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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
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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)
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UNITED STATES DISTRICT COURT
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FOR THE CENTRAL DISTRICT OF CALIFORNIA
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SOUTHERN DIVISION
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ALLERGAN, INC., ALLERGAN
SALES, LLC,
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Plaintiffs,
v.
FERRUM FERRO CAPITAL, LLC;
KEVIN BARNES,
Defendants.
Case No.
COMPLAINT FOR CIVIL
EXTORTION, MALICIOUS
PROSECUTION, AND UNFAIR
BUSINESS PRACTICES ARISING
FROM U.S. PATENT LAWS
JURY TRIAL DEMANDED
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COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
Case No.
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):
4
5
NATURE OF THE ACTION
1.
This is a civil action arising out of Defendants attempt to extort
Allergan by misusing the Inter Partes Review (IPR) process established by the
America Invents Act (AIA), H.R. 1249, enacted to reform 35 U.S.C. 1 et seq.
Defendants conduct raises substantial issues related to the misuse of the patent
system and the processes established by the AIA, and constitutes attempted civil
10
extortion and malicious prosecution under California law in addition to violating
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Californias Unfair Competition Law codified at California Bus. & Prof. Code
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17200 et seq.
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THE PARTIES
2.
Allergan, Inc. is a corporation organized and existing under the laws of
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the State of Delaware, with a principal place of business at 2525 Dupont Drive,
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Irvine, California 92612.
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3.
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.
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.
On information and belief, Kevin Barnes in a citizen of the state of New
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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
6.
This Court has original jurisdiction over all causes of action asserted
herein pursuant to 28 U.S.C. 1331, 1338, or 1367. As described in detail below,
this complaint necessarily raises issues related to Defendants misuse of the patent
laws of the United States of America, and the processes established by the AIA,
which amended the patent laws of the United States.
7.
FFC has filed an objectively baseless IPR petition for the express
purpose of monetizing the petition, including by attempting to extort compensation
from Allergan. The objective baselessness of FFCs IPR petition necessarily raises
10
federal issues that are actually disputed and substantial. Moreover, the issues raised
11
by this complaint are not limited to the facts of or parties involved in this case, but
12
rather apply to many other AIA petitioners attempting similar extortionate schemes.
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Indeed, the behavior complained of hereinthe use of the IPR process in an effort to
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extract compensation from patent-holdershas 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 Courts 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.
Given the importance and potential impact of this dispute on the federal
20
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.
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9.
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
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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
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to allegedly do business in this Judicial District and to avail itself of the laws in this
Judicial District.
10.
This Court has personal jurisdiction over Kevin Barnes because Mr.
Barnes, acting through FFC, specifically reached out to Allergan, which is resident in
this Judicial District, for the purposes of extorting Allergan under the guise of
settlement of an IPR petition authorized under the AIA. Mr. Barnes, through FFC,
has hired counsel based in this Judicial District for the purpose of aiding in its efforts
to extort Allergan under the guise of settlement from Allergan. The harm caused by
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.
Allergans 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
1391(c).
FACTUAL ALLEGATIONS REGARDING ALLERGANS 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 worlds leading and most innovative
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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
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million patients worldwide. While the cause of glaucoma is unknown, a symptom
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COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
Case No.
of the disease is a dramatic escalation of the pressure inside the eye, known as
intraocular pressure. Elevated intraocular pressure is known as ocular hypertension.
16.
While incurable, the elevated intraocular pressure found in glaucoma
and ocular hypertension patients can be treated with eye drops to control pressure,
slowing the progression of the diseases. For many patients, one type of drop a day is
not enoughthese patients must administer multiple medications, many of which
require multiple doses taken at different times of day.
17.
In part to solve this problem, Allergan developed COMBIGAN, which
is a combination of brimonidine and timolol for topical ophthalmic use in treating
10
patients suffering from glaucoma and/or ocular hypertension. The development of
11
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
these six patents, including the 149 patent.
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.
pharmaceutical companies, including Sandoz, Inc., Hi-Tech Pharmacal Co., Inc.,
Alcon Laboratories, Inc., Falcon Pharmaceuticals, Ltd., Apotex, Inc., Apotex,
Corporation, and Watson Laboratories, Inc. (collectively the Competitors or
Allergans Competitors), have filed Abbreviated New Drug Applications
(ANDA) with the United States Food and Drug Administration (FDA), seeking
approval to market generic versions of COMBIGAN before the expiration of
Allergans patents covering COMBIGAN, including the 149 patent. These
ANDAs were filed pursuant to the Hatch-Waxman Act, the statute that governs
generic drug approvals.
10
24.
As contemplated by the Hatch-Waxman Act, Allergan sued the
11
Competitors for a judgment that the Competitors generic formulations disclosed in
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their various ANDA applications infringed Allergans 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
Allergans patents, including the 149 patent, were invalid.
26.
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,
18
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,
23
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.
In August 2011, the district court entered judgment in favor of Allergan
26
on the Competitors validity challenges to the 149 patent, rejecting the Competitors
27
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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COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
Case No.
29.
On May 1, 2013, the United States Court of Appeals for the Federal
Circuit affirmed the district courts judgment rejecting the Competitors validity
challenge to the 149 patent. In September of that same year, the Court of Appeals
denied a petition for rehearing and rehearing en banc, and issued its mandate. The
United States Supreme Court denied certiorari in 2014. As a result of that litigation,
the Competitors are enjoined from launching their generic versions of COMBIGAN
until April 2022.
FERRUM FERRO CAPITALS FALSE AND
EXTORTIONATE CONDUCT
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30.
Allergan incorporates and re-alleges Paragraphs 1-29 of this Complaint
as if repeated verbatim in this Paragraph.
31.
On information and belief, FFC was formed as a Delaware Limited
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 FFCs 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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Case No.
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35.
Consistent with its mail drop box place of business, FFCs 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 FFCs supposed activities. A print-out of all of the pages of FFCs website is
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attached hereto as Exhibit B.
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36.
Indeed, FFCs 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 Capitals 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
Case No.
37.
On information and belief, FFC has no facilities in which to conduct
research and development to create a generic formulation of Allergans
COMBIGAN, or any other pharmaceutical drug.
38.
On information and belief, FFC has not financed any research and
development activities to create a generic formulation of Allergans COMBIGAN,
or any other pharmaceutical drug.
39.
On information and belief, FFC has hired no scientists or other personnel
capable of performing any research and development activities to create a generic
formulation of Allergans COMBIGAN, or any other pharmaceutical drug.
10
40.
On information and belief, FFC has hired no regulatory or other
11
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
attached as Exhibit D.
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42.
FFCs 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
19
Manufacturing Partner (CMP). Ex. D at 2.
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43.
Attached to the March 9, 2015 letter, FFC included an incomplete
21
proposed FDA filing for generic brimonidine tartrate/timolol maleate ophthalmic
22
solution, attached hereto as Exhibit E. FFCs proposed ANDA filing is clearly a
23
sham.
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44.
In the sham proposed FDA filing, FFC named its fictitious generic
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brimonidine tartrate/timolol maleate ophthalmic solution Combivious, apparently
26
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
Case No.
abbreviated new drug. Notably, FFC omitted the certification acknowledgment and
the signature page of the form from what it sent Allergan.
45.
Also attached to the March 9, 2015 letter was an IPR petition that FFC
filed with the United States Patent and Trademark Office (PTO) on March 9, 2015
challenging the validity of Allergans 149 patent. That IPR petition is attached
hereto as Exhibit F.
46.
IPR is a trial proceeding established by Congress and the President when
they enacted into law the AIA, which amended 35 U.S.C. 1 et seq. IPRs are
conducted before the Patent Trial and Appeal Board (PTAB) of the PTO whereby a
10
third party may seek a review of the patentability of one or more claims in a patent.
11
47.
The third party filer has the option to withdraw its IPR petition.
12
48.
FFCs IPR petition is based on the same prior art as that previously
13
argued by Allergans Competitors in the prior U.S. District Court and Court of
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Appeals litigation, namely the DeSantis, Timmermans, Stewart, and Larsson
15
references. FFCs IPR petition further raises the identical invalidity arguments over
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those referencesobviousnessthat the District Court and the Federal Circuit
17
already rejected.
18
49.
Moreover, rather than accept the majority Federal Circuit opinion
19
affirming the district courts judgment on the 149 patent, FFCs IPR petition instead
20
purports to rely on the dissenting opinion of Judge Dyk as a basis for asserting the
21
149 patent is invalid. In so doing, the IPR petition significantly and falsely
22
characterizes what the dissent said about claim construction.
23
50.
FFCs March 9, 2015 letter explicitly threatens Allergan with its IPR
24
petition as follows: [FFC] is confident that at a minimum, the IPR petition for the
25
149 patent presents a significant and terminal threat to Allergans exclusive rights to
26
distribute Combigan. Ex. D at 2.
27
28
51.
In an apparent effort to place additional pressure on Allergan, FFCs
March 9, 2015 letter highlighted the fact that upon institution of the IPR by the
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COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
Case No.
PTAB, formerly time-barred defendants, such as [Allergans Competitors], will have
the opportunity to file petitions of their own in the ongoing invalidation proceedings.
Id.
52.
FFCs letter further stated that Allergan should be mindful that FFCs
IPR could result in [Allergans Competitors] joining the fast-track challenge of the
149 patent. Id.
53.
In the concluding part of its letter, FFC attempts to extract compensation
from Allergan by stating that it firmly believes that a company such as Allergan
should be given a single opportunity to support FFCs core social and investment
10
interests before other time-barred producers are able to file for joinder in the 149
11
Patent IPR, and before FFC files additional IPR petitions against the COMBIGAN
12
patents and proceeds with a Paragraph III filing. As such, FFC is amenable to
13
discussing an immediate and confidential settlement with Allergan. Id. at 3.
14
54.
FFCs letter set a deadline of March 18, 2015 for Allergan to contact
15
FFC to discuss this single opportunity to support FFCs core social and
16
investment interests in settlement of FFCs IPR petition. Id.
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55.
On March 18, 2015, Allergan contacted FFC to obtain further
information regarding FFCs demands.
56.
On March 18, 2015, FFC, including Mr. Barnes, informed Allergan that
20
it would not disclose its demands unless Allergan first signed a non-disclosure
21
agreement. The draft non-disclosure agreement initially provided by FFC, in addition
22
to requiring confidentiality of settlement discussions, contained a term that barred the
23
use of anything learned under the non-disclosure agreement as a basis for bringing an
24
action against Mr. Barnes or FFC. Allergan refused to sign such an NDA, but
25
ultimately did enter into a modified NDA to speak to Mr. Barnes confidentially.
26
57.
While these activities were ongoing, Mr. BarnesFFCs founder
27
publicly stated that he sees multiple pathways to monetization of the IPR filing
28
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
Case No.
58.
Indeed, Allergan has learned that Hyacinth Sloop Capital, LLC, Mr.
Barness other known entity, has threatened to file an IPR challenging the validity of
another companys patent that covers a different drug. Allergan suspects that
Hyacinth Sloop and Mr. Barnes are similarly seeking to extort that other
pharmaceutical company.
59.
Defendants (and third parties) extortionate tactics necessarily raise
questions regarding the scope and reach of the IPR procedure for challenging the
validity of patents, involving substantial questions of patent law.
COUNT I ATTEMPTED CIVIL EXTORTION
UNDER CALIFORNIA PENAL CODE 518 ET SEQ.
10
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12
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60.
Allergan incorporates and re-alleges Paragraphs 1-59 of this Complaint
as if repeated verbatim in this Paragraph.
61.
Defendants IPR petition regarding the 149 patent is objectively
14
baseless and filed for an improper purpose. The IPR petition is based on the same
15
prior art and the same grounds already rejected by the District Court and the Federal
16
Circuit in the litigation between Allergan and the Competitors. Compounding the
17
matter, the IPR relies on a false characterization of the Federal Circuit opinion.
18
62.
Defendants did not have and still do not have a reasonable basis for
19
filing the IPR petition against the 149 patent based on the same prior art and the
20
same grounds that were already rejected by the U.S. District Court and the Federal
21
Circuit in the litigation between Allergan and the Competitors.
22
63.
Defendants reason for filing the IPR petition is in an attempt to extort
23
Allergan through the guise of providing Allergan a single opportunity to support
24
FFCs core social and investment interests in settlement of the IPR.
25
64.
As described above, Defendants sent to Allergan a letter expressly
26
threatening Allergan if Allergan did not enter into an immediate and confidential
27
settlement regarding the IPR petition. Because Defendants threats against the 149
28
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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under California Penal Code 519, 523 and 524, giving rise to this civil action.
65.
Defendants unlawful purpose in filing the IPR petition against the 149
patent and sending their letter to Allergan is further shown by Defendants fraudulent
claims to be prepared to file an ANDA for a generic brimonidine/timolol combination
product, and by proposing a name for it, Combivious, that is plainly a sham.
66.
Defendants unlawful purpose and their consciousness of the same is
also manifest, by among other things, FFCs initial refusal to provide any settlement
terms absent Allergan signing a non-disclosure agreement that forbade Allergan from
using any information learned in settlement talks as a grounds for bringing a lawsuit
10
11
against Defendants.
67.
Further manifestation of Defendants unlawful purpose and
12
consciousness of the same is demonstrated by Mr. Barnes admission that there are
13
multiple pathways to monetiz[e] the IPR petition related to Allergans 149 patent.
14
68.
Further manifestation of Defendants unlawful purpose and
15
consciousness of the same is demonstrated by Defendants attempts to intimidate
16
Allergan into settling quickly by threatening that upon institution of the IPR by the
17
PTAB, formerly time-barred defendants, such as [Allergans Competitors], will have
18
the opportunity to file petitions of their own in the ongoing invalidation proceedings.
19
20
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69.
Defendants settlement offer is an attempt by FFC to use the threat of
an objectively baseless IPR petition and fake ANDA filing to extort Allergan.
70.
Defendants have improperly used the IPR process because Defendants
22
statements and actions reveal that they do not have a genuine desire to proceed with
23
the IPR or to invalidate Allergans 149 patent, but rather used the IPR process in an
24
effort to extort Allergan as Defendants knew that they could withdraw their IPR
25
petition if Allergan succumbed to their demand.
26
71.
Defendants have improperly used the FDAs ANDA process because
27
Defendants do not have a desire or intent to proceed with a generic brimonidine
28
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
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FDA filing to further Defendants efforts to extort Allergan as Defendants never
actually formulated or filed for a generic solution.
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72.
Defendants activities constitute attempted civil extortion under
California law and are contrary to public policy.
73.
As a proximate cause of Defendants actions, Allergan has suffered
disruption to its business, loss of productivity, loss of business goodwill, substantial
litigation expense, additional operational expense, and other damages in an amount to
be proven at trial, but in any event in excess of $100,000.
9
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COUNT II UNFAIR COMPETITION UNDER CALIFORNIA BUSINESS &
PROFESSIONS CODE 17200 ET SEQ.
74.
Allergan incorporates and realleges Paragraphs 1-73 of this Complaint as
if repeated verbatim in this Paragraph.
75.
Defendants conduct described herein constitutes unfair, unlawful and/or
14
fraudulent business acts or practices under California Business and Professions Code.
15
17200 et seq., including but not limited to:
16
17
18
a. Creating a limited liability company with no offices, and only a mail
drop box for the purpose of attempting to extort Allergan;
b. Preparing a false proposed FDA filing for a hypothetical generic
19
brimonidine tartrate/timolol maleate ophthalmic solution in furtherance
20
of Defendants attempts to extort Allergan through the guise of a
21
settlement of the IPR proceeding;
22
c. Falsely representing to Allergan that Defendants were prepared to seek
23
FDA approval via a Paragraph III ANDA filing to produce and market a
24
generic brimonidine tartrate/timolol maleate ophthalmic solution with
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[an unnamed] Contract Manufacturing Partner (CMP);
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28
d. Filing an objectively baseless IPR petition for the unlawful purpose of
extorting Allergan; and
e. Attempting to intimidate Allergan into settling quickly by threatening
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COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
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that upon institution of the IPR by the PTAB, formerly time-barred
defendants, such as [Allergans Competitors], will have the opportunity
to file petitions of their own in the ongoing invalidation proceedings.
76.
As a proximate cause of Defendants actions, Allergan has suffered
disruption to its business, loss of productivity, loss of business goodwill, substantial
litigation expense, additional operational expense, and other damages in an amount to
be proven at trial, but in any event in excess of $100,000.
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COUNT III MALICIOUS PROSECUTION UNDER CALIFORNIA LAW
77.
Allergan incorporates and realleges Paragraphs 1-76 of this Complaint as
if repeated verbatim in this Paragraph.
78.
Defendants conduct in filing the IPR petition constitutes malicious
prosecution under California law by, among other things:
a. Creating a limited liability company with no offices, and only a mail
drop box for the purpose of attempting to extort Allergan;
b. Filing an objectively baseless IPR petition for unlawful purpose of
extorting Allergan;
c. Preparing a false proposed FDA filing for a hypothetical generic
18
brimonidine tartrate/timolol maleate ophthalmic solution in furtherance
19
of Defendants attempts to extort Allergan through the guise of a
20
settlement of the IPR proceeding;
21
d. Falsely representing to Allergan that Defendants were prepared to seek
22
FDA approval via a Paragraph III ANDA filing to produce and market a
23
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
into settling quickly with threats that upon institution of the IPR by the
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COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
Case No.
PTAB, formerly time-barred defendants, such as [Allergans
Competitors], will have the opportunity to file petitions of their own in
the ongoing invalidation proceedings.
79.
As a proximate and substantial cause of Defendants actions, including
the filing and maintenance of an objectively baseless IPR petition, Allergan has
suffered disruption to its business, loss of productivity, loss of business goodwill,
substantial litigation expense, additional operational expense, and other damages in
an amount to be proven at trial, but in any event in excess of $100,000.1
PRAYER FOR RELIEF
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WHEREFORE, Plaintiffs Allergan, Inc., and Allergan Sales, LLC prays for the
following relief against Defendants:
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1.
attempted civil extortion in violation of California Penal Code 519 et seq.;
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For judgment in favor of Allergan that Defendants have engaged in
2.
For judgment in favor of Allergan that Defendants have violated
Californias unfair competition law, codified at Bus. & Prof. Code 17200 et seq.;
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3.
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.
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 Courts Order, from pursuing the objectively
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baseless IPR petition that Defendants filed against Allergans 149 patent or any other
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IPR petitions against Allergan;
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5.
For a permanent injunction prohibiting Defendants, including their
officers, agents, employees, and all persons acting in concert or participation with
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Allergan recognizes that a claim for malicious prosecution requires that the objectively
baseless IPR have concluded in its favor. However, given PTABs 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 to file a separate, subsequent lawsuit on that claim alone.
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COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
Case No.
them who receive actual notice of the Courts Order, from committing additional acts
of attempted civil extortion, civil extortion, malicious prosecution and/or additional
acts that violate Californias unfair competition law;
6.
For an award of restitutionary damages;
7.
For an award to Allergan of its reasonable attorneys fees; and
8.
For such other and further relief in law or in equity to which Allergan
may be justly entitled.
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JURY DEMAND
Allergan demands trial by jury for all issues so triable.
Dated: June 19, 2015
FISH & RICHARDSON P.C.
By: /s/ Michael A. Amon
Michael A. Amon
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 Singer
singer@fr.com
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 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
William B. Mateja (To be admitted Pro Hac
Vice)
mateja@fr.com
FISH & RICHARDSON P.C.
1717 Main Street, Suite 5000
Dallas, Texas 75201
Tel: (214) 747-5070/Fax: (214) 747-2091
Susan M. Coletti (To be admitted Pro Hac Vice)
coletti@fr.com
FISH & RICHARDSON P.C.
222 Delaware Ave., 17th Floor
PO Box 1114
Wilmington, Delaware 19801
Tel: (302) 652-5070
Attorneys for Plaintiff Allergan, Inc., and
Allergan Sales, LLC
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COMPLAINT FOR CIVIL EXTORTION AND UNFAIR BUSINESS PRACTICES ARISING FROM U.S. PATENT LAWS
Case No.
