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Paul Hastings Invalidates Five Patents and Eliminates Alleged Damages for Sunovion

March 12, 2012
New York, NY (March 6, 2012)- Paul Hastings LLP, a leading global law firm, announced today that the firm obtained partial summary judgment for Sunovion Pharmaceuticals Inc., a subsidiary of Dainippon Sumitomo Pharma Co., Ltd., invalidating five of the seven patents alleged to be infringed by Sunovions Brovana® product (a nebulized arformoterol solution indicated for treatment of COPD).

Plaintiffs Dey, L.P., Dey, Inc., and parent Mylan Inc. filed suit in March 2007 against Sunovion Pharmaceuticals Inc. (formerly Sepracor Inc.), alleging that Sunovions Brovana® infringed one Dey formulation patent. The suit expanded over five years as additional patents were issued from the Patent Office, eventually totaling seven asserted patents in two families.

Following reexamination of the first family patents, Sunovion moved for summary judgment that all five of the second family patents were invalid because Sunovion had used formulations within the scope of the asserted claims in a clinical trial more than one year before the effective filing date of those patents. Southern District of New York Judge John G. Koeltl found that Sunovions clinical trial resulted in an invalidating public use of all of plaintiffs asserted second family patent claims.

Judge Koeltl further found that the two first family patents had been substantively amended during recent reexaminations, thus triggering absolute intervening rights for Sunovion under 35 U.S.C. 252 and wiping out all of plaintiffs alleged damages through the issuance of the reexamination certificates in October 2011 -- a period of four and a half years.

Read the Courts decision here.

Global Intellectual Property practice co-chair, Joseph OMalley and Intellectual Property partner David Conca led the Paul Hastings team.

Paul Hastings LLP is a leading global law firm with offices in Asia, Europe, and the United States. We provide innovative legal solutions to financial institutions and Fortune 500 companies. Please visit www.paulhastings.com for more information.