Pittsburgh men’s lawsuit claims K-Y maker stole PE spray secrets

Sean D. Hamill
Pittsburgh Post-Gazette
shamill@post-gazette.com

When Greg Kaminski, originally from New Kensington, and Jeff Abraham, from Canonsburg, met each other at a conference in Santa Clara, Calif., 30 years ago, they quickly became friends, bonding over their shared Pittsburgh accents and the semiconductor field both worked in.

They had no idea three decades later they would be at the center of a David-and-Goliath legal battle over an over-the-counter “delay spray” aimed at helping men suffering from premature ejaculation.

“Life is funny like that,” said Mr. Abraham, 59, who now lives in Las Vegas. “We were friends for 25 years before this came along. It was that Pittsburgh thing [between us]. Now we’re in a battle together.”

The battle pits the friends’ small, Las Vegas-based company, Absorption Pharmaceuticals, and its only product, called Promescent, against RB, the London-based company that is one of the world’s largest consumer product makers, with brands like Woolite, Lysol and K-Y. (RB was formerly known as Reckitt Benckiser)

In February, Absorption sued RB in federal court in Las Vegas for $150 million. The suit claims RB pretended to want to buy the rights to Promescent for nearly two years, only so it could steal Absorption’s trade secrets while it worked at its own, knock-off delay spray. In September, RB debuted the spray, called K-Y Duration. RB denied the claims in its court response, though it declined comment for this story.

Side players in this legal drama include the U.S.’s largest online retailer, Amazon, and one of the country’s largest brick-and-mortar stores, Target. Though the two companies are not named defendants, Absorption claims both were in cahoots with RB to promote Duration at the expense of Promescent. Both Amazon and Target declined to comment for this story.

In addition, a tragedy played a significant role in this story: Promescent’s creator, Ron Gilbert, 52, a Newport Beach, Calif., urologist who was one of Mr. Abraham’s closest friends, was shot and killed in January 2013 by a man posing as a patient in an alleged case of mistaken identity.

“We’re pursuing this case because it’s the right thing to do,” Mr. Abraham said. “But we’re also doing it to honor Ron and his family.”

A real problem

After a decade as a urologist dealing with men’s reproductive health issues, by the early 2000s Dr. Gilbert had heard repeatedly from his male patients about their problems with premature ejaculation.

The idea for Promescent “was based on the needs of his patients,” said Elizabeth, his wife of 24 years and mother of their two adult sons.

While premature ejaculation, or PE as it’s known, may not seem as big a deal as its seemingly more serious medical relative, erectile dysfunction, or ED, “it is certainly a real problem,” said Sharon Parish, an internist who works with men with sexual health issues in New York. “And I think [PE] is under recognized and under treated in men.”

PE can lead to difficulty becoming pregnant, either because — in rare cases — some men ejaculate too soon, or because of the stress the condition causes between partners.

“Here’s the way it causes a problem,” said Ira Sharlip, a urologist in San Francisco who has consulted with Absorption on Promescent and recommends it to his patients. “If a man ejaculates too quickly, interrupting sexual intercourse, and there is stress in the relationship, they can stop having regular sex. If you don’t have sex frequently enough, it makes it difficult to get pregnant.”

Both Dr. Parish and Dr. Sharlip were members of the international committee that in 2014 agreed upon the first unified definition of PE. The committee split the definition into two categories: “Lifelong PE” is defined as a condition in a patient who has always had PE and ejaculates within one minute of vaginal penetration; and “acquired PE,” is for a patient who ejaculates within three minutes.

Existing studies about how many men suffer from PE still range widely, from a low of about 8 percent to highs of about 30 percent of all men, which on the high end would put it in about the same size market category as ED.

Dr. Sharlip said the problem is that while 30 percent of men might suffer from PE, “only about 5 percent of them says it’s a problem for them, and they want to be treated for it. And if you ask them if you want to spend $40 on a solution, the percentage is even lower.”

The challenge for Dr. Gilbert and others was to come up with a solution that men would willingly buy and use.

The creation of Promescent

When Dr. Gilbert began working on Promescent, there were any number of other solutions out there: from sexual behavior therapy or exercises to strengthen the muscles that help control ejaculation; to pills originally designed as anti-depressants that help delay ejaculation; to lidocaine-based sprays or creams that would numb the penis, reducing sensitivity.

But many men told Dr. Gilbert the solutions did not work for them. Either the therapy or exercises were ineffective, or the pills had too many side effects, or the lidocaine-based sprays transferred to their partners, numbing them both.

He struck on an idea for a lidocaine spray that more easily penetrated the skin, more directly and effectively numbing the penis, but reducing the risk that it would transfer to a partner.

Working with a chemist, Dr. Gilbert came up with was a small change to the typical lidocaine spray that he believed would make a big difference: Changing the lidocaine from a crystallized form to an oil. That allowed it to penetrate skin more quickly and directly, without moving around and transferring.

In a field of pornographic, comical or just plain silly names for such sprays — from “Mandelay,” to “Stallion,” “Not Yet,” and others — Dr. Gilbert chose “Promescent.” It combines “prolonged” with “tumescence,” which is a scientific term for the state of being swollen.

He began production, and asked some friends to use it, including Mr. Abraham, who had started as Dr. Gilbert’s patient and became a close friend.

Mr. Abraham, who made millions working in the semi-conductor field, became an investor after trying the spray himself. He also offered advice and helped the company raise money, including from his good friend, Mr. Kaminski, who had moved back to the Pittsburgh area by then from California.

“Pittsburgh is one of the first places it got test marketed,” Mr. Kaminski said.

When sales did not take off, Dr. Gilbert asked Mr. Abraham to take over the small company in 2012 because “he trusted Jeff and respected his work as an entrepreneur,” Ms. Gilbert said.

Looking to sell

Sales in 2011 were just $18,000, Mr. Abraham said. But he set a big goal when he took over.

“I told Ron, ‘The goal is to get this thing medically viable, get sales to $2 million to $4 million a year, and be able to sell it to a large company to really get it to people,’” Mr. Abraham said. “If we do, we’d get a massive offer.”

They made sure Promescent was compliant with FDA requirements for over-the-counter analgesics, initiated a scientific study to prove it was effective, and marketing it through urologists to give it credibility.

Sales jumped to $1.4 million in 2013, and a company, Auxilium, made an offer that Absorption said could have been worth as much as $150 million over a decade if it went through.

But the morning after Mr. Abraham outlined the proposal to Dr. Gilbert in a meeting on Jan. 27, 2013, Dr. Gilbert was shot nine times and killed, allegedly by a veteran, Stanwood Fred Elkus in Newport Beach.

Elkus, now 79, believed Dr. Gilbert was the surgeon who botched a prostate surgery on him decades earlier at a Veterans Affairs hospital. Investigators believe it was a case of mistaken identity and Dr. Gilbert was not his surgeon. Elkus immediately claimed he was “insane” and has not yet gone to trial while being held in jail for murder.

Mr. Abraham said Dr. Gilbert’s death made him even more determined to sell Promescent to the right company to help Dr. Gilbert’s family.

The first deal fell through later in 2013. But Stephen De Pretre, then a consultant working out of Beijing for RB’s Chinese subsidiary, seized upon Absorption as a possible acquisition for RB.

“I was searching for delay sprays,” said Mr. De Pretre, who now works for Absorption as its vice president in charge of international sales. “There are hundreds of them. But if you look at them, the mechanism of action is basically all the same. Promescent was the only one that had something unique” with its oil formula.

It took some convincing — RB had previously had its own delay spray under its Durex brand but it sold poorly and was discontinued a couple years earlier — but RB decided to explore the idea.

“I thought it was a perfect fit for us,” Mr. Abraham said. “This company [RB] owned Durex condoms and K-Y lube. It could take us to the next level.”

After some convincing by Mr. De Pretre, RB began due diligence to buy the rights to Promescent.

RB was so sure it was going to buy it, and quickly, that employees gave the negotiations the tongue-and-cheek name, “Project Speedy.”

Not realizing who they’re dealing with

Over the next two years, RB and Absorption had off-and-on negotiations that increasingly worried Mr. Abraham.

“I thought they might be trying to do a knock-off on our product,” he said.

In 2016, Absorption began hearing repeated rumors that RB was planning its own delay spray, claims RB officials continually denied.

But last fall, RB did what Mr. Abraham feared and announced a massive, national ad campaign for its new delay spray product, K-Y Duration.

Mr. De Pretre, who by then was working for Absoprtion, said RB “clearly had no idea who they were dealing with” in Mr. Abraham.

Back in the 1990s, Mr. Abraham became a civil rights hero when he fought the large multinational giant, Hyundai, in a discrimination case.

The Korean company had hired him to recruit employees for a new seminconductor plant in Oregon, but told him not to recruit women or minorities. Mr. Abraham balked at the order and was fired.

He battled Hyundai in court for four years, winning a $10 million judgment at trial, though he later reached a settlement for $4.2 million.

The irony has not been lost on Mr. Abraham that he again finds himself battling a large multinational company.

“After we decided to sue RB, my sister said, ‘You were chosen for this,’ ” he said. “These are things [the way companies behave] that you need to bring to light. Someone has to be the one to say, ‘Enough.’ ”

Sean D. Hamill: shamill@post-gazette.com or 412-263-2579 or Twitter: @SeanDHamill

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