Bloomberg BNA's Pharmaceutical Law & Industry Report helps you stay informed of regulatory and litigation developments affecting the pharmaceutical and biotech industries....
Oct. 6 — Drug company Allergan Inc. only owes royalties for sales of Botox to treat migraine headaches in limited, specific ways, the U.S. District Court for the Central District of California ruled Oct. 5 (Miotox LLC v. Allergan, Inc., C.D. Cal., No. 2:14-cv-08723, 10/5/15).
The original licensing agreement between Allergan and Miotox LLC concerned a patent for Botox-based migraine treatment that expired in 2014, at which time Miotox sought to amend the agreement to cover four new Miotox patents and another new patent application, all of which also covered the treatment of migraines with Botox.
The expired patent—U.S. Patent No. 5,714,468—covered the use of Botox to treat migraines broadly, while the newpatents were “much more limited in scope,” the court said.
The language of the agreement only covered “bona fide, unexpired claim[s] in the Licensed Patents for the Licensed Use.”
Miotox argued that the amended agreement included uses of Botox covered by both the expired and new patents, whileAllergan argued that the agreement only covered uses outlined in the new patents. Miotox sued for breach of contract, and Allergan countersued for a declaration that its Botox sales didn't infringe any Miotox patents.
The court said that the language of the licensing agreement was clear in covering only valid patents, and disallowed outside evidence to the contrary from Miotox because the language was unambiguous.
The court called Miotox's arguments “tortured.”
“There is no language in the License Agreement to suggest that the parties intended for Allergan to pay royalties beyond the expiration of the ‘468 patent. As Allergan points out, the opposite is true, as the agreement was limited specifically to uses covered by “bona fide, unexpired” patent claims, the court said.
The court, therefore, said the patent licensing agreement at issue only applied to royalties from Allergan's sales of Botoxfor the limited treatments covered by the new patents, and not the broader treatment covered by the expired ‘468 patent.
Judge Otis D. Wright II wrote the opinion.
Miotox was represented by Deborah E. Fishman, of Kaye Scholer LLP, Palo Alto, Calif. Allergan was represented by Anne Y. Brody, of Gibson Dunn & Crutcher LLP, Irvine, Calif.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)