Patent Business: Deals, Licenses, Settlements – Dec. 4, 2012
Gene Quinn (left) Patent Attorney & Founder, IPWatchdog
Angel Krippner (right), Executive Assistant, IPWatchdog
Posted: December 4, 2012 @ 9:30 am
Below is summary of some of the patent deals from the last couple weeks that caught our attention. If you have any “patent business,” “patent deal” or “patent settlement” news you would like to share please send me a message using our contact form.
Settlement Agreements in BYSTOLIC® Patent Litigation
On November 28, 2012, Forest Laboratories, Inc. (NYSE: FRX) and Forest Laboratories Holdings, Ltd. (collectively,“Forest”) announced that they entered into settlement agreements with Alkem Laboratories, Ltd. (“Alkem”), Indchemie Health Specialties Pvt. Ltd. (“Indchemie”), and Torrent Pharmaceuticals Ltd. and Torrent Pharma Inc. (collectively, “Torrent”) in patent infringement litigation brought by Forest in response to abbreviated new drug applications (ANDAs) filed by Alkem, Indchemie and Torrent each seeking approval to market generic versions of Forest’s BYSTOLIC® (nebivolol) tablets. These settlement agreements are in addition to the previously announced Bystolic patent infringement settlement agreement with Hetero Labs Ltd.
Specifically, under the terms of the settlement agreements and subject to review of the settlement terms by the U.S. Federal Trade Commission, Forest will provide licenses to each of Alkem, Indchemie and Torrent that will permit these companies to launch their generic versions of BYSTOLIC® as of the date that is the later of (a) three calendar months prior to the expiration of U.S. Patent No. 6,545,040, including any extensions and/or pediatric exclusivities or (b) the date each company receives final FDA approval of its ANDA, or earlier in certain circumstances.
Similar patent infringement litigation brought by Forest against Amerigen Pharmaceuticals Ltd., Glenmark Generics Inc., Watson Pharmaceuticals Inc., and related companies and subsidiaries thereof, remains pending in a multidistrict litigation established in the U.S. District Court for the Northern District of Illinois.
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ESI Announces Settlement in IP Infringement Litigation
On November 29, 2012, Electro Scientific Industries, Inc. (NASDAQ:ESIO), a supplier of laser-based manufacturing solutions for the microtechnology industry, announced that the company has reached a settlement agreement with All Ring Tech Co. Ltd. (All Ring) related to ESI’s claim of infringement of one of its patents pertaining to electronic component tester technology. All Ring has agreed to pay ESI the sum of TWD 475 million (approx. USD 16.3 million) to settle the dispute, and will discontinue selling the infringing products. ESI estimates that the net financial impact of the settlement and related costs will be an increase of approximately $15.8 million to operating income and approximately $10 million to net income after income taxes, for its fiscal 2013 third quarter, which ends December 29, 2012.
“ESI has made significant investments over many years to develop innovations in passive component test technology for our customers,” said Sean Phillips, General Manager, ESI Component Test and Inspection Division. “We are pleased that our efforts through the Taiwan court system have been rewarded by reaching a significant monetary award settlement with All Ring. This outcome is the result of ESI’s commitment to vigorously defend itself against those choosing to infringe our Intellectual Property. Our customers depend on ESI for innovative test solutions to meet their challenges in the component test marketplace. Defending our IP enables us to continue investing in solutions for our customers.”
Vibram S.p.A., Vibram USA and Fila USA Announce Settlement
On November 30, 2012, Vibram S.p.A., Vibram USA, Inc. and Fila USA, Inc. announced that they entered into a settlement agreement resolving a patent infringement lawsuit filed by Vibram against Fila on July 6, 2011 in the U.S. District Court for the District of Massachusetts. The lawsuit involved Vibram’s U.S. Patents No. 7,805,860, D579,181 and D582,134, and certain of Fila’s Skele-Toes footwear models.
The complaint alleged Fila USA, Inc.’s (“Fila”) “Skeletoes” footwear were infringing several U.S. Patents held by Vibram. The FiveFingers Patents cover a variety of footwear designs comprising individual toe pockets.
At the time the complaint was filed this is what Vibram USA President Tony Post had to say:
Before Vibram FiveFingers were introduced, there was no minimalist footwear constructed with individual toe pockets that encouraged natural, barefoot movement, while at the same time providing enhanced grip and protection. Vibram pioneered the minimalist footwear category. Vibram launched the concept in 2005, and public reception has grown tremendously since, now the entire footwear industry has responded by entering the minimalist category. In fact, Vibram has even partnered with Merrell and New Balance to create minimal/barefoot like sole platforms that are complementary to our Vibram FiveFingers.
To see a commercial example of the Vibram five finger running shoes you can visit REI online store.
Kraft Foods Group, Inc. Licenses Mobile Barcode Patents
On November 27, 2012, NeoMedia Technologies, Inc. (OTC BB: NEOM), an innovator in the mobile barcode space, announced that they entered into a worldwide, non-exclusive license to NeoMedia’s patents related to mobile barcode resolution with Kraft Foods Group, Inc. (NASDAQ: KRFT). In addition, Kraft has selected NeoMedia as an approved vendor for mobile barcode management solutions.
NeoMedia’s Intellectual Property (IP) portfolio, consisting of over 74 patents awarded and pending worldwide, encompasses many mobile barcode implementations used widely across the industry. Kraft will look to leverage NeoMedia’s IP property in the future.
“Staying on top of emerging technologies popular with consumers is vital in today’s marketplace,” said Renee Zahery, Senior Director, Corporate Affairs, Kraft. “We are pleased to work with NeoMedia on this licensing arrangement to support our mobile initiatives.”
“Consumer brands continue to turn to barcode technology as an effective way to engage with consumers,” said Laura Marriott, Chief Executive Officer of NeoMedia. “We welcome Kraft as NeoMedia’s first brand licensee as we continue to grow our IP portfolio and strengthen our overall presence in the market.”
Acacia Subsidiary Enters into License and Settlement Agreement with Doostang, Inc.
On December 3, 2012, Acacia Research Corporation (Nasdaq: ACTG) announced that its Unified Messaging Solutions, LLC subsidiary entered into a license and settlement agreement with Doostang, Inc. This agreement resolves litigation that was pending in the United States District Court for the Northern District of Illinois.
About the Authors
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.
Angel Krippner is an Executive Assistant for IPWatchdog, Inc. In this role she provides administrative assistance, researches articles, coordinates our social media presence, networks with law firms and various other functions. She is the glue that holds everything together behind the scenes.