By Dorothy Atkins

Law360 (April 23, 2020, 10:19 PM EDT ) A New York federal judge on Thursday warned the parties in a patent lawsuit over a nighttime urination medication that she "fully intends" to try their dispute in a bench trial this summer, noting that bench trials can proceed "even during a pandemic."

In a two-page notice, U.S. District Judge Colleen McMahon said she plans to try the case between Ferring Pharmaceuticals Inc. and Serenity Pharmaceuticals LLC starting May 26, or no later than two weeks thereafter. Since it's a bench trial, the judge said she plans to listen to cross-examinations conducted remotely and use deposition testimony when witnesses can't travel.

"I need to get this case tried, and I am not prepared to wait until the world is back to normal to get it done," the judge wrote. "Bench trials are the one type of proceeding that can go forward, even during a pandemic. Let me know how you wish to proceed. Just understand that we are going to proceed."

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.

But 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 was initially set to start on March 24 but was delayed due to the novel coronavirus outbreak, according to the docket.

In a March 13 letter to the court, Serenity's counsel noted that one of the witnesses is a New York-based doctor over 60 who expressed concerns with traveling for court proceedings and potentially contracting the virus, according to court documents.

Shortly after, the judge agreed to continue the trial until May 26, but reiterated on Thursday that it would proceed.

The lawsuit is one of multiple legal fronts between the pharmaceutical companies.

Ferring filed a separate suit in 2012 accusing former Ferring consultant Seymour Fein, who founded Serenity, and another former researcher of stealing proprietary information that they used to apply for patents, which they later sold to Allergan Inc. Allergan withdrew from that deal in 2017 and the intellectual property rights reverted to Serenity and Reprise.

A New York federal judge tossed most of those claims in 2013 as time-barred, but Allergan then hit Ferring with counterclaims in 2014, claiming Fein was an inventor of two Ferring patents covering an oral tablet for desmopressin.

A federal judge allowed Serenity and Reprise to substitute in for Allergan as counter-plaintiffs for those claims in September 2017, but after a bench trial in September 2019, the judge ruled in favor Ferring on all claims. Serenity and Reprise appealed and Ferring cross-appealed. Serenity and Reprise later dropped their appeal, but Ferring's case is ongoing.

Counsel and representatives for the parties didn't immediately respond Thursday to requests for comment.

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

Ferring is represented by Mary W. Bourke, Kristen Healey Cramer, Dana K. Severance, Daniel M. Attaway, Nicholas T. Verna and John W. Cox of Womble Bond Dickinson and William P. Deni Jr. of Gibbons PC.

Serenity is represented by Paul J. Skiermont, Sarah Spires, Jaime K. Olin and Sheetal S. 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 Tiffany Hu, Mike LaSusa and Suzanne Monyak. Editing by Daniel King.

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