REPRESENTATIVE CASES In which our Attorneys were Lead Counsel:
Kerzner International Limited v. JEC II LLC, Opposition No. 91167455 (TTAB Sept. 25, 2007)
Kerzner Int’l opposed several federal trademark applications and an issued federal registration of our client JEC II LLC, based upon Kerzner’s federal service mark registrations. We moved, on behalf of our client, for partial summary judgment to cancel all but one of the service recitations of one of Kerzner’s registrations. The motion was based upon admissions that Kerzner was not providing, and had never provided, these services in the United States, so that the registration of these services by Kerzner was void ab initio. Summary judgment was granted in our client’s favor, cancelling these services (resort services, restaurant and bar services, health clubs services, golf club services, and the like) from the registration in question.
PLX, Inc. v. Prosystems, Inc., 220 F.R.D. 91 (N.D.W. Va. 2004)We represented the plaintiff in an infringement suit against the defendant company and its two officers. After prevailing on several pretrial matters, including sanctions against the defendant and its counsel for discovery abuses, the Court ruled in our client’s favor on every one of the disputed patent claim terms in the Markman hearing. A prompt settlement resulted.
Worldwide Dreams LLC v. James Grintz et al., Index No. 602897/05 in the Supreme Court of the State of New York, County of NY
Our clients were defendants in this NY State Court action which claimed they had aided and abetted a breach of fiduciary duty of an ex-employee of the plaintiff company. Plaintiff was represented by a large international law firm. We were successful in having all claims against our clients dismissed on summary judgment, with a ruling that opened the doors to a sanctions hearing against the plaintiff and its counsel.
Sepracor Inc. v. Teva Pharmaceuticals, USA, Inc., et al., Civil No. 09-CV-01302 in the District Court for the District of New Jersey
Our client was one of defendants in this patent-challenge, first-to-file on-going ANDA litigation related to the drug eszopiclone (Lunesta®). We were able to achieve a highly favorable settlement for our client. Under the publicly available settlement terms, our client will be permitted to enter the market with its generic eszopiclone product before the expiration of Sepracor’s patents, and earlier under certain circumstances. Our client was the first defendant to settle with Sepracor. The majority of the defendants followed our client into settlement.
Triax Pharmaceuticals, LLC, Astellas Pharma Europe B.V. and Astellas Pharma Int’l B.V., v. Glenmark Generics Inc., USA and Glenmark Pharmaceuticals Ltd., in District Court for the District of Delaware
We represented Glenmark Generics in this patent-challenge, first-to-file litigation related to hydrocortisone butyrate cream sold in the United States by Triax as Lipoid Lipocream®. Our firm worked with our client Glenmark to prepare and establish an appropriate litigation position to challenge the patent. We were able to achieve a highly favorable settlement for our client. Under the publicly available settlement terms, our client will be able to enter the market with its generic product well before the expiration of the patent-in-suit.
Medicis Pharmaceuticals v. Glenmark Generics, USA and Glenmark Generics, Ltd., Civil Action No. 2:09-cv-03010-PGS-ES in the District Court for the District of New Jersey
We represented Glenmark Generics, as a sole defendant, in this patent-challenge, first-to-file litigation related to drug fluocinonide sold by Medicis Pharmaceuticals as Vanos® and in related litigation related to drug cyclopyrox (Loprox®). Our firm worked with our client to establish a strong litigation position against the patent listed in the Orange Book. As a result of the concurrent litigations, Glenmark and Medicis entered into a settlement agreement. Under the publicly available terms of the settlement agreement, Glenmark will be able to enter the market for fluocinonie before the expiration of the patent-in-suit for fluocinonide. Glenmark was also able to enter the market immediately for cyclopyrox. Concurrently, in connection with settlement of all litigations pending between Glenmark and Medicis, the companies entered into a joint development agreement of Glenmark-owned patented technology. Under the publicly disclosed terms of the agreement, Glenmark received an immediate $5,000,000 payment from Medicis and became entitled to milestone payments going forward.