Intellectual Property Practice Group Co-Leader Imron Aly was quoted on a recent favorable outcome for client Fresenius Kabi USA LLC in a patent-infringement trial brought against it.
Imron was interviewed in an article about one of the big takeaways from the case, referring to evergreening, which is the tactic of filing a patent application to extend the period of exclusivity for a patent owner without claiming a true advance of prior art. That strategy did not work for the patent owner in this case.
“The line to draw is whether there is anything claimed in the new patent that is an advance over the prior art,” Imron said. “If you’re just taking the same formulation and repackaging it without making a material advance, then the underlying product didn’t change.”
In this case, the prior art already had a stable container for the drug, and the claimed invention was about the same container for the same drug. One claim term referred to a stability property. The trial judge found that “Fresenius Kabi has marshaled clear and convincing evidence” that the stability property was inherent. That made the claim invalid as obvious.
“Inherency in obviousness is not found often but is a powerful and important tool.”
Read the full article here.