Published On: July 17th, 2019Categories: Patent Applications, Patents

In this post, we take a look at the cellular technology patent war between Japanese and Chinese companies and how Tolmar proved its Eligard® products did not Infringe Horatio’s patents.

Cellular Technology Patent War Between Japanese and Chinese Companies

Godo Kaisha IP Bridge 1 (IP Bridge) is a Japanese non-practicing entity (NPE) and the owner of U.S. patent numbers 7,373,295, 8,351,538, and 8,385,239. These patents describe the W-CDMA and LTE cellular telecommunications standards technology. TCL Communication Technology Holdings Limited and TCT Mobile Limited are the subsidiaries of a Chinese company TCL Corporation and they manufacture mobile phones under the brand names, Alcatel OneTouch and TCL.

On December 15, 2014, IP Bridge sent a notice to TCL’s CEO and Executive Director, Dr. Aiping Guo, citing infringement of their patents, U.S. 7,373,295, U.S. 8,351,538, and U.S. 8,385,239. In their Notice, IP Bridge also offered to license patents ‘295, ‘538 and ‘239 to TCL. However, TCL did not show any interest in licensing the patents. Despite three more IP Bridge follow-up letters in the consecutive months asking for license negotiations and discussion, TCL made no response.

On July 24, 2015, IP Bridge filed a patent infringement suit (1:15-cv-00634) against TCL in the United States District Court for the District of Delaware for infringing the patents-in-suit. On December 11, 2015, TCL filed a motion to dismiss the case for lack of jurisdiction, but on August 17, 2016, the court dismissed the motion as TCL and their subsidiaries have transacted and continue to transact business in the State of Delaware, directly or through third parties.

On April 18, 2017, a Markman hearing was conducted before Judge Robinson to examine the evidence presented by both parties. On hearing the Court directed the parties to present the claim construction consistently with any explanation or clarification provided then by the Court. Starting October 30, 2018, a seven day jury trial was held resulting in the jury verdict, rendered on November 8, 2018, in which the jury declared that claims 15 and 16 of the ‘538 patent and claims 9 and 12 of the ‘239 patent were infringed. The jury awarded $950,000 as a royalty amount to IP Bridge. Based on the jury verdict on January 2, 2019, Judgment was entered by Senior United States District Judge Joseph F. Bataillon in favor of IP Bridge. Following the Judgment, IP Bridge applied for a post-trial motion requesting an enhanced damage amount, attorney fees and pre and post judgment interest. On July 2, 2019, the senior Judge released an amended judgment awarding the sum of $1,235,409.36 as a damages for TCL.

Tolmar Proved its Eligard® Products did not Infringe Horatio’s Patents

For decades, there were no proper medications to treat prostate cancer, breast cancer, endometriosis, uterine fibroid, and early puberty. In 1985, Leuprorelin, also known as Leuprolide was approved by the FDA for treating advanced prostate cancer. Leuprolide acetate is dissolved with a solvent, N-methyl-2-pyrrolidone, and injected into the human body. This combination was sold in separate prefilled syringes under the trademark name Eligard® by Tolmar.

Horatio Washington Depot Technologies LLC (Horatio), a non-practicing entity (NPE), is the owner of U.S. Patent Nos. 5,932,547, 6,124,261 & 6,235,712. On August 3, 2017, Horatio lodged a patent infringement suit (1:17-cv-01086) against Tolmar, Inc., Tolmar Pharmaceuticals, Inc., and Tolmar Therapeutics Inc. in the United States District Court for the District of Delaware. Horatio claimed that Tolmar’s Eligard® was infringing the following claims of the patents-in-suit.

Patent number

Asserted claims

US5932547

1, 2, 4, and 6

US6124261

3, 4, 23, 26, 32, 33, and 36

US6235712

1, 2, 4, 8-10 and 12-16

On December 22, 2018, before Judge Leonard P. Stark, a claim construction hearing was held for certain claims of the asserted patents. On March 20, 2019, based on the results of claim construction, the Court granted in part dismissing the claims of ‘547 and ‘261 patents excluding the claims of ‘712 patent based on Tolmar’s motion to dismiss the patents-in-suit for failure to state a claim in the complaint. On April 9, 2019, Tolmar answered the amended complaint seeking declaratory judgment from the claims of ‘712 patent. The parties each argued their definition of the term “dissolving” found in the claim of ‘712 patent. The Court finally agreed the following definition: “mixing together to form a solution”.

Based on the agreed claims construction, on June 4, 2019, Judge Leonard P. Stark entered a Final Judgment, declaring Tolmar’s Eligard® products did not infringe the claims of the ‘712 patent. The Judge also granted Horatio the right to appeal. Unhappy with the judgment, Horatio filed an appeal against Tolmar (2019-2099) in the Federal Court of Appeals on July 5, 2019, against the Court’s claim construction.

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