CLASSEN IMMUNOTHERAPIES, INC. V. SOMAXON
PHARMACEUTICALS
2:12-cv-06643-GAF-PLA, US District Court, Central District of
California
In April 2013, the firm achieved victory when Judge Gary Allen
Feess of the Central District of California dismissed Classen
Immunotherapies, Inc's ("Classen") patent
infringement claims against our client Somaxon Pharmaceuticals with
prejudice. The two asserted Classen patents purport to claim
methods of gathering, analyzing, and commercializing adverse event
data. The Court dismissed Classen's claims on the grounds that
Somaxon's collection and analysis of clinical data for its
insomnia medication Silenor® fell within the "safe
harbor" of 35 U.S.C. § 271(e)(1), which does not permit
infringement suits for activities that are reasonably related to
submission of information to the Food and Drug Administration. The
Court also credited Somaxon's arguments that Classen could not
prove infringement of its claimed methods by improperly conflating
the proof required to demonstrate infringement under 35 U.S.C.
§ 271 with proof required to obtain a provisional patent
rights remedy under 35 U.S.C. § 154(d).
CELLECTIS SA V. PRECISION
BIOSCIENCES
In May 2013, WilmerHale secured a victory for client Precision
BioSciences, Inc., a leader in the field of genome engineering, in
a patent infringement lawsuit against Cellectis SA. A jury found
that all of the claims of Cellectis' US Pat. No. 7,897,372
("the '372 patent") that were asserted against
Precision are invalid both as obvious and for failure to meet the
written description requirement and that Precision did not
literally infringe the asserted claims. This litigation was the
third infringement action brought by Cellectis against Precision
since 2008. To date, every patent claim asserted by Cellectis
against Precision has been (a) held invalid by a US District Court
judge, (b) found invalid by a jury in a US District Court trial,
(c) held invalid by the US Patent and Trademark Office, or (d)
dismissed by Cellectis in the relevant litigation.
BRAINTREE LABORATORIES, INC. V. NOVEL
LABORATORIES, INC.
3:11-cv-01341, US District Court, District of New
Jersey
In June 2013, WilmerHale obtained a favorable final judgment in the
US District Court for the District of New Jersey for Braintree
Laboratories, Inc. (Braintree) in its patent infringement case
against Novel Laboratories (Novel). The matter involved SUPREP
®—Braintree's small volume sulfate-based colonoscopy
preparation product—and Novel's proposed plan to make a
generic version of the drug.
Braintree, a privately owned pharmaceutical company, sued Novel for patent infringement in March 2011 after it received a Paragraph IV letter. Following a six-day bench trial in February 2013, Judge Peter Sheridan found that Novel had not proven by clear and convincing evidence that the asserted claims of the patent at issue, US Patent No. 6,946,149, are invalid for obviousness, anticipation, or indefiniteness. In his opinion, Judge Sheridan evaluated over 15 pieces of prior art asserted by Novel and concluded that Braintree's expert was more credible than Novel's expert in explaining why the asserted claims were neither anticipated nor obvious. The Court had earlier entered summary judgment for Braintree on its infringement claim and dismissed Novel's counterclaims. Injunctions implementing the Court's rulings were entered on June 19. The judgment is currently on appeal to the Court of Appeals for the Federal Circuit.
KODAK V. ALTEK
CORPORATION
In October 2013, a jury in SDNY returned a verdict in favor of our
client Kodak, resulting in a damages award of $75.8 million. Prior
to trial, the Kodak team obtained summary judgment that Ricoh owed
royalties on point and shoot cameras. On the eve of trial, Ricoh
stipulated to $53 million in damages on point and shoot cameras.
That left one issue to be tried—whether Ricoh also owed
royalties on Digital Single Lens Reflex ("DSLR") camera
bodies sold in the same box as a DSLR lens. On that issue, the jury
found in Kodak's favor, increasing the damages by $22.8
million.
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