We successfully moved to dismiss a patent infringement case alleging that our client’s marketing and sale of a highly successful cancer treatment drug infringed a patent related to “Methods for Preventing Multidrug Resistance in Cancer Cells.” Notably, the asserted patent expired nearly two years before the litigation was commenced, so the plaintiff only sought past damages for the alleged infringement. Our team moved to dismiss the complaint after identifying a gap in the assignment history of the asserted patent recorded with the United States Patent and Trademark Office (USPTO). According to the USPTO records, the plaintiff, and inventors of the asserted patent, assigned their interests in the patent to the board of trustees of the University of Illinois in 1995. Shortly before filing the lawsuit in 2014, the plaintiff recorded a subsequent assignment of their interest in the asserted patent to themselves. Judge Trauger found that the plaintiff lacked standing to sue for past infringement of the expired patent and dismissed the case.
Dismissal of Patent Infringement Case Against Pharmaceutical Company
You Also May Be Interested In:
We represented nutritional supplement manufacturing company, Natural Alternatives International, Inc. (Nasdaq: NAII), in a Federal Circuit Court of Appeals case in which our client had brought claims against rival Creative Compounds LLC, accusing Creative Compounds of infringing six of its patents covering various forms of beta-alanine and its use as a muscle-building supplement. The Southern District of California had dismissed the suit, finding the patent claims to be directed toward a product of nature (beta-alanine) and a law of nature (that taking beta-alanine in sufficient quantities builds muscle) and thus patent-ineligible. On appeal, a split panel sided with our client, finding the district court applied too broadly the ineligibility doctrine of the “Alice/Mayo test” and that, although beta-alanine itself can occur as a natural substance, the claims containing beta-alanine as one aspect covered more than an unpatentable natural law.
Law360 provided analysis of the case in the article “Fed. Circ. Clarifies Alice In Reviving Supplement Co.’s IP Suit,” published on March 15, 2019.
Represented Life Technologies Corp. in a Federal Circuit Appeal stemming from a 2017 Patent Trial and Appeal Board (PTAB) decision in a covered business method proceeding (CBM). Michael Kiklis represented Life Technologies in two covered business method proceedings: one was filed in 2014 and the other was filed in 2015. Life Technologies prevailed in both proceedings with the PTAB finding that all challenged claims of Unisone Strategic IP Inc.’s inventory management patent recited ineligible subject matter pursuant to 35 U.S.C. § 101. This appeal involved the second CBM. Unisone chose not to appeal the first CBM. The Federal Circuit heard oral argument on December 4, 2018, and then affirmed the PTAB’s decision less than one week later.
Represented Quest Diagnostics in its acquisition of Mobile Medical Examination Service