Patent Litigation Settlement Roundup
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Nov 9, 2012 @ 7:25 am
Below is summary of some of the patent deals from the last several weeks that caught my eye. If you have any “patent business”, “patent deal” or patent litigation settlement news story or press release you would like to share please send me a message using our contact form.
Mylan Announces Ortho Tri-Cyclen Lo® Settlement
On November 8, 2012, Mylan Inc. (Nasdaq: MYL) announced that it, along with Famy Care Ltd., has entered into a settlement agreement with Janssen Pharmaceuticals Inc. that will resolve patent litigation related to Norgestimate/Ethinyl Estradiol Tablets 0.180 mg/0.025 mg, 0.215 mg/0.025 mg and 0.250 mg/0.025 mg. Norgestimate/Ethinyl Estradiol Tablets are the generic version of Janssen Pharmaceuticals Inc.’s Ortho Tri-Cyclen Lo® Tablets, which are indicated for the prevention of pregnancy in women who elect to use oral contraceptives as a method of contraception.
According to the terms of the settlement, Mylan will be licensed to sell its Norgestimate/Ethinyl Estradiol Tablets 0.180 mg/0.025 mg, 0.215 mg/0.025 mg and 0.250 mg/0.025 mg, on December 31, 2015, or earlier under certain circumstances. Pursuant to the agreement, pending litigation will be dismissed. All other terms and conditions of the settlement are confidential, and the agreement itself is subject to review by the U.S. Department of Justice and the Federal Trade Commission.
Ortho Tri-Cyclen Lo Tablets had sales in the United States of $424.5 million for the 12 months ending September 30, 2012, according to IMS Health.
Patent Plaintiff Agrees to Pay to Settle Lawsuit
On November 8, 2012, Research Affiliates, LLC and WisdomTree Investments, Inc. (NASDAQ: WETF) announced that Research Affiliates will withdraw its patent infringement lawsuit brought against WisdomTree in the United States District Court for the Central District of California. As part of the settlement, all claims and counterclaims will be dismissed with prejudice. In addition to the settlement agreeing to resolves all matters pertaining to the lawsuit, Research Affiliates has agreed to a one-time payment of $700,000 to WisdomTree. WisdomTree and the other defendants are not required to make any current or future payments to Research Affiliates.
Robert Arnott, Chairman and CEO of Research Affiliates, stated “Based on information that came to our attention during the lawsuit, Research Affiliates can now acknowledge that WisdomTree’s fundamentally-weighted indexes and strategies were developed by WisdomTree independently of Research Affiliates”.
Jonathan Steinberg, CEO and President of WisdomTree, and Mr. Arnott jointly stated “We are pleased the matter is resolved and our businesses will continue as usual.” Steinberg and Arnott believe that each company’s product suites represent important advances in the world of indexing. Both parties agree to respect each other’s intellectual property and patents.
Litigation Settled with Licensing Deals
On November 8, 2012, Downhole Products Ltd unit of Varel International Energy Services and Top-Co Inc. have signed a final settlement resolving litigation that had been brought by Downhole over its U.S. Patent No. 6,435,275, which covers a casing centralizer. Downhole has agreed to make Top-Co its exclusive licensee for the ‘275 patent.
Gerald McLaughlan, Top-Co President and CEO in describing the result said, “This agreement, amicably reached, allows Top-Co the ability to continue to provide its successful Top Reach Glider molded thermoset polymer centralizer products to the E & P energy industry. Top-Co is now the exclusive licensee of the technology of the ’275 patent. This is a win for Downhole, a win for Top-Co, and a win for our customers.”
Ian Kirk, Managing Director of Downhole indicated, “We have worked diligently with Top-Co to resolve the issues related to the ‘275 patent and have achieved a settlement that appropriately values the Downhole intellectual property while at the same time positioning Top-Co to continue to supply customers with this innovative technology.”
Similarly, on November 5, 2012, Cassidian Communications, an EADS North America company, announced that Cassidian Communications, Inc. and Intrado, Inc. signed a settlement agreement resolving the ongoing patent litigation involving Cassidian Communications, Inc.’s U.S. Patent No. 6,744,858, System and Method for Supporting Multiple Call Centers.
The settlement agreement provides Intrado, Inc. with a license to the ‘858 patent.
Acacia Settles Patent Infringement with Comcast, Medtronic & Interactive Corp.
On October 31, 2012, Acacia Research Corporation (Nasdaq:ACTG) announced that its Unified Messaging Solutions LLC subsidiary entered into a license and settlement agreement with Comcast Cable Communications LLC. The agreement resolves litigation that was pending in the United States District Court for the Eastern District of Texas (Tyler Division), Case No. 6:11cv120 and the United States District Court for the Northern District of Illinois, Case No. 1:12cv06286.
Acacia Research also announced on October 31, 2012, that its Brain Life LLC subsidiary entered into a settlement and license agreement with Medtronic, Inc. The agreement resolves litigation that was pending in the United States District Court for the Southern District of California.
Meanwhile, on October 10, 2012, Acacia Research announced that its Portal Technologies LLC subsidiary entered into a settlement agreement with IAC/INTERACTIVE CORP. The agreement resolves litigation that was pending in the United States District Court for the Eastern District of Texas.
Settlement Agreement in BYSTOLIC® Patent Litigation
Forest Laboratories, Inc. (NYSE: FRX) and Forest Laboratories Holdings, Ltd. (collectively, “Forest”) announced on October 26, 2012, that they entered into a settlement agreement with Hetero Labs Ltd. and Hetero USA Inc. (collectively, “Hetero”) in patent infringement litigation brought by Forest in response to Hetero’s ANDA seeking approval to market generic versions of Forest’s BYSTOLIC® (nebivolol) tablets.
Under the terms of the settlement agreement and subject to review of the settlement terms by the U.S. Federal Trade Commission, Forest will provide a license to Hetero that will permit it to launch its generic version of BYSTOLIC® as of the date that is the later of (1) three calendar months prior to the expiration of U.S. Patent No. 6,545,040, including any extensions and/or pediatric exclusivities or (2) the date Hetero receives final FDA approval of its ANDA, or earlier in certain circumstances.
Similar patent infringement litigation brought by Forest against Alkem Laboratories, Ltd., Indchemie Health Specialties Pvt. Ltd., Glenmark Generics Inc., Watson Pharmaceuticals Inc., Torrent Pharmaceuticals Ltd., Amerigen Pharmaceuticals Ltd., and related companies and subsidiaries, remains pending in a multidistrict litigation established in the U.S. District Court for the Northern District of Illinois.
IGT and Bally Technologies Settle Patent Litigation
On October 25, 2012, International Game Technology (NYSE: IGT) and Bally Technologies, Inc. (NYSE: BYI) announced they have entered into a Settlement and License Agreement that will end their pending patent litigation in the case styled IGT v. Bally Gaming Int’l, Inc., Civil Action No. 1:06-cv-00282-SLR in the United States Federal District Court for the District of Delaware. As part of the settlement agreement, Bally will obtain a patent license to IGT’s bonusing portfolio under confidential terms and will dismiss its counterclaims with prejudice.
Cross-Licenses Settle 3 Year Patent Dispute
Cellectricon AB and Fluxion Biosciences today announced that they have settled the patent infringement litigation that Cellectricon commenced against Fluxion in 2009.
Cellectricon and Fluxion have agreed to file a stipulation of dismissal with the United States District Court for the Northern District of California for all claims brought by Cellectricon against Fluxion for alleged infringement of Cellectricon’s U.S. Patent Nos. 7,390,650, 7,470,518, and 7,563,614. Under the terms of the settlement, Fluxion and Cellectricon will cross-license patents related to microfluidic cellular analysis.
“We are very pleased to have achieved a successful conclusion to the litigation,” said David A. Burns, Chief Executive Officer of Cellectricon. “Resolution of this lawsuit allows us to focus on providing innovative and enabling products and discovery services for drug discovery and life science research globally.”
“Fluxion couldn’t be more pleased with the settlement and the outcome of the litigation. We believe it is a win-win for both companies, and will benefit our customers as we can now focus all of our attention on developing and providing solutions that continue to deliver maximum benefit to them,” said Jeff Jensen, CEO of Fluxion Biosciences.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.