Queen’s University did not file any counterclaims in Varrin’s suit. Instead, Queen’s
University filed suit in Canada, seeking a declaration that Queen’s University is the rightful owner
of all inventions made by Varrin while he was employed with Queen’s University. The parties do
not dispute that Queen’s University’s claims require the application of Canadian employment and
common law. Queen’s University concedes that its Canadian lawsuit would have an impact on the
present suit.

Both inventorship and ownership of the United States patents are implicated in Varrin’s suit.
The core issue in the present suit is inventorship, and the defense to that claim is ownership. Queen’s
University’s suit in Canada, claiming ownership of these same inventions, constitutes a compulsory
counterclaim because it arises out of the same transaction or occurrence that is the subject matter of
the instant suit - the invention and ownership of two United States patents while Varrin was in
Queen’s University’s employ. See Fed. R. Civ. P. 13(a); Nachtman v. Crucible Steel Co., 165 F.2d
997, 999 (3" Cir. 1948) (ownership defense is a compulsory counterclaim in a suit for correction of
inventorship).

However, neither this Court nor a Canadian court need decide the issue of ownership if
Varrin is unable to prove his inventorship claim. Thus, the present suit may be dispositive of the
Canadian suit. Allowing both suits to proceed would result in a duplication of efforts. Resolution
in both courts could also result in inconsistent results. Furthermore, Queen’s University has not
made any indication that the issuance of an injunction “would throw a monkey wrench, however

small, into the foreign relations of the United States” and Canada. See, Allendale, 10 F.3d at 431.


Neither party disputes that this Court has the power to enjoin collateral lawsuits pending in
foreign countries. See Allendale Mut. Ins. Co. v. Bull Data Sys., Inc., 10 F.3d 425, 431 (7" Cir.
1993) (Allendale); Philips Med. Sys. Int’l, 8 F.3d 600, 604-05 (7" Cir. 1993) (Philips). Injunctions
against foreign litigation are allowed “upon a finding that letting the two suits proceed would be
gratuitously duplicative, or as the cases sometimes say ‘vexatious and oppressive”. Allendale, 10
F.3d at 431. Included in this analysis, the court must weigh international comity. See Allendale, 10
F.3d at 431. “When every practical consideration supports the injunction, it is reasonable to ask the
opponent for some indication that the issuance of an injunction really would throw a monkey
wrench, however small, into the foreign relations of the United States.” Allendale, 10 F.3d at 431.

In Allendale, an American insurance company insured a French corporation against property
damage. After the French company’s warehouse burned down, the parties sued one another in a
United States District Court. Several months after the United States suits had been filed, the French
company filed suit in France based on the same incident in the United States suit. The United States
District Court Judge issued an injunction prohibiting the French company from proceeding with its
casein France. Allendale, 10 F.3d at 427. The Seventh Circuit affirmed, noting that if the injunction
had not been granted, the “parallel lawsuits would be proceeding full tilt in two tribunals 4,000 miles
apart at the same time, entailing an absurd duplication of effort.” Allendale, 10 F.3d at 430-31.

In the instant case, Varrin alleges that he is, at the minimum, one of the inventors of two
United States patents that is licensed to American pharmaceutical companies. United State’s patent
law is applicable to Varrin’s claims, and the American courts have an interest in deciding matters

under United State’s patent law.


Based on the above, Queen’s University’s suit in Canada is gratuitously duplicative.
Accordingly, Plaintiff's Motion to Enjoin Defendant Queen’s University From Pursuing Collateral

Proceedings is granted.

Dated: Ldeaeu aq 260et—

(oud W. DARRAH

United States District Judge


Nnte Order Fore (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Judge Sitting Judge if Other
aor Magistrate Judge John W. Darrah than Assigned Judge
CASE NUMBER 01 C 9297 DATE 8/29/2002
CASE SHAWN J. VARRIN vs. QUEEN’S UNIVERSITY
TITLE
[in the following box (a) indicate the party filing the motion, e.g,, plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented]
DOCKET ENTRY:
(1) imi} Filed motion of [ use listing in “Motion” box above.]
(2) Oo Brief in support of motion due
(3) Oo Answer brief to motion due. . Reply to answer brief due.
(4) Qa Ruling/Hearing on set for at
(5) 0 Status hearing[held/continued to] [set for/re-set for] on set for at
(6) go Pretrial conference[held/continued to] [set for/re-set for] on set for at :
(7) Qa Trial[set for/re-set for] on at
(8) oO {Bench/Jury trial] [Hearing] held/continued to at
(9) oO This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OOFRCP4(m) OLocal Rule 41.1 OFRCP41(ay(1) O FRCP41(a)(2).
qo) i [Other docket entry] Status hearing held and continued to 9/26/02 at 9:00 a.m. Plaintiff granted
leave to file amended complaint. Answer to be filed by 9/19/02. Enter Memorandum Opinion And
Order. Queen’s University’s suit in Canada is gratuitously duplicative. Accordingly, plaintiff’s motion
to enjoin defendant Queen’s University from pursuing collateral proceedings is granted.
(1) ff [For further detail see order attached to the original minute order.]

No notices required.

No notices required, advised in open court.

number of notices

Notices mailed by judge’s staff.
Notified counsel by telephone.
Docketing to mail notices,

Mail AO 450 form.

Copy to judge/magistrate judge.

courtroom
LG deputy’s

initials

UT Datehtiitd réceh lea in
central Clerk’s Office

SEP 03 20

date docketed
1 1
docketing depyfyfritiats

date maited notice

railing deputy initials



UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS

3

EASTERN DIVISION -
SEP 03 2002
SHAWN J. VARRIN, )
)
Plaintiff, )
)
v. )
)
QUEEN”S UNIVERSITY; PENTECH ) No. 01 C 9297

PHARMACEUTICALS, INC.; ABBOTT )

LABORATORIES; TAKEDA CHEMICAL ) Judge John W. Darrah
INDUSTRIES, LTD.; and TAP )
PHARMACEUTICALS, INC., )
)
Defendants. )

MEMORANDUM OPINION AND ORDER

Plaintiff, Shawn J. Varrin (“Varrin”), filed suit against Defendants, seeking an order that the
Director of the United States Patent and Trademark Office correct inventorship of certain United
States patents by adding Varrin as a joint inventor or deleting incorrectly named inventors and
adding Varrin as the sole inventor of certain patents. Varrin also seeks a constructive trust on any
monies received by any Defendants which should have been paid to him due to his status as inventor.
Presently before the Court is Varrin’s Motion to Enjoin Defendant Queen’s University From
Pursuing Collateral Proceedings.

BACKGROUND

Varrin is a resident of Ontario Canada. Queen’s University is a non-for-profit corporation
operating and existing under the laws of Canada with its principal place of business in Kingston,
Canada, province of Ontario.

United States Letters Patent 5,770,606 (“606 Patent”), entitled “Dosage Forms and Method

for Ameliorating Male Erectile Dysfunction,” was issued on June 23, 1998. The 606 Patent


identifies Ragab El-Rashidy, Jeremy P.W. Heaton, Alvaro Morales, and Michael A. Adams as joint
inventors. United States Letters Patent 5, 985,889 (“889 Patent”), entitled “Dosage Forms and
Method for Ameliorating Male Erectile Dysfunction,” was issued on November 16, 1999. The 889
Patent identifies Ragab El-Rashidy, Jeremy P.W. Heaton, Alvaro Morales, and Michael A. Adams
as joint inventors. Queen’s University and Pentech Pharmaceuticals have exclusively licensed the
606 and 889 Patents in the United States to Tap Pharmaceuticals, which is a joint venture formed
by Abbott Laboratories and Takeda Chemical Industries.

Varrin alleges, in his complaint filed on December 5, 2001, that he is at least a joint inventor
of the subject matter of one or more of the claims of each of the 606 and 889 Patents because he
contributed in some significant manner to the conception of the claimed inventions while employed
at Queen’s University.

In May 2002, Queen’s University filed suit in Ontario, Canada against Varrin. In the
Canadian suit, Queen’s University seeks a declaration that if Varrin is the inventor of the inventions
claimed in the 606 and 889 Patents, any of Varrin’s rights in those patents belong to Queen’s
University or that, if Varrin has any rights in the patents, he holds such rights in trust for the sole
benefit of Queen’s University. In the Canadian action, Queen’s University alleges that Varrin was
a research assistant employed by Queen’s University. That under the terms of his employment
agreement, his job description and duties, and the Queen’s University’s polices that governed
Varrin’s employment, any rights Varrin has to any of the inventions belong to Queen’s University
and that Varrin was obligated to assign such rights to Queen’s University.

Varrin presently seeks an order from this Court enjoining Queen’s University from

proceeding with its lawsuit in Canada.