`
`William P. Deni, Jr.
`J. Brugh Lower
`GIBBONS P.C.
`One Gateway Center
`Newark, New Jersey 07102
`Tel: (973) 596-4500
`Fax: (973) 596-0545
`
`Attorneys for Plaintiffs
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`BAUSCH & LOMB, INC.;
`BAUSCH & LOMB IRELAND LIMITED;
`and EYE THERAPIES, LLC,
`
`Plaintiffs,
`
`v.
`
`SLAYBACK PHARMA LLC and
`SLAYBACK PHARMA INDIA LLP,
`
`Defendants.
`
`Civil Action No. 21-16766
`
`Document Electronically Filed
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiffs Bausch & Lomb, Inc., Bausch & Lomb Ireland Limited, and Eye Therapies, LLC
`
`(collectively, “Plaintiffs”) by way of Complaint against Defendants Slayback Pharma LLC and
`
`Slayback Pharma India LLP (collectively, “Defendants”) allege as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for infringement of United States Patent Nos. 8,293,742 (“the ’742
`
`patent”) and 9,259,425 (“the ’425 patent”), arising under the United States patent laws, Title 35,
`
`United States Code, § 100 et seq., including 35 U.S.C. §§ 271 and 281, and for declaratory
`
`judgment of infringement under 28 U.S.C. §§ 2201 and 2202. This action relates to Slayback
`
`Pharma LLC’s filing of an Abbreviated New Drug Application (“ANDA”) under Section 505(j)
`
`
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`Case 3:21-cv-16766-MAS Document 1 Filed 09/10/21 Page 2 of 12 PageID: 2
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`of the Federal Food, Drug, and Cosmetic Act (“the Act”), 21 U.S.C. § 355(j), seeking U.S. Food
`
`and Drug Administration (“FDA”) approval to market its generic Brimonidine Tartrate
`
`Ophthalmic Solution, 0.025% (“Slayback’s generic brimonidine ophthalmic solution”) prior to the
`
`expiration of the ’742 patent and the ’425 patent.
`
`THE PARTIES
`
`2.
`
`Plaintiff Bausch & Lomb, Inc. (“Bausch”) is a corporation organized and existing
`
`under the laws of New York with a place of business at 1400 N. Goodman St. Rochester, NY
`
`14609. Bausch is the registered holder of approved New Drug Application (“NDA”) No. 208144,
`
`which covers Lumify® ophthalmic solution/drops (brimonidine tartrate, 0.025%).
`
`3.
`
`Plaintiff Bausch & Lomb Ireland Limited (“Bausch Ireland”) is a company
`
`organized and existing under the laws of Ireland, having its registered office at 3013 Lake Drive,
`
`Citywest Business Park, Dublin, Ireland. Bausch Ireland exclusively licenses the ’742 patent and
`
`the ’425 patent.
`
`4.
`
`Plaintiff Eye Therapies, LLC (“Eye Therapies”) is a limited liability company
`
`organized and existing under the laws of Delaware, having its principal place of business at 26933
`
`Camino De Estrella, 2nd Fl., Dana Point, California 92624. Eye Therapies is the owner of the
`
`’742 patent and the ’425 patent.
`
`5.
`
`Upon information and belief, Slayback Pharma, LLC (“Slayback”) is a Delaware
`
`limited liability company having a principal place of business at 301 Carnegie Center, Suite 303,
`
`Princeton, NJ 08540, within this judicial district.
`
`6.
`
`Upon information and belief, Slayback Pharma India LLP (“Slayback India”) is a
`
`limited liability partnership organized under the laws of India, having a principal place of business
`
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`at 310, 3rd Floor, Manjeera Trinity Corporate, JNTU - Hitech City Road, KPHB Phase 3,
`
`Kukutpally Hyderabad, Telangana 500072, India.
`
`7.
`
`Upon information and belief, Slayback is the parent corporation of Slayback India,
`
`and the acts of Slayback complained of herein were done with the cooperation, participation and
`
`assistance of Slayback India.
`
`JURISDICTION AND VENUE
`
`8.
`
`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338(a), 2201
`
`and 2202.
`
`9.
`
`Upon information and belief, this court has jurisdiction over Slayback. Upon
`
`information and belief, Slayback is in the business of, inter alia, developing, manufacturing,
`
`marketing, importing and selling pharmaceutical products, including generic drug products. Upon
`
`information and belief, Slayback directly, or indirectly, develops, manufactures, markets, and sells
`
`generic drug products throughout the United States and in this judicial district, and this judicial
`
`district is a likely destination for Slayback’s generic brimonidine ophthalmic solution. Upon
`
`information and belief, Slayback purposefully has conducted and continues to conduct business in
`
`this judicial district. Upon information and belief, Slayback has its principal place of business at
`
`301 Carnegie Center, Suite 303, Princeton, New Jersey 08540. Upon information and belief,
`
`Slayback has previously submitted to the jurisdiction of this Court and has further previously
`
`availed itself of this Court by asserting counterclaims in other civil actions initiated in this
`
`jurisdiction.
`
`10.
`
`Upon information and belief, Slayback has taken the costly, significant step of
`
`applying to the FDA for approval to engage in future activities—including the marketing of its
`
`generic drugs—that will be purposefully directed at, upon information and belief, the State of New
`
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`
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`Jersey and elsewhere. Slayback’s ANDA filings constitute formal acts that reliably indicate plans
`
`to engage in marketing of the proposed generic drugs. Upon information and belief, Slayback
`
`intends to direct sales of its drugs into New Jersey, among other places, once it has the requested
`
`FDA approval to market them. Upon information and belief, Slayback will engage in marketing
`
`of its generic brimonidine ophthalmic solution in New Jersey upon approval of its ANDA.
`
`11.
`
`Upon information and belief, this court has jurisdiction over Slayback India. Upon
`
`information and belief, Slayback India is in the business of, inter alia, developing, manufacturing,
`
`marketing, importing and selling pharmaceutical products, including generic drug products. Upon
`
`information and belief, Slayback India directly, or indirectly, develops, manufactures, markets,
`
`and sells generic drug products throughout the United States and in this judicial district, and this
`
`judicial district is a likely destination for Slayback’s generic brimonidine ophthalmic solution.
`
`Upon information and belief, Slayback India purposefully has conducted and continues to conduct
`
`business in this judicial district in concert with Slayback.
`
`12.
`
`Upon information and belief, Slayback and Slayback India operate as interrelated
`
`corporate entities. Upon information and belief, Slayback is the parent corporation of Slayback
`
`India. Upon information and belief, Slayback and Slayback India each act as an agent of the other
`
`and work together to, inter alia, develop, manufacture, obtain regulatory approval, market, sell
`
`and distribute generic copies of branded pharmaceutical products throughout the United States,
`
`including in this judicial district.
`
`13.
`
`Defendants know or should know that Lumify® is manufactured for Bausch, at least
`
`because that information is included in the label for Lumify® and is publicly available.
`
`14.
`
`Upon information and belief, venue is proper in this judicial district under 28 U.S.C.
`
`§§ 1391(c) and (d), and § 1400(b).
`
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`15.
`
`Venue is proper against Slayback Pharma, LLC, which maintains a regular and
`
`established place of business in this judicial district.
`
`16.
`
`Venue is proper against Slayback India, a foreign corporation, in any judicial
`
`district that has personal jurisdiction, including this judicial district.
`
`THE PATENTS IN SUIT
`
`17.
`
`The PTO issued the ’742 patent on October 23, 2012. The ’742 patent claims, inter
`
`alia, methods of reducing eye redness consisting essentially of administering brimonidine into
`
`ocular tissue. Plaintiffs hold all substantial rights in the ’742 patent and have the right to sue for
`
`infringement thereof. A copy of the ’742 patent is attached hereto as Exhibit 1.
`
`18.
`
`The U.S. Patent and Trademark Office (“PTO”) issued the ’425 patent on February
`
`16, 2016. The ’425 patent claims, inter alia, methods of reducing redness of an eye and/or
`
`increasing whiteness of an eye comprising administering compositions comprising brimonidine.
`
`Plaintiffs hold all substantial rights in the ’425 patent and have the right to sue for infringement
`
`thereof. A copy of the ’425 patent is attached hereto as Exhibit 2.
`
`19.
`
`Bausch is the holder of NDA No. 208144 for Lumify®, which the FDA approved
`
`on December 22, 2017. In conjunction with NDA No. 208144, the ’742 and ’425 patents are listed
`
`in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (“the Orange
`
`Book”).
`
`20.
`
`Brimonidine tartrate ophthalmic solution, 0.025%, is sold in the United States under
`
`the trademark Lumify®.
`
`SLAYBACK’S INFRINGING ANDA SUBMISSION
`
`21.
`
`Upon information and belief, Slayback filed or caused to be filed with the FDA
`
`ANDA No. 216361, under Section 505(j) of the Act and 21 U.S.C. § 355(j).
`
`- 5 -
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`22.
`
`Upon information and belief, Slayback’s ANDA No. 216361 seeks FDA approval
`
`to engage in commercial manufacture, use, and sale in the United States of Slayback’s generic
`
`brimonidine ophthalmic solution, intended to be a generic version of Lumify®.
`
`23.
`
`On or about August 16, 2021, Plaintiffs received a letter from Slayback dated
`
`August 13, 2021, purporting to be a Notice of Paragraph IV Certification regarding ANDA No.
`
`216361 (“Slayback’s Notice Letter”) under Section 505(j)(2)(B)(iv) of the Act and 21 § C.F.R.
`
`314.95. Slayback’s Notice Letter was addressed to Bausch and Eye Therapies.
`
`24.
`
`Slayback’s Notice Letter alleges that Slayback has submitted to the FDA ANDA
`
`No. 216361 seeking approval to engage in the commercial manufacture, use and/or sale of
`
`Slayback’s generic brimonidine ophthalmic solution, intended to be generic versions of Lumify®.
`
`25.
`
`Slayback’s Notice Letter states that Slayback’s ANDA No. 216361 contains the
`
`“required bioavailability or bioequivalence data or information with respect to brimonidine tartrate
`
`ophthalmic solution, 0.025%,” for Slayback’s generic brimonidine ophthalmic solution.
`
`26.
`
`Upon information and belief, ANDA No. 216361 seeks approval of Slayback’s
`
`generic brimonidine ophthalmic solution that is the same, or substantially the same, as Lumify®.
`
`27.
`
`Upon information and belief, Slayback’s actions related to ANDA No. 216361
`
`complained of herein were done at the direction of, with the authorization of, or with the
`
`cooperation, the participation, the assistance of, or at least in part for the benefit of Slayback India.
`
`COUNT I FOR PATENT INFRINGEMENT
`
`Infringement of the ’742 Patent Under § 271(e)(2)
`
`Paragraphs 1-27 are incorporated herein as set forth above.
`
`Under 35 U.S.C. § 271(e)(2), Defendants have infringed at least one claim of the
`
`28.
`
`29.
`
`’742 patent by submitting, or causing to be submitted to the FDA, ANDA No. 216361 seeking
`
`- 6 -
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`
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`approval for the commercial marketing of Slayback’s generic brimonidine ophthalmic solution
`
`before the expiration date of the ’742 patent.
`
`30.
`
`Upon information and belief, Slayback’s generic brimonidine ophthalmic solution
`
`will, if approved and marketed, infringe at least one claim of the ’742 patent.
`
`31.
`
`Upon information and belief, Defendants will, through the manufacture, use,
`
`import, offer for sale, and/or sale of Slayback’s generic brimonidine ophthalmic solution, directly
`
`infringe, contributorily infringe, and/or induce infringement of at least one claim of the ’742 patent.
`
`32.
`
`If Defendants’ marketing and sale of Slayback’s generic brimonidine ophthalmic
`
`solution prior to the expiration of the ’742 patent is not enjoined, Plaintiffs will suffer substantial
`
`and irreparable harm for which there is no adequate remedy at law.
`
`COUNT II FOR PATENT INFRINGEMENT
`
`Declaratory Judgment of Infringement of the ’742 Patent
`
`Paragraphs 1-32 are incorporated herein as set forth above.
`
`These claims arise under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
`
`33.
`
`34.
`
`2202.
`
`35.
`
`There is an actual case or controversy such that the Court may entertain Plaintiffs’
`
`request for declaratory relief consistent with Article III of the United States Constitution, and this
`
`actual case or controversy requires a declaration of rights by this Court.
`
`36.
`
`Defendants have made, and will continue to make, substantial preparation in the
`
`United States to manufacture, use, offer to sell, sell, and/or import Slayback’s generic brimonidine
`
`ophthalmic solution before the expiration date of the ’742 patent, including Slayback’s filing of
`
`ANDA No. 216361.
`
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`
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`37.
`
`Upon information and belief, any commercial manufacture, use, offer for sale, sale,
`
`and/or importation of Slayback’s generic brimonidine ophthalmic solution will directly infringe,
`
`contributorily infringe, and/or induce infringement of at least one claim of the ’742 patent.
`
`38.
`
`Plaintiffs are entitled to a declaratory judgment that future commercial
`
`manufacture, use, offer of use, sale, and/or importation of Slayback’s generic brimonidine
`
`ophthalmic solution will constitute infringement of at least one claim of the ’742 patent.
`
`COUNT III FOR PATENT INFRINGEMENT
`
`Infringement of the ’425 Patent Under § 271(e)(2)
`
`Paragraphs 1-38 are incorporated herein as set forth above.
`
`Under 35 U.S.C. § 271(e)(2), Defendants have infringed at least one claim of the
`
`39.
`
`40.
`
`’425 patent by submitting, or causing to be submitted to the FDA, ANDA No. 216361 seeking
`
`approval for the commercial marketing of Slayback’s generic brimonidine ophthalmic solution
`
`before the expiration date of the ’425 patent.
`
`41.
`
`Upon information and belief, Slayback’s generic brimonidine ophthalmic solution
`
`will, if approved and marketed, infringe at least one claim of the ’425 patent.
`
`42.
`
`Upon information and belief, Defendants will, through the manufacture, use,
`
`import, offer for sale, and/or sale of Slayback’s generic brimonidine ophthalmic solution, directly
`
`infringe, contributorily infringe, and/or induce infringement of at least one claim of the ’425 patent.
`
`43.
`
`If Defendants’ marketing and sale of Slayback’s generic brimonidine ophthalmic
`
`solution prior to the expiration of the ’425 patent is not enjoined, Plaintiffs will suffer substantial
`
`and irreparable harm for which there is no adequate remedy at law.
`
`- 8 -
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`
`
`Case 3:21-cv-16766-MAS Document 1 Filed 09/10/21 Page 9 of 12 PageID: 9
`
`COUNT IV FOR PATENT INFRINGEMENT
`
`Declaratory Judgment of Infringement of the ’425 Patent
`
`Paragraphs 1-43 are incorporated herein as set forth above.
`
`These claims arise under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
`
`44.
`
`45.
`
`2202.
`
`46.
`
`There is an actual case or controversy such that the Court may entertain Plaintiffs’
`
`request for declaratory relief consistent with Article III of the United States Constitution, and this
`
`actual case or controversy requires a declaration of rights by this Court.
`
`47.
`
`Defendants have made, and will continue to make, substantial preparation in the
`
`United States to manufacture, use, offer to sell, sell, and/or import Slayback’s generic brimonidine
`
`ophthalmic solution before the expiration date of the ’425 patent, including Slayback’s filing of
`
`ANDA No. 216361.
`
`48.
`
`Upon information and belief, any commercial manufacture, use, offer for sale, sale,
`
`and/or importation of Slayback’s generic brimonidine ophthalmic solution will directly infringe,
`
`contributorily infringe, and/or induce infringement of at least one claim of the ’425 patent.
`
`49.
`
`Plaintiffs are entitled to a declaratory judgment that future commercial
`
`manufacture, use, offer of use, sale, and/or importation of Slayback’s generic brimonidine
`
`ophthalmic solution will constitute infringement of at least one claim of the ’425 patent.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffs respectfully request that this Court enter judgment in their favor
`
`and against Defendants on the patent infringement claims set forth above and respectfully request
`
`that this Court:
`
`- 9 -
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`
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`Case 3:21-cv-16766-MAS Document 1 Filed 09/10/21 Page 10 of 12 PageID: 10
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`1.
`
`Enter judgment that, under 35 U.S.C. § 271(e)(2), Defendants have infringed at
`
`least one claim of the ’742 patent by submitting or causing to be submitted ANDA No. 216361 to
`
`the FDA to obtain approval for the commercial manufacture, use, import, offer for sale, and/or sale
`
`in the United States of Slayback’s generic brimonidine ophthalmic solution before the expiration
`
`of the ’742 patent
`
`2.
`
`Enter judgment that, under 35 U.S.C. § 271(e)(2), Defendants have infringed at
`
`least one claim of the ’425 patent by submitting or causing to be submitted ANDA No. 216361 to
`
`the FDA to obtain approval for the commercial manufacture, use, import, offer for sale, and/or sale
`
`in the United States of Slayback’s generic brimonidine ophthalmic solution before the expiration
`
`of the ’425 patent;
`
`3.
`
`Order that the effective date of any approval by the FDA of Slayback’s generic
`
`brimonidine ophthalmic solution be a date that is not earlier than the expiration of the ’425 patent
`
`and the ’742 patent, or such later date as the Court may determine;
`
`4.
`
`Enjoin Defendants from the commercial manufacture, use, import, offer for sale,
`
`and/or sale of Slayback’s generic brimonidine ophthalmic solution until expiration of the ’742
`
`patent and the ’425 patent, or such later date as the Court may determine;
`
`5.
`
`Enjoin Defendants and all persons acting in concert with Slayback from seeking,
`
`obtaining, or maintaining approval of Slayback’s ANDA No. 216361 until expiration of the ’742
`
`patent and the ’425 patent;
`
`6.
`
`Declare this to be an exceptional case under 35 U.S.C. §§ 285 and 271(e)(4) and
`
`award Plaintiffs costs, expenses, and disbursements in this action, including reasonable attorney’s
`
`fees; and
`
`- 10 -
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`
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`Case 3:21-cv-16766-MAS Document 1 Filed 09/10/21 Page 11 of 12 PageID: 11
`
`7.
`
`Award Plaintiffs such further and additional relief as this Court deems just and
`
`proper.
`
`Dated: September 10, 2021
`Newark, New Jersey
`
`Respectfully submitted,
`
`
`
`s/ William P. Deni, Jr.
`William P. Deni, Jr.
`J. Brugh Lower
`GIBBONS P.C.
`One Gateway Center
`Newark, New Jersey 07102
`Tel: (973) 596-4500
`Fax: (973) 596-0545
`wdeni@gibbonslaw.com
`jlower@gibbonslaw.com
`
`Of Counsel:
`
`Bryan C. Diner
`Justin J. Hasford
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Tel: (202) 408-4000
`
`Jessica M. Lebeis (pro hac vice to be submitted)
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER, LLP
`Two Seaport Lane
`Boston, MA 02210-2001
`Tel: (617) 646-1600
`
`Attorneys for Plaintiffs
`
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`CERTIFICATION OF NON-ARBITRABILITY
`PURSUANT TO LOCAL CIVIL RULE 201.1(d)
`
`Pursuant to Local Civil Rule 201.1(d), the undersigned counsel hereby certifies that this
`
`action seeks declaratory and injunctive relief and, therefore, is not subject to mandatory
`
`arbitration.
`
`I hereby certify under penalty of perjury that the foregoing is true and correct.
`
`Dated: September 10, 2021
`Newark, New Jersey
`
`
`
`s/ William P. Deni, Jr.
`William P. Deni, Jr.
`GIBBONS P.C.
`One Gateway Center
`Newark, New Jersey 07102
`Tel: (973) 596-4500
`Fax: (973) 596-0545
`wdeni@gibbonslaw.com
`
`Attorneys for Plaintiffs
`
`- 12 -
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`