights in the patents-in-suit. (See Ex. C at §§ 2.4, 4.2, 5.2.2, 5.2.3, 5.2.5.) Moreover, the
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`Tribe has a legitimate monetary interest in the validity of the patents, which, through Allergan’s
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`ongoing royalties (id. at § 4.2), will provide a substantial and much-needed revenue stream to the
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`Tribe. See Patent Owner’s Motion to Dismiss for Lack of Jurisdiction Based on Tribal
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`Sovereign Immunity, IPR2016-01128, Paper No. 81, at 18-19 (filed Sept. 22, 2017).
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`This transaction between Allergan and the Tribe makes the Tribe a proper party to this
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`case, eligible to be joined under Fed. R. Civ. P. 25(c). See Eastman Chem. Co. v. Alphapet Inc.,
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`2011 WL 13054223, at *3 (D. Del. Dec. 9, 2011); Inline Connection Corp. v. Verizon Internet
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`Servs., Inc., 2016 WL 5532598, at *4 (D. Del. Sept. 28, 2016). The Tribe now owns substantial
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`rights in the patents-in-suit, and Allergan does not meet the standard of a “virtual assignee” that
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`owns “all substantial rights.” See A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 1213, 1217-18
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`(Fed. Cir. 2010).
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`In the face of this transaction, Defendants assert that Allergan’s assignment of the
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`patents-in-suit to the Tribe is a “sham,” but have provided no authority or other basis to support
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`this assertion. While the motivation for Defendants’ assertion is clear enough—they would like
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`Case 2:15-cv-01455-WCB Document 505 Filed 10/09/17 Page 4 of 6 PageID #: 25358
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`to defeat any Tribal assertion of sovereign immunity at the PTAB, where that issue is being
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`litigated—its relevance to this case is tenuous at best. As Allergan already informed Defendants
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`by e-mail on September 15, the Tribe will not be asserting sovereign immunity in this case. (See
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`also Ex. C at § 5.2.2 (providing that the Tribe “shall not assert its sovereign immunity as to any
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`claim, counter-claim or affirmative defense in the E.D. Texas Litigations”).)
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`Accordingly, there is no sovereign immunity to defeat in this proceeding, and whether or
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`not the Tribe should be joined is governed by Rule 25(c). That Rule provides that, in the event
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`of an ownership transfer, “the action may be continued by or against the original party, unless the
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`court upon motion directs the person to whom the interest is transferred to be substituted in the
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`action or joined with the original party.” In this case, the interest has, in fact, been transferred to
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`the Tribe, so the only issue for the Court to address is whether joinder is appropriate. Additional
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`discovery will not change the fact that the transfer has occurred. See Paleteria La Michoacana,
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`Inc. v. Productos Lacteos Tocumbo S.A. De C.V., 247 F. Supp. 3d 76 (D.D.C. 2017) (denying
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`request for additional discovery on a Rule 25(c) motion where the evidence of transfer was not
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`contested).
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`Moreover, while loudly proclaiming that the transaction between Allergan and the Tribe
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`is a “sham,” Defendants have failed to provide any reason why there is anything wrong with the
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`transaction. The Tribe’s assertion of sovereign immunity at the PTAB does not shield the
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`patents from validity challenge here. Allergan and the Tribe understand full well that this Court
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`will still enter a judgment as to the validity of the patents, and nothing about the assignment
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`alters that in any way. (See, e.g., Ex. C at § 5.2.2.)
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`Defendants’ filing is an improper fishing expedition, and Defendants have provided no
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`reason why any of the information it seeks is relevant to this case. Allergan will produce the
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`Case 2:15-cv-01455-WCB Document 505 Filed 10/09/17 Page 5 of 6 PageID #: 25359
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`materials requested in the Court’s October 6 Order by the October 10 deadline, but there is no
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`need for the Court to require any additional discovery beyond that.
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`Dated: October 9, 2017
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`Respectfully submitted,
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`FISH & RICHARDSON P.C.
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`/s/ Jonathan E. Singer
`By:
`Jonathan E. Singer (CA Bar No. 187908)
`LEAD ATTORNEY
`singer@fr.com
`Juanita R. Brooks (CA Bar No. 75934)
`brooks@fr.com
`12390 El Camino Real
`San Diego, CA 92130
`Telephone: 858-678-5070
`Facsimile: 858-678-5099
`
`Michael J. Kane (MN Bar No. 0247625)
`kane@fr.com
`Deanna J. Reichel (MN Bar No. 0326513)
`reichel@fr.com
`Joseph A. Herriges (MN Bar No. 390350)
`herriges@fr.com
`60 South Sixth Street, #3200
`Minneapolis, MN 55402
`Telephone: (612) 335-5070
`Facsimile: (612) 288-9696
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`Douglas E. McCann (DE Bar No. 3852)
`dmccann@fr.com
`Susan Morrison (DE Bar No. 4690)
`morrison@fr.com
`Robert M. Oakes (DE Bar No. 5217)
`oakes@fr.com
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19801
`Telephone: (302) 652-5070
`Facsimile: (302) 652-0607
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`J. Wesley Samples (OR Bar No. 121784)
`samples@fr.com
`901 15th Street, N.W., 7th Floor
`Washington, D.C. 20005
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`Case 2:15-cv-01455-WCB Document 505 Filed 10/09/17 Page 6 of 6 PageID #: 25360
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`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
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`T. John Ward, Jr.
`State Bar No. 00794818
`E-mail: jw@wsfirm.com
`Wesley Hill
`State Bar No. 24032294
`E-mail: wh@wsfirm.com
`Claire Abernathy Henry
`State Bar No. 24053063
`E-mail: claire@wsfirm.com
`Andrea L. Fair
`State Bar No. 24078488
`E-mail: andrea@wsfirm.com
`WARD, SMITH & HILL, PLLC
`1507 Bill Owens Parkway
`Longview, Texas 75604
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
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`COUNSEL FOR PLAINTIFF
`ALLERGAN, INC.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a) on October 9, 2017. As such, this document was served on
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`all counsel who are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A).
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`/s/ Jonathan E. Singer
`Jonathan E. Singer
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