Published On: June 26th, 2019Categories: Featured Litigation Cases

In this post, we take a look at the New Jersey District Court that entered a permanent injunction against Prinston’s diabetic medicine and Technical LED Intellectual Property that sued Aluratek, Inc. to pay damages in a patent infringement battle.

New Jersey District Court Entered a Permanent Injunction against Prinston’s Diabetic Medicine

Diabetes have been an ever increasing threat for people around the globe since at least 1922. Approximately 29 million people of the United States of America currently have type 2 diabetes. In 2013, the United States approved the oral anti-diabetic drug, Canagliflozin, as an adjunct to diet and exercise to improve patients’ glycemic profiles and help them to manage their type 2 diabetes. Janssen Pharmaceuticals, Inc. (JPI), a subsidiary of Johnson & Johnson sold Canagliflozin under the trademark INVOKANA beginning in 2016. JPI signed a licensing agreement with Mitsubishi Tanabe Pharma Corporation (MTPC) for marketing their product. 

On August 20, 2013, the USPTO issued the United States Patent No. 8,513,202 to MTPC. In mid-2017, MTPC filed 9 cases against leading pharmaceutical companies like Lupin Limited, Teva Pharmaceuticals, Apotex Inc., Aurobindo Pharma, etc. for infringing said patent. Most of the Defendants settled with MTPC and dismissed their cases. 

On August 17, 2017, JPI and on August 21, 2017, MTPC received a letter from Prinston’s counsel stating that they had submitted an application to the FDA seeking approval to market 100 mg and 300 mg INVOKANA® drug product before the expiration of the ’202 patent (Abbreviated New Drug Application No. 210514). Prinston also registered his firm as a wholesaler in the state of New Jersey to sell the INVOKANA® drug product.

On September 21, 2017, MTPC filed a patent infringement suit (3:17-cv-07342) against Prinston Pharmaceuticals, Inc. for infringing claims 1 and 3-5 of the ’202 patent. On March 05, 2018, the Magistrate Judge Douglas E. Arpert ordered to consolidate other MTPC cases (17-5005, 17-5135, 17-5278, 17-5302, 17-7342, 17-13130 and 18-292) under the case number 17-5005 for the case management and discovery purposes. 

After the case discovery, Prinston admitted that the asserted claims of the ‘202 patent were valid and enforceable.  They also admitted that its submission of an application to the FDA for approval before the expiration of the ‘202 patent was technically an act of infringement. Both the parties agreed to settle this case and hence they requested that the judge enter judgment for the case. After thorough analysis Judge Peter G. Sheridan entered the merits in favor of JPI and MTPC and against Prinston, waiving all rights to appeal. Further the Judge ordered a permanent injunction against Prinston and its affiliates from manufacturing the infringed diabetic medicine.        

Technical LED Intellectual Property Sues Aluratek, Inc. to Pay Damages in Patent Infringement Battle (8:19-cv-01207)

The plaintiff, Technical LED Intellectual Property, LLC, is a Delaware based Non-Practicing Entity (NPE).  The defendant, Aluratek, Inc., is a manufacturer of consumer electronics, communications and computing products, and maintains its principal state of business in California.

The plaintiff alleges that the defendant had directly or indirectly infringed claims 10 to 14 of its reissued patent, U.S. RE41,685, by manufacturing and selling the smart LED product ECHO4LILFE, including LED lighting assemblies.

The ’685 patent and it’s the reissued patent of U.S. Patent No. 6,666,567 titled “Methods and apparatus for a light source with a raised LED structure” issued on September 14, 2010 was previously owned by Honeywell International Inc.  

On May 4, 2015, Cree, Inc., a manufacturer and marketer of lighting-class LEDs, lighting products and products for power and radio frequency applications, filed a petition (IPR2015-01055) for inter partes review against the Honeywell’s ‘685 patent (claims 10-14). Before the PTAB board decided on the merits, Cree and Honeywell submitted a joint motion to dismiss the case with prejudice, as both parties came to a settlement agreement on October 27, 2015. On April 24, 2017, Honeywell transferred its patent rights to Technical LED Intellectual Property. 

Technical LED Intellectual Property had filed more than 20 patent infringement cases against numerous consumer electronics companies like Le power Electronics International Corp., TP-Link North America, Inc., Anker Innovations, Ltd., Nora Lighting, Inc., Feit Electric Company, Inc., etc., for infringing LED lighting assemblies. Interestingly, all of these cases were dismissed voluntarily by the Plaintiff.  Will this case turn out to be an interesting outcome?

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