Patent-Infringement Suit over Cold Medication Ends with ‘Close Call’ Ruling on Legal Fees
Case Study

Patent-Infringement Suit over Cold Medication Ends with ‘Close Call’ Ruling on Legal Fees

A federal judge’s October 25, 2019, ruling on whether the plaintiff should pay the legal bills incurred by two defendants in an unsuccessful patent-infringement lawsuit has brought to a close a dispute over the launch of generic cold and congestion medication.

At issue in the intellectual-property dispute was whether respiratory-relief drugs to be manufactured by two generic drug makers, including one represented by Goldberg Segalla partners Ronald M. Daignault and Richard Juang, would infringe patents covering a pharmaceutical company’s name-brand extended-release drug tablet. In its suit against the generic drug makers, the pharmaceutical company alleged that the other companies’ medications were too similar and infringed the patents-at-issue, but, after a four-day bench trial in May 2017, U.S. District Judge Renée Marie Bumb ruled that they did not.

The judge’s August 2017 decision was a complete victory for Ron and Richard, members of the firm’s Pharmaceuticals ANDA Litigation team. Bumb struck down the pharmaceutical company’s contention that even if the generic companies didn’t literally infringe its patents, they should nevertheless be found to infringe because the congestion drugs were equivalent to the brand-name product. The Federal Circuit summarily affirmed Bumb’s decision in September 2019.

Bumb’s subsequent October 2019 ruling that the pharmaceuticals company needn’t reimburse Goldberg Segalla’s client for its legal bills in the case was a “close call,” the judge wrote, warning the company against filing any more suits against generics makers accused of infringing on the same patents. The company’s suit against Goldberg Segalla’s client and the other defendant was the latest in a pattern of such litigation.

“Further bites at the apple through future litigation over the same patents will likely be viewed as unreasonable or abusive by any court, subjecting [the plaintiff] to fees,” Bumb said.


 Goldberg Segalla’s Pharmaceuticals ANDA (Abbreviated New Drug Application) Litigation team brings together highly accomplished attorneys with broad and interdisciplinary technical and scientific training as well as decades of high-stakes patent litigation experience. The team’s lawyers serve as trusted advisors to generic pharmaceutical companies and their executives at every stage of pharmaceutical product selection, patent due diligence, litigation, and monetization involving the federal Drug Price Competition and Patent Term Restoration Act (or Hatch-Waxman Act). Goldberg Segalla’s Hatch-Waxman litigation and lead trial experience covers scores of patents and products in jurisdictions across the United States.