Teva Suspends Litigation to Invadidate Eisai’s Compound Patent for Drug Aricept

July 21, 2010

Teva Pharmaceuticals USA Inc. has agreed to suspend litigation over a compound patent for Eisai Co. Ltd.’s popular Alzheimer’s drug Aricept, thereby ending Teva’s attempts to manufacture and market a generic version of the drug before the patent expires in November.

Judge Garrett E. Brown Jr. of the U.S. District Court for the District of New Jersey signed off on the agreement Monday, and called for the case to be dismissed after the patent expires. However, the March 2008 preliminary injunction prohibiting Teva from manufacturing drugs including ingredients covered by the patent remains in effect.

Teva filed an abbreviated new drug application with the U.S. Food and Drug Administration in 2008, and, when sued by Eisai, initially claimed that the patent was invalid due to obviousness, and later changed defence to claim inequitable conduct.

Teva had asked for communications not related to the patent-in-suit, but to seven co-pending patent applications that it claimed Eisai failed to disclose to the patent examiner in charge of the application that led to its Aricept patent-in-suit.

In December, Magistrate Judge Esther Salas denied Teva’s motion to compel discovery for its inequitable conduct defense. Teva, which sought communications between Eisai and the U.S. Patent and Trademark Office, appealed to Judge Brown, but he affirmed Judge Salas’ order in June, that concluded that the generics maker’s discovery request was too broad and unduly burdensome.

Teva also sought discovery of communications between Eisai and the USPTO related to any abandoned patent applications that involved derivatives of benzylpiperidine, the active chemical in Aricept, on the grounds that they also might contain information to support the inequitable conduct defense. But Judge Salas said the patent applications were outside the scope of the companies’ current dispute and that expanding the search to include abandoned patent applications would “be a burden that outweighs the benefits to Teva.”

The patent-in-suit is U.S. Patent Number 4,895,841.

The case is Eisai Co. Ltd. et al. v. Teva Pharmaceuticals USA Inc. et al., case number 05-cv-05727, in the U.S. District Court for the District of New Jersey.

Leave a Comment » | Intellectual Property, Israel, Teva, US, drugs, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Michael Factor

Finnegan Patent Litigation Seminar in Israel Sets New Standards

June 27, 2010

Jeffery Berkowitz and Gerson Panitch, partners at Finnegan, Henderson, , Garrett & Dunner, LLP.,  presented a two-day seminar at the Dan Accadia Hotel, Herzliya. The seminar, which ran over the 23rd and 24th of June 2010, was attended by a couple of dozen in-house IP Counsel from Israeli industry, and by three or four patent attorneys from leading IP Law firms.

The course covered pre-litigation analysis, forum shopping, cease and desist letters, discovery, depositions, settling out of court, dismissal before trial, selecting a jury and winning in court, with the appeal process also discussed.  The course succeeded in what it set out to do, i.e. to educate a sophisticated and intelligent IP Savvy audience about the litigation process in the US.

The audience included IP counsel of Israeli firms such as Red Bend that were in the process of litigating against corporate giant Microsoft, companies such as Nuvoton that have been stung by non-practicing entities (sometimes called trolls), and the IP counsel of Nice Software Systems that has given depositions and had some familiarity with the system.

It is and always has been clear that patent litigation in the US is an expensive business that is not for the faint-hearted. After this seminar, most participants had a better idea of where the money went. Like a Hollywood production, there are script-writers, researchers and stars that need paying.

Jeffery Berkowitz and Gerson Panitch are both very competent lecturers and appear to be very pleasant and personable. I imagine that this helps them in both depositioning and cross-examining witnesses. 

Despite costing a wacking $1000 per person, I think everyone was very satisfied that they got value for money, as we all came away with a better understanding of US Litigation.  The food was excellent, with a generous breakfast and a gourmet three-course buffet lunch being provided, with croissants as a mid-morning snack and an extravagant fruit platter in the afternoon.

The event was hosted by Kim Lindy’s latest initiative – the IP Resources Ltd.

Over the summer, speakers from Finnegan will be lecturing on a weekly basis at the Law Offices of Eitan Mehullal in a series of seminars sponsored by the IP Law Department of Haifa University. Warmly recommended.

Leave a Comment » | Academia, Intellectual Property, US | Permalink
Posted by Michael Factor

South Butt Settles With North Face

June 27, 2010

 A student,  Jimmy Winkelmann, started a clothing company for the less outdoor types. Calling his company the South Butt, he used the logo of outdoor sports clothing company the North Face, and his logo, though reminiscent of a butt (i.e. a pair of buttocks) is not dissimilar to the North Face’s famous logo, though rotated through 180 degrees.

Not surprisingly, the North Face sued. Corporate giants don’t seem to have much of a sense of humour. However, instead of backing down, Winkelmann fought back. The two sides have reached an out of court settlement, the details of which are confidential. What is clear, however, is that the South Butt are still very much in business, and have only gained from the publicity that the North Face’s law suit gave them. Essentially, a local college store has become big business.

Victoria’s Secret eventually won against Victor’s Little Secret, but the sex shop seems to have benefitted from the publicity over a long period of time. The Naked Cowboy who plays guitar in his under-pants in Time Square is suing the Naked Cowgirl who does the same thing in a bikini. She has assets that he doesn’t. I suspect that he may lose a lot of the good PR from his case against M&M where, rumour has it, he paid legal fees for both sides.

 Some cases are lose-lose – like when Johnson and Johnson sued the American Red Cross for using a red cross logo. The moral of the story seems to be – pick your battles.

Leave a Comment » | US, trademarks | Permalink
Posted by Michael Factor

International Standard Seminar on US IP Litigation – In Israel

May 17, 2010

In the latest initiative offered by IP Resources Ltd., Israeli patent professionals, CEOs, lawyers and others, can attend a quality seminar offered by litigators from U.S. patent litigators from one of the top patent firms in the United States, Finnegan, Henderson, , Garrett & Dunner, LLP.

The course, featuring Jeffery Berkowitz and Gerson Panitch runs over the 23rd and 24th of June 2010 at the Dan Accadia Hotel Herzliya and covers

  • strategies for responding to threats of infringement
  •  Considerations when deciding whether to assert a patent in the U.S.
  •  Pre-suit litigation planning techniques to maximize chances of success
  •  Techniques for accelerating resolution of a case
  •  The anatomy of a U.S. patent lawsuit

There will be lectures on pre litigation analysis, discovery, testimony and deposition, summary judgement, mediation and appeals.

The seminars is the latest initiative offered by Kimberly Lindy of IPResources, Ltd. who also intends offering courses for passing the exams for the Israel Patent Bar.

The event, costing NIS 3,950. (+ 16% VAT) is not cheap. then again, The same event costs a similar amount when held in the US or Europe, and for most Israelis, flights and hotels will be redundant. For those interested, the course qualifies for CLE credit in California and New York and the organizers will provide a certificate of attendance to attendees who wish to seek CLE accreditation from other jurisdictions.
 
Although I don’t know the speakers, we have an ongoing relationship with Finnegan, and I have always been impressed by their professionalism. I assume that the program is in English, but with names like Berkowitz and Gershon, suspect that the speakers will have at least a smattering of Hebrew.

For more details, contact kim@ipresources.co.il

Leave a Comment » | US, US Patent Office, USPTO, Uncategorized | Permalink
Posted by Michael Factor

US Litigators Come to Israel Looking for Clients

May 9, 2010

Two of the most successful patent litigating firms in the States are coming over to Israel touting for business.

The first, Quinn Emanuel, is holding a moot trial with video link to a jury room and other special effects. The event is free, by invitation, and is being held at the Tel Aviv Hilton. 

For reasons beyond me, Quinn decided to run the event on May 24, thereby clashing with INTA. Along with some 60 or more of Israel’s leading IP practitioners, I will be in Boston then. Ah well!

Registration is via the local organizer Rudy Finn who can, no doubt, explain the logic in the scheduling.

I was privileged to attend their last event in the autumn (fall), and can assure readers that this initiative promises to be very professionally done, with excellent refreshments.

Anyone not at INTA who wishes to attend and write a review of the event, please contact me

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, henceforth Finnegan is running an in-depth two-day seminar in Herzliya that they will be charging for (a mere NIS 3,950 a person, but it does cover both days, as well as continental breakfast, lunch, and mid-session refreshments).

Unless I am offered free press entry as Israel’s leading IP blogger, I think I will give this event a miss – although the program does look very comprehensive.

For a PDF version of the invitation, please click here

Anyone who has the resources to attend this seminar and wishes to write a review of the event for this blog please contact me

It is nice to see that Israel is on the IP litigator’s radar.

2 Comments | Intellectual Property, Patents, US, Uncategorized | Permalink
Posted by Michael Factor

Brazil Considers Imposing Trade Sanctions on the United States

March 18, 2010

The Brazilian Government has successfully sued the US at the World Trade Organization (WTO) for illegally subsidizing cotton producers, thereby making it difficult for Brazilian companies to compete therewith.

America spearheaded GATT and TRIPS and essentially set up the WTO to enforce their IP vision on the world, instead of working with the more democratic WIPO. It is, therefore, kind of ironic that the US has now been successfully sued via this system they created.

In Executive Order No. 482, the President of Brazil, Luiz Inacio Lula da Silva has announced that Brazil will implement trade sanctions and reserves the right to introduce counter-measures at its disposal. These include subtraction (presumably suspension) for a limited period of patent protection for and not enforcing patents to US entities for pharmaceuticals, veterinary medicines, agro-chemicals and biotechnology patents and not enforcing the copyright of US creative works including public performances thereof.

They also reserve the right to grant licenses to importers and manufacturers of patented goods without compensation to the US rights holders, and to allow reproduction and broadcasting of US copyright works without consent or compensation to the rights holders, and / or to impose a surcharge on US companies wishing to register patents and plant varieties and / or to impose a special tax on licensing fees. For more details, see http://www.diblasi.com.br/information.pdf.

It is not the first time that the US has been shown to have inferior IP standards and not to fulfil its obligations to other states. They have been condemned by Europe for allowing Irish music to be played in US pubs and restaurants without payment of royalties, and for not recognizing the rights of the Cuban and European owners of Cuban rum.

From an Israel perspective this development is interesting, since the Israel government seems to be more flexible (spineless???) to American pressure and is apparently considering amending the Israel Patent Law regarding patent term extensions in a quid pro quo for US backing to enable Israel to join the OECD, this despite the fact that Israel Law is already within the requirements of International Law and that many members of the OECD do not have stricter rules than Israel in this regard.

Furthermore, we note that whereas subsidizing growers is clearly illegal, overly stringent IP rights are not necessarily in the public interest. It should be appreciated that IP rights are monopolistic and that granting stronger IP rights to the patentee or creator is not in the greater public interest. The purpose of the patent system is to encourage development and creativity for the good of all.

Leave a Comment » | Intellectual Property, US, WTO, World Trade Organization | Permalink
Posted by Michael Factor

Intellectual Property Culture – A Guide for Corporate IP Managers

March 2, 2010

Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, is a kind of handbook for actual and aspiring in-house IP managers. Although it does not assume knowledge of IP, and defines trade secrets, patents, and other basic concepts, the book is not merely for new-comers, but includes much that licensed patent agents or patent attorneys will find interesting, particularly those that switch from working for service providing law firms to becoming in-house counsel.

Rather than to teach how to draft patents, the book teaches how to create an IP culture for a corporation. Infringement and competitors IP is discussed before how to plan a patent portfolio. Trade secrets and confidentiality are discussed before patents. 

There are some very useful tips regarding attorney-client privilege in the US. In some cases, directors are advised to create personal privilege by consulting with IP Lawyers directly instead of as representatives of the firm.

Outside Counsel will be ambivalent about the book. On the one hand, there is a frank and revealing description of how many IP law firms operate, and a non-polemic but nevertheless implied criticism  of common leveraging practices where the less experienced personnel do the billable work. On the other hand, in a table of avoidable causes of large legal bills is “trying to do the job of IP counsel to save a few bucks.”

There is a particularly good chapter on claim reconstruction that includes a table of patent terms that companies have spent millions in litigation based on what words like ‘and’, ‘about’, ‘composition’ and ’one’ mean.  

I am unaware of any other book that is directed at the corporate niche in this mannerand suspect that the conscientious CTO, internal legal counsel, CEO or Vice President responsible for IP matters will read the book systematically and then refer to it regularly. 

Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, Oxford University Press, 2008. 382 pages, including some useful appendices, boiler-plate contracts, NDAs, etc.

3 Comments | Patents, US, book review | Permalink
Posted by Michael Factor

Teva Appeals Pfizer’s Win in Detrol Patent Infringement Suit

February 21, 2010

Teva Pharmaceuticals USA Inc.and it subsidiary Ivax Pharmaceuticals Inc. filed a notice of appeal last Wednesday in the U.S. District Court for the District of New Jersey, to appeal its loss to Pfizer Inc. of a patent infringement suit over Detrol. Teva is appealing the federal court’s ruling of last Tuesday that they had failed to show Pfizer’s patent for the bladder control drug was invalid and not enforceable.

Leave a Comment » | News, Patents, Teva, US, infringement, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Michael Factor

Teva and Novartis Settle Patent Litigation regarding Famciclover

February 16, 2010

Teva Pharmaceutical Industries Ltd. has announced that its subsidiary, Teva Pharmaceuticals USA, Inc., has signed an agreement with Novartis to settle patent litigation involving Teva’s U.S. generic version of Novartis’ Famvir(R) (famciclovir) 125 mg, 250 mg and 500 mg tablets including all claims for patent infringement and damages. Teva launched its generic famciclovir tablets in the U.S. in September 2007.

The present agreement releases Teva for all past and future activities in connection with the U.S. marketing and sale of Teva’s generic famciclovir tablets. Under the terms of the agreement, Teva will make a one-time payment to Novartis in addition to an ongoing royalty on U.S. sales of the generic product.

Leave a Comment » | Patents, Teva, US, drugs, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Michael Factor

US Federal Court Rules that Perrigo Does Not Infringe Mucinex’ Patents

February 15, 2010

Perrigo has obtained a valuable US Federal Court ruling that its generic version of Mucinex, a drug made by Reckitt Benckiser subsidiary Adams Respiratory Therapeutics, does not infringe on Adams’ patent.

The drug, a decongestant, is used to treat various respiratory conditions including asthma and bronchial infections.

Perrigo is now waiting for final U.S. Food and Drug Administration approval for the drug.

As the first company to successfully challenge the claim that patent term extension for Mucinex’s patent to 2020, Perrigo is entitiled to six months marketing exclusivity for generic version.

Leave a Comment » | Israel, News, Patents, US, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Michael Factor

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