Case 2:15-cv-01455-WCB Document 509 Filed 10/10/17 Page 1 of 3 PageID #: 25538
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ORDER
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`Case No. 2:15-cv-1455-WCB
`LEAD CASE
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`TEVA PHARMACEUTICALS USA, INC.,
`et al.,
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`ALLERGAN, INC.,
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`Plaintiff,
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`v.
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`Defendants.
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`On September 8, 2017, following the trial of this case, plaintiff Allergan, Inc., filed a letter
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`with the Court announcing that Allergan had recently assigned its rights to a number of patents,
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`including the patents at issue in this case, to the Saint Regis Mohawk Tribe. Allergan stated that it
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`now has an exclusive license to the patents-in-suit and added that it “expects to join the Tribe as a
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`co-plaintiff in due course.” Dkt. No. 480-1.
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`After not receiving a motion from Allergan for a month, the Court on October 6, 2017,
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`entered an order directing Allergan to submit information regarding the assignment to the Tribe by
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`October 10, 2017, and directing the parties to file briefs addressing the question whether the Tribe
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`should be added as a co-plaintiff or whether the assignment transaction should be disregarded as a
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`sham by October 13, 2017. Dkt. No. 503. Later that day, the defendants filed what they styled
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`Defendants’ Notice Regarding Allergan’s Document Production According to the Court’s October
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`6, 2017 Order (Dkt. No. 503). Dkt. No. 504. In that filing, the defendants sought to ensure that
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`they would receive copies of the materials submitted by Allergan. In addition, the defendants
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`listed nine categories of documents that they believed Allergan should produce in response to the
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`Case 2:15-cv-01455-WCB Document 509 Filed 10/10/17 Page 2 of 3 PageID #: 25539
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`Court’s October 6 order and indicated that, “in the event evaluation of Allergan’s production
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`reveals the necessity,” they would be requesting leave to conduct Rule 30(b)(6) or limited Rule
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`30(b)(1) depositions directed to the nature of Allergan’s transaction with the Tribe. The
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`defendants also requested “leave to file a letter seeking relief from the October 13 filing and
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`allowing Defendants to conduct such depositions on an expedited basis.” Id. at 2.
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`On October 9, 2017, Allergan filed Plaintiff’s Response to Defendants’ Notice Regarding
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`Document Production According to the Court’s October 6, 2017 Order. Dkt. No. 505. That filing
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`contained a selection of documents regarding the assignment transaction. Dkt. Nos. 505, 506. In
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`addition, Allergan noted that it had sought the defendants’ consent to a motion to add the Tribe as a
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`co-plaintiff pursuant to Federal Rule of Civil Procedure 25(c), but that the defendants had not
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`consented to such a motion. Dkt. No. 505, at 2. Allergan stated that it would file an opposed
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`motion to add the Tribe as a co-plaintiff by the October 13 deadline that the Court set for the
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`parties to file their briefs addressing the issue of whether the Tribe should be joined. Allergan also
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`stated that would produce “all the materials identified in the Court’s Order 6 order by October 10,
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`and produce to the Court contemporaneously with this filing the assignment and license documents
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`already provided to Defendants.” Id. at 2-3.
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`In light of the parties’ recent filings, the Court directs as follows:
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`1. It is not entirely clear from Allergan’s latest filing whether it has provided, or intends to
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`provide, the defendants with all of the materials that it has provided and/or will provide to the
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`Court. The Court directs that Allergan do so, to ensure that the defendants have all the same
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`information that is supplied to the Court.
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`2. The assignment of the patents-in-suit to the Tribe refers to “good and valuable
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`consideration” for the assignment. Dkt. No. 505-1, Ex. A at 1. As part of its submission to be
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`Case 2:15-cv-01455-WCB Document 509 Filed 10/10/17 Page 3 of 3 PageID #: 25540
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`made on October 10, 2017, Allergan is directed to identify what that “good and valuable
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`consideration” consisted of and to provide documentary evidence confirming the payment by the
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`Tribe of any such consideration for the assignment of the patents.
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`3. As for the defendants’ requests for further materials and the opportunity to conduct
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`depositions, the Court denies those requests. The Court does not believe that such procedures are
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`necessary to decide what the Court needs to decide with respect to the question whether the Tribe
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`should be added as a party.
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`4. The Court also denies the defendants’ request to file a letter seeking relief from the
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`October 13 date for filing briefs addressing the question whether the Tribe should be added as a co-
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`plaintiff or whether the assignment transaction should be disregarded as a sham.
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`5. In light of the further submissions by the parties, the Court directs that the briefs that are
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`scheduled to be filed by October 13, 2017, be filed by 2 p.m. Central Time on that day. Based on a
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`review of the briefs, the Court will determine by the close of business on October 13 whether a
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`hearing will be needed.
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`6. If a hearing is needed, the Court will so advise the parties. In the event that the Court
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`orders a hearing to be held, it will be held in Washington, D.C., on October 16, 2017.
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` IT IS SO ORDERED.
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`SIGNED this 10th day of October, 2017.
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`_____________________________
`WILLIAM C. BRYSON
`UNITED STATES CIRCUIT JUDGE
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`3
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