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Icahn School of Medicine at Mount Sinai v. Neurocrine Biosciences, Inc.

United States District Court, S.D. New York

March 17, 2017

ICAHN SCHOOL OF MEDICINE AT MOUNT SINAI, Plaintiff,
v.
NEUROCRINE BIOSCIENCES, INC., Defendant.

          Attorneys for Plaintiff CROWELL & MORING LLP By: Chieme Suzuki, Esq. Honor Costello, Esq. CROWELL & MORING LLP By: Gregory Call, Esq. Mark T. Jansen, Esq. Pilar R. Stillwater, Esq.

          Attorneys for Defendant LATHAM & WATKINS LLP By: Benjamin Naftalis, Esq. Daniel G. Brown, Esq. LATHAM & WATKINS By: Jake Ryan, Esq. Stephanie N. Grace, Esq. LATHAM & WATKINS By: Michael A. Morin, Esq.

          OPINION

          ROBERT W. SWEET U.S.D.J.

         The Plaintiff Icahn School of Medicine at Mount Sinai ("Mt. Sinai" or the "Plaintiff") has moved pursuant to F. R. Civ. P. 12(f) to strike Defendant Neurocrine Biosciences, Inc.'s ("Neurocrine" or the "Defendant") affirmative defenses for patent invalidity, non-infringement, and misuse, and moved pursuant to F. R. Civ. P. 12(b)(1) to dismiss Defendant's corresponding declaratory judgment counterclaims. Based on the conclusions set forth below, Plaintiff s motion to strike affirmative defenses 11-14 and to dismiss counterclaims I-IV is granted.

         Prior Proceedings

         The Defendant's motion to dismiss the complaint was denied on June 13, 2016, finding that Mt. Sinai adequately alleged that Neurocrine had breached and violated the licensing agreement regarding an alleged sublicense to Abbott International Luxembourg S.a.r.l. ("Abbott"), now AbbVie Inc. ("AbbVie"), violated the licensing agreement, created a de facto sublicense, and alleged adequate damages, though it limited the scope of the license to the two patents.

         The instant motion to strike affirmative defenses and dismiss counterclaims was heard and marked fully submitted on November 3, 2016.

         Pleadings

         Plaintiff, formerly known as Mt. Sinai School of Medicine of the City University of New York, is a New York education corporation, organized under the New York Education Law and chartered by the Board of Regents of the State of New York. Its sole member is Mt. Sinai Health System, Inc., a not-for-profit corporation organized under the laws of the State of New York. Mt. Sinai owns and controls certain rights in technology for the identification, discovery, and screening of drug compounds that interact in the human body with receptors for the hormone known as GnRH. Mt. Sinai's drug-discovery tools are foundational in the identification, screening, and development of drugs for the treatment of a number of endocrine diss, and Mt. Sinai has the exclusive right to grant licenses to the patented technology directed thereto. (Compl., ¶ 20.)

         Neurocrine is a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 12780 El Camino Real, San Diego, CA 92130. Neurocrine is in the business of, among other things, developing pharmaceuticals for use in neurological and endocrine diseases and disorders. (Compl., ¶ 22.)

         AbbVie is a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 1 North Waukegan Road, North Chicago, Illinois 60064. AbbVie is in the business of, among other things, pharmaceutical development, manufacturing and sales.

         Mt. Sinai and Neurocrine entered a patent license agreement for certain drug discovery tools on August 27, 1999 including Mt. Sinai's '366 patent and '583 patent, which were issued in May 1998 and November 1999. Both patents have now expired.

         The complicated process of discovering and developing new drug treatments requires basic research such as is performed by Mt. Sinai and its scientists. The application of that science to particular conditions such as endometriosis and uterine fibroids was performed by Neurocrine. The testing, approval, and manufacture of the new drug is performed by a major pharmaceutical company, in this instance Abbott International Luxembourg S.a.r.l. ("Abbott"), now AbbVie.

         Gonadotropin releasing hormone ("GnRH") is implicated in numerous endocrine diseases including prostate cancer, ovarian cancer, breast cancer, and endometriosis. (Compl. ¶¶ 3, 38, 40-43.) Stuart C. Sealfon, M.D., a world-renown neurologist at Mt. Sinai, was the first to make stable cell lines expressing the cloned receptor for GnRH ("GnRH-R") and invented a method to identify drug compounds that modulate the receptor's molecular signaling using the cell lines. (Id. ΒΆΒΆ 39-40.) Dr. Sealfon's patented inventions, assigned to Mt. Sinai, are foundational drug-discovery tools. Both Parties recognized the Sealfon tools as ...


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