Hatch-Waxman: Eli Lilly Sues Actavis after ANDA Filed on Axiron®

Actavis PLC (NYSE: ACT) recently filed an Abbreviated New Drug Application (ANDA) with the U.S. Food and Drug Administration (FDA) seeking approval to market Testosterone Topical Solution, 30mg/1.5mL.  Actavis’ ANDA product is a generic version of Eli Lilly and Company’s Axiron®, which is an androgen indicated for replacement therapy in males for conditions associated with a deficiency or absence of endogenous testosterone.

Eli Lilly and Company and Acrux DDS Pty Ltd. filed suit against Actavis on November 12, 2013, in the U.S. District Court for the Southern District of Indiana seeking to prevent Actavis from commercializing its ANDA product prior to the expiration of certain of its U.S. patents.  The lawsuit was filed under the provisions of the Hatch-Waxman Act, resulting in a stay of final FDA approval of Actavis’ ANDA for up to 30 months from the date the plaintiffs received notice of Actavis’ ANDA filing or until final resolution of the matter before the court, whichever occurs sooner, subject to any other exclusivities.


Google Request for Reexamination of Walker Digital Patent, among those Filed Week of June 25, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Last year Walker Digital sued BMW, MapQuest, TomTom, Teleman, Blusens, NDrive, Samsung and Google for infringement of U.S. Patent No. 6,199,014 claiming a vehicle navigation system (see inter partes Request No. (2)).  Last Tuesday Google requested reexamination of the ‘014 patent.  A motion to stay the litigation is likely to follow.

Reexamination was requested for Ronald Katz’ U.S. Patent No. 5,898,762 claiming a telephone interface system (see ex parte Request No. (2)).  Katz has sued Charter, Time Warner Cable, EarthLink, DIRECTV and U.S. Cellular for infringing the ‘762 patent.

Friday is the most popular day for filing reexamination requests, unless you are the Troll Buster Jeff Oster who filed two more requests on Saturday, these against two Life Technologies hybridization assay patents, on behalf of Bioresearch (see ex parte Request Nos. (9) & (10)).

The following inter partes requests were filed:

(1)         95/002,030 (electronically filed) – U.S. Patent No. 7,534,366 entitled COMPOSITIONS CONTAINING FLUORINE SUBSTITUTED OLEFINS and owned by Honeywell International.  Filed June 26, 2012, by Mexichem Amanco Holding S.A. de C.V.  The ‘366 patent is currently the subject of a declaratory judgment action styled Arkema et al. v. Honeywell International, (Case No. 10-cv-2886 (E.D. Pa.)).

(2)         95/002,031 (electronically filed) – U.S. Patent No. 6,199,014 entitled SYSTEM FOR PROVIDING DRIVING DIRECTIONS WITH VISUAL CUES and owned by Walker Digital.  Filed June 26, 2012, by Google.  The ‘014 patent is currently the subject of a litigation styled Walker Digital v. Apple et al. (Case No. 1:11-cv-309 (D. Del.))

The following ex parte requests were filed:

(1)         90/012,376 (electronically filed) – U.S. Patent No. 5,898,762 entitled TELEPHONIC-INTERFACE STATISTICAL ANALYSIS SYSTEM and owned by Ronald A. Katz Tech. Licensing LP.  Filed June 27, 2012.   The ‘762 patent is currently the subject of six infringement actions.

(2)         90/012,377 (electronically filed) – U.S. Patent No. 8,030,026 entitled ANTIBODIES TO TROPONIN I AND METHODS OF USE THEREOF and owned by Abbott Labs.  Filed June 28, 2012, by HyTest Oy.

(3)         90/012,378 (electronically filed) – U.S. Patent No. 6,779,118 entitled USER SPECIFIC AUTOMATIC DATA REDIRECTION SYSTEM and owned by Linksmart Wireless Systems.  Filed June 28, 2012, likely by T-MOBILE USA.   The ‘118 patent is currently the subject of a litigation styled Linksmart Wireless v. T-MOBILE USA (Case No. –cv-522)).

(4)         90/012,379 (electronically filed) – U.S. Patent No. 6,641,477 entitled ELECTRONIC SECOND SPIN SLOT MACHINE and owned by Rembrandt Gaming Technologies.  Filed June 29, 2012.

(5)         90/012,380 (electronically filed) – U.S. Patent No. 5,451,375 entitled APPARATUS FOR TRIMLESS SAMPLE CUP USED IN X RAY SPECTROSCOPY and owned by Chemplex Industries.  Filed June 29, 2012.

(6)         90/012,381 (electronically filed) – U.S. Patent No. D604,188 entitled MINI LIGHT BAR and owned by Filed June 29, 2012, by Wolo Mfg.   The ‘188 patent is currently the subject of a litigation styled Shin v. Wolo Mfg. et al. (Case No. 2:12-cv-2592 (C.D. Cal.)).

(7)         90/012,382 (electronically filed) – U.S. Patent No. 5,819,201 entitled NAVIGATION SYSTEM WITH VEHICLE SERVICE INFORMATION and owned by Beacon Navigation.  Filed June 29, 2012.

(8)         90/012,383 (electronically filed) – U.S. Patent No. 6,258,569 entitled HYBRIDIZATION ASSAY USING SELF-QUENCHING FLUORESCENCE PROBE and owned by Life Techs.  Filed June 30, 2012, by Biosearch Techs.   The ‘569 patent is currently the subject of a litigation styled Applied Biosystems et al. v. Midland Certified Reagents et al. (Case No. 3:12-cv-852 (N.D. Cal.)).

(9)         90/012,384 (electronically filed) – U.S. Patent No. 6,030,787 entitled HYBRIDIZATION ASSAY USING SELF-QUENCHING FLUORESCENCE PROBE and owned by Life Techs.  Filed June 30, 2012, by Bioresearch Techs.   The ‘787 patent is currently the subject of a litigation styled Applied Biosystems et al. v. Midland Certified Reagents et al. (Case No. 3:12-cv-852 (N.D. Cal.)).

Technicolor Prepares to Use its 40,000 Patents to Enter the Mobile Patent Wars

Technicolor, the French company that invented the process for color movies, currently holds an estimated 40,000 valuable patents in digital audio and video. Their innovations go back almost a century and have been involved in licensing deals for said innovations for almost sixty years. The longevity of the impact of Technicolor’s visual, audio, and optic patents has somewhat caused them to be taken for granted. Not many can remember a time without Technicolor, but the company is now taking proactive steps to remind us of what it has done, and more importantly, what patents remain active in their arsenal.

As smartphones, tablets, and other electronic devices are igniting international patent litigation over what company is infringing on another company’s technology patent, Technicolor is literally breaking these devices apart. The company has devised a team of 220 employees whose purpose is to take apart every popular electronic device to find possible patent infringements. (more…)

ITC Finds Kodak’s Digital Capture Patent Invalid

On May 21, 2012, the U.S. International Trade Commission’s Judge Thomas Pender issued a notice in the patent infringement battle brought by Eastman Kodak against Apple, Inc. and Research In Motion, Ltd. The decision noted that Apple and RIM infringed upon one of the claims in Kodak’s digital capture patent, but that Kodak’s patent was invalid because of the “obviousness” of claim 15 of the patent. As such, Apple and RIM did not violate 19 U.S.C. § 1337(a)(1) with respect to Kodak’s patent.


Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patents Post-Grant: Update from the Central Reexamination Unit – This post reports on the Central Reexamination Unit’s update on the USPTO’s efforts to refine the patent reexamination process, and that the stream line proposals of 2011 are still being reviewed.

2) Patent Docs: USPTO Seeks Comments on New Sequence Listing Standard – This post summarizes the notice published by the USPTO in the Federal Register regarding  an international effort to revise the standard for Sequence Listing submissions. The post also shares how comments regarding the proposed standard can be submitted for review.