NEW ORLEANS — A federal judge has ordered a Connecticut-based bio-pharmaceutical development company in a legal battle with the U.S. government and Tulane University to chart its counterclaims over who owns the patent on synthetic opioids.
In an order issued Nov. 6, Judge Susie Morgan, on the bench in U.S. District Court for the Eastern District of Louisiana, ordered Cytogel Pharma to produce at an upcoming pretrial conference a chart that shows the damages sought in each counterclaim and against which entities.
The order also required Cytogel to include on its chart the nature of the damages sought, theory of recovery, how the company calculated damages, witnesses, exhibits and the dates that information was disclosed to opposing counsel.
U.S. District Court Judge Susie Morgan
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The order came about a week after Judge Morgan issued a 13-page order dismissing some of Cytogel's counterclaims but left others intact.
Cytogel, the federal government and administrators of the Tulane Educational Fund have for more than two years been litigating over opioid patent ownership, according to the background portion of Judge Morgan's order.
The U.S. and Tulane have been seeking declaratory judgments of ownership and inventorship of the patent, in addition to damages and injunctive relief, while Cytogel has responded with affirmative defenses and counterclaims against Tulane and the United States.
Cytogel counterclaims include lack of standing and misappropriation of trade secrets.
Among Cytogel's claims that Judge Morgan left intact in her Oct. 29 order was the company's fourth affirmative defense. In that defense, Cytogel alleges Tulane and the Veterans Administration accepted ownership of one patent despite contractual obligations to Cytogel under an existing consulting agreement. Cytogel also alleges it was repeatedly misled in negotiations over licensing of that patent.
In her decision not to grant a motion to dismiss that counterclaim, Judge Morgan said she found Cytogel has pleaded the affirmative defense "with enough specificity and factual particularity" to allow for fair notice of the defense.
"The defense does not prejudice plaintiffs," Judge Morgan said in her order. "The drastic remedy of striking the affirmative defense is not required for the purposes of justice."