Cephalon, Merck, National Trust, A&P: Intellectual Property

Cephalon Inc. (CEPH) won a court order preventing generic-drug makers from selling low-cost versions of its muscle relaxant Amrix until a judge rules on a patent dispute over the product.

Generic versions could have entered the market as soon as April 17. U.S. District Judge Sue Robinson in Wilmington, Delaware, said April 8 that she wasn’t sure she would be able to rule on the case by that date.

“It is the court’s intention to issue its findings of fact and conclusions of law in short order, but not necessarily by April 17,” Robinson wrote in court papers.

The consolidated case relates in part to a lawsuit filed in Delaware in January 2009 by Frazer, Pennsylvania-based Cephalon against Impax Laboratories Inc. (IPXL) of Hayward, California. Cephalon alleges infringement of its 2008 patent 7,387,793 for the drug, known chemically as cyclobenzaprine hydrochloride. That individual case was settled last year.

“We’re pleased with the judge’s ruling that prevents generic companies from marketing a generic version of Amrix before the court has fully decided the patent-infringement lawsuit,” Natalie de Vane, a Cephalon spokeswoman, said in a phone interview.

Cephalon reported $109.2 million in U.S. Amrix sales last year.

The combined case is In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 09-md-2118, U.S. District Court, District of Delaware (Wilmington).

Merck Loses U.K. Appeal With Teva to Reinstate Cosopt Patent

Merck & Co., the second-biggest U.S. drug company, lost a U.K. court bid to reinstate its European patent for the glaucoma treatment Cosopt after a successful challenge by Teva Pharmaceutical Industries Ltd. (TEVA)

A November 2009 ruling that Merck’s patent lacked novelty or inventiveness was correct because experts in the field would have found the development to be obvious, the Court of Appeal ruled April 8 in London.

“Merck is disappointed by the Court of Appeal decision,” Ron Rogers, a spokesman for the Whitehouse Station, New Jersey- based company, said in a statement April 8. “We are reviewing the decision and considering our potential options.”

The U.K. unit of Petach Tikva, Israel-based Teva, the world’s biggest maker of generic drugs, sued three years ago over claims the patent shouldn’t have been granted after Merck filed the application in 1992. The case was one of several lawsuits between the companies in recent years over treatments for brain cancer, allergies and fungus.

Alcon Sues Watson to Block Generic Vigamox Eye Treatment

Alcon Inc. (ACL)’s Alcon Pharmaceuticals unit sued Watson Pharmaceuticals Inc. (WPI) for patent infringement over Vigamox, a treatment for bacterial eye infections.

The suit, filed Aug. 7 in federal court in Wilmington, Delaware, was triggered by Watson’s seeking approval from the U.S. Food and Drug Administration to market a generic version of the drug.

The product is covered by two patents Alcon claims that Corona, California-based Watson has infringed. Patent 6,716,830, issued in April 2004; and 7,671,070, issued in March 2010, both relate to the use of a drug known as Moxifloxacin in the treatment of eye conditions.

Alcon, based in Switzerland, asked the court to rule that Watson infringed the patents and to bar approval of a generic form of the drug until both patents have expired. The company also asked attorney fees and litigation costs.

The case is Alcon Pharmaceuticals Ltd. v. Watson Laboratories Inc., 1:11-cv-00293-UNA, U.S. District Court, District of Delaware (Wilmington).

For more patent news, click here.

Trademark

National Trust Sued in Hawaii Over ‘Main Street’ Trademark

The National Trust for Historic Preservation in the U.S. was sued by a Hawaiian nonprofit organization that seeks a court declaration it doesn’t infringe one of the trust’s trademarks.

The Wailuku Main Street Association Inc. sued in federal court in Hawaii April 7, asking the court to rule that it wasn’t infringing the trust’s “Main Street” trademark.

According to court papers, the Wailuku group was formed in 1986, and in 1989 was designated a “graduate” of the trust’s program. The trust authorized the Wailuku group to function as a resource center for the County of Maui, the filing said.

For more than 20 years the trust accepted dues from the Wailuku group “with full knowledge of Wailuku Main Street’s inclusion of ‘Main Street’ in its name and use in its activities,” according to court papers.

Until recently, the Wailuku group said it had heard no objections from the Washington-based trust about the name it used. Wailuku said its office is, in fact, on Main Street, in the town of Wailuku.

The trust has now told the Wailuku group it must cease using “Main Street” in its name and in connection with commercial district revitalization activities, according to the complaint.

The trust communicated with community leaders and others that the Wailuku group is barred from using “Main Street” in its name, the Hawaiian organization said.

It asked the court to declare that the trust has no right to interfere with the use of “Main Street” and for an order barring the trust from asserting that its use of the term infringed. It also asked for attorney fees and litigation costs.

The membership-funded trust hasn’t been served with a complaint, its general counsel, Paul W. Edmondson, said in an e-mailed statement. He said his organization isn’t able to comment until it can review the claims made by the plaintiffs.

The Wailuku group is represented by Paul Maki of Honolulu.

The case is Wailuku Main Street Association Inc., 1:11-cv- 00222-AKC-RLP, U.S. District Court, District of Hawaii.

For more trademark news, click here.

Copyright

Six States Have Half of Corporate Piracy, Software Group Says

Almost half the corporate software piracy in the U.S. occurs in six states, according to the Business Software Alliance.

California, Texas, Florida, New York, Illinois and Michigan, are the source of 49.3 percent of the reports the BSA receives about unlicensed software, according to a statement from the Washington-based industry group.

In 2009, 20 percent of software used by business in the U.S. was pirated, BSA said in its statement. The commercial value of such pirated software was almost $8.4 billion.

Companies in the manufacturing and distribution sectors are most likely to use pirated software, BSA said.

For more copyright news, click here.

Trade Secrets/Industrial Espionage

A&P Settles Suit With Royal Ahold’s Stop & Shop Over VP Hire

Great Atlantic & Pacific Tea Co. (GAP), the 152-year-old bankrupt grocery store operator, settled a lawsuit against Royal Ahold NV’s Stop & Shop Supermarket unit for hiring its second-most- senior operations executive after he agreed not to work for a competitor for 18 months.

Lawyers in the case said they settled the suit in court April 8, according to the docket. Terms weren’t disclosed.

A&P sued Stop & Shop and Frank R. Vitale, the former vice president of operations, April 4 in federal court in Brooklyn, New York. The company accused Vitale of disclosing trade secrets and “key elements” of its restructuring strategy to its rival. It sought $1 million in compensatory damages and $1 million in punitive damages from Stop & Shop. Vitale resigned from A&P Feb. 14, according to the complaint.

A&P, based in Montvale, New Jersey, filed for bankruptcy in December after failing to turn around its business amid increased competition from wholesale clubs and drugstores. It operates supermarkets under names including Waldbaum’s, Food Emporium and Pathmark.

Arlene Putterman, a Stop & Shop spokeswoman, declined to comment. A message left on A&P’s media-relations line wasn’t immediately returned.

The case is Great Atlantic & Pacific Tea Co. (GAPTQ) v. Stop & Shop Supermarket Co., 11-cv-1641, U.S. District Court, Eastern District of New York (Brooklyn). A&P’s bankruptcy case is In re Great Atlantic & Pacific Tea Co., 10-24549, U.S. Bankruptcy Court, Southern District of New York (White Plains).

IP Moves

Wilson Sonsini Loses IP Teams to Latham, Arnold & Porter

Latham & Watkins LLP hired six IP specialists from Palo Alto, California-based Wilson Sonsini Goodrich & Rosati PC, the Los Angeles-based firm said in a statement.

The new hires are Roger J. Chin, Richard G. Frenkel, Julie M. Holloway, Terry Kearney, Michael A. Ladra and Ron E. Shulman.

In February, Washington’s Arnold & Porter LLP hired James A. DiBoise, Michael A. Berta and Tracy Tosh Lane away from Wilson Sonsini.

All nine are IP litigators.

Chin, who has handled cases for clients in the life sciences industry involving drugs, medical devices and biotechnology, has appeared in federal district courts and before the Washington-based appeals court that handles patent disputes.

He has an undergraduate degree from Cornell University and received both a law degree and a medical degree simultaneously from Yale University.

Frenkel has represented clients in the telecommunications, semiconductors, information technology, life sciences, and Internet and digital media industries. Before he went into private practice, he was the director of intellectual property for consumer and emerging technologies at Cisco Systems Inc. (CSCO) of San Jose, California.

He has an undergraduate degree from the University of Michigan, a master’s degree in science from the Massachusetts Institute of Technology and a law degree from Loyola Law School of Los Angeles.

Holloway has represented clients in district court and before the U.S. International Trade Commission. Her clients have come from the information-technology industry, particularly electronics, software and mechanics.

She has an undergraduate degree from the University of California at Santa Cruz, a master’s degree from George Washington University and a law degree from the University of California, Berkeley School of Law.

Kearney represents both generic and branded drug companies, medical diagnostics and device companies and combinatorial and analytical chemistry companies. He has also handled IP disputes for clients in the electronic design automation, chip fabrication, design and packaging, software and Internet-related applications industries.

He has an undergraduate degree from the University of San Diego, a master’s degree from the University of Hawaii and a law degree from Georgetown University.

Ladra has litigated more than 50 patent cases, and handled at least a dozen before the U.S. International Trade Commission. He has represented clients in the information-technology field.

He has an undergraduate degree from Princeton University and a law degree from University of California, Hastings College of the Law.

Shulman has handled more than 90 patent cases in the areas of information technology and life sciences, principally defending companies accused of infringement.

He has an undergraduate degree from Amherst College and a law degree from Rutgers University.

According to an Arnold & Porter statement, the three Wilson Sonsini lawyers it hired joined the firm in February.

DiBoise has handled disputes involving patents, trade secrets, copyrights, trademarks and contracts. Among the technologies at issue in his practice are gene replication, wireless network protocols, drug development and biologics, satellite signal encryption, semiconductor wafer manufacturing and software copyright-infringement claims.

He has an undergraduate degree from the University of Virginia and a law degree from Stanford University.

Berta has done patent and trade-secret litigation for clients in the microprocessor and flash-memory architecture, Web software, pharmaceutical, medical-device and consumer-product industries.

He has an undergraduate degree from the University of California at San Diego and a law degree from Georgetown.

Lane has represented clients in trade-secret, copyright, unfair-competition and complex-contract actions.

She has an undergraduate degree from Vanderbilt University and a law degree from the University of Michigan.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net.

To contact the editor responsible for this story: Michael Hytha at mhytha@bloomberg.net.

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