NY Judge Won't Require In-Person Testimony In IP Bench Trial

By Dorothy Atkins
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Law360 (May 20, 2020, 4:45 PM EDT) -- A New York federal judge said Wednesday she won't require witnesses to testify in person in an upcoming July bench trial over a patent dispute between two drugmakers involving the nighttime urination medication Nocdurna, noting that many witnesses in the case are older people who are skittish about traveling.

During a teleconference hearing, U.S. District Judge Colleen McMahon rejected arguments by Ferring Pharmaceuticals Inc. that witnesses who are able to appear in person should be required to do so.

Ferring had said it plans to fly in its witnesses to New York for a portion of the trial involving Serenity Pharmaceuticals LLC and Reprise Biopharmaceutics LLC, and a key witness who lives in Connecticut should be required to show up in court to testify.

But Judge McMahon said she won't force witnesses to travel to court if they're uncomfortable. The judge said although it's not ideal, their examinations can be conducted remotely, and she'll also have their affidavits.

"I just don't think it's that big of a deal," the judge said. "I'll be able to see them, I'll be able to assess their credibility and that to me is the important thing. I might have not felt that way two months ago, but I have spent the past two months worrying about making everybody feel comfortable. That does color my thinking."

The hotly contested lawsuit is headed to a bench trial after the Switzerland-based drugmaker Ferring initially sued Serenity and its patent-holding company Reprise in April 2017, seeking to invalidate three patents related to their anti-diuretic desmopressin patent.

Serenity denied the allegations and hit Ferring with counterclaims in June 2018, accusing Ferring of infringing its patents with the drug Nocdurna, which treats frequent nighttime urination.

A bench trial, which is expected to be open to the public, was initially set to start March 24, but it has been repeatedly delayed due to the novel coronavirus outbreak.

After continuing the trial once, Judge McMahon told the parties in April that the trial could proceed "even during a pandemic" and that she planned to try the case starting May 26, or no later than two weeks thereafter.

On April 28, however, Judge McMahon scrawled a short note on the top of a joint letter the two sides submitted, saying the trial would be adjourned until July 6. The judge then asked the parties to outline their concerns with the trial.

In a letter to Judge McMahon on Tuesday, Ferring argued that witnesses who are able to appear in person should be required.

But in its own letter filed Wednesday morning, Serenity and Reprise called that plan "unfair and dangerous," noting that many of its witnesses are over 60 years old — one is 75 — and they would be required to travel to New York City, the epicenter of the pandemic with more than 27,500 deaths as of last week.

"Not only is Ferring's proposal unduly prejudicial to [Serenity and Reprise], it puts the health and safety of witnesses, the court, courtroom staff and attorneys at risk," the letter said.

In their letters, the parties agreed to holding the trial over a secure videoconference platform, and Ferring suggested using consulting firm TrialGraphix Inc.'s product called TRIALanywhere, which is supported by Zoom Communications Inc.

Ferring noted that the platform has been issued in several arbitrations and in a hearing in front of U.S. District Judge Rodney Gilstrap in the Eastern District of Texas in April.

During a status conference Wednesday, Judge McMahon sided with Serenity and Reprise and pointed out that the court is preparing courtrooms by adding plexiglass barriers to the witness stands and configuring seating in the courtroom to adhere to social distancing rules.

The judge said counsel seating will be "limited by fiat," and "they'll have to sit where they're told."

"It ain't negotiable," the judge said.

Ferring's counsel, Mary Bourke of Womble Bond Dickinson, noted that Ferring's witnesses in Europe have agreed to travel to New York for the trial in July, assuming current travel bans are lifted by then. But the judge doubted whether having witnesses travel internationally would be wise.

"I'm far less skittish than people who are a whole lot younger and a whole lot healthier than I am," the judge said, noting that she is 68. "But I would not be getting on a commercial flight."

Paul Skiermont of Skiermont Derby LLP, who represents the counterclaimants, argued that the entire bench trial should be conducted by remotely examining witnesses to avoid having to switch back and forth between two platforms.

"I strongly think that going down the hybrid road is as problematic or equally problematic as in person," he said.

Judge McMahon told the parties to meet and confer about what type of technology service provider they can obtain to conduct the virtual trial and emphasized that she cannot put an additional burden on her IT staff. She also said federal courts aren't not supposed to use Zoom's videoconferencing tool due to security concerns, and she would need to find out what technological parameters are required by the federal court.

"For me we're in a brave new world," the judge said. "But we have to figure out some way to get the business of a court done within a brave new world."

The patents-in-suit are U.S. Patent Nos. 7,405,203 and 7,579,321.

Ferring is represented by Mary Bourke, Kristen Cramer, Dana Severance, Daniel Attaway, Nicholas Verna and John Cox of Womble Bond Dickinson and William Deni of Gibbons PC.

Serenity is represented by Paul Skiermont, Sarah Spires, Jaime Olin and Sheetal Patel of Skiermont Derby LLP.

The case is Ferring Pharmaceuticals Inc. et al. v. Serenity Pharmaceuticals LLC et al., case number 1:17-cv-09922, in the U.S. District Court for the Southern District of New York.

--Additional reporting by Mike LaSusa. Editing by Orlando Lorenzo.

For a reprint of this article, please contact reprints@law360.com.

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