Schiff Hardin Secures Patent Infringement Win

Schiff Hardin successfully secured a favorable outcome for our client, Fresenius Kabi USA LLC, in a patent-infringement suit filed by Hospira Inc., which paves the way for Fresenius to market a new generic drug.

Hospira, a subsidiary of Pfizer Inc., filed suit after Fresenius requested regulatory approval to sell a generic version of the drug Precedex. Our team argued that two patents covering the dexmedetomidine premix formulation were obvious in light of prior art and Judge Rebecca R. Pallmeyer of the U.S. District Court for the Northern District of Illinois agreed, invalidating both patents.

The ground-breaking victory follows failed efforts of prior litigants and two law firms for other clients.

Imron Aly, Intellectual Property Practice Group co-leader said, “We’re pleased that the court agreed with our arguments and found that both of Hospira’s asserted patents are invalid. The court specifically noted that ‘the record is different’ for this case, justifying the win.”

Imron added that, “A broad result of this win is that evergreening does not always work and should be reined in,” referencing the technique where companies seek an excessive number of patents on trivial improvements on a product to stave off competition. “More specifically, [dexmedetomidine] now can be generically sold 13 years before patent expiration.”

The attorney team also included Kevin M. Nelson, Joel M. Wallace, Tara L. Kurtis, and Ahmed M.T. Riaz.

For more coverage on this client win, click below.

Bloomberg Law

Law360 (Subscription required)

Generics Bulletin (Subscription required)

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