Recent patent infringement cases filed in the Eastern District of Texas

By Marilyn Tennissen | Apr 29, 2009

Marshall Division

April 24

  • E-Z-EM Inc. et al vs. Mallinckrodt Inc. et al

    Plaintiffs E-Z-EM Inc. and Acist Medical Systems Inc. seek a declaration that U.S. Patent No. 7,512,434 is invalid and that they have not infringed.

    According to the complaint, defendants Mallinckrodt Inc. and Liebel-Flarsheim Co. have previously brought a patent infringement suit against the plaintiffs in the Eastern District of Texas currently pending before Judge T. John Ward.

    This suit is substantially related to the previous suit because it arises from the same occurrences and asserts the same product allegedly infringes another patent owned by L-F, the complaint states.

    The plaintiff states the '434 Patent was issued March 31 to Peter Staats and James E. Knipfer II and was assigned to L-F.

    L-F asserts that Mallinckrodt is the implied exclusive licensee of the '434 Patent.

    On April 4, L-F and Mallinckrodt filed a civil action in the Federal District Court for the District of Delaware against E-Z-EM and Acist Medical alleging infringement of the '434 Patent through their EmpowerMR injectors.

    E-Z-EM and Acist have moved to dismiss the Delaware action based on L-F's and Mallinckrodt's failure to adequately plead a cause of action.

    "Plaintiffs believe that their products do not infringe any claims of the '434 Patent and deny any claim of infringement," the complaint states.

    In addition, plaintiffs "believe that the claims of the '434 Patent are invalid and/or are unenforceable."

    Plaintiffs E-Z-EM and Acist Medical are seeking a declaratory judgment that they are not infringing the patent, that the patent is invalid, award of attorneys' fees and any other just and proper relief.

    Deron R. Dacus and Tracy Crawford of Ramey & Flock in Tyler are representing the plaintiffs, with Philippe Bennett of Alston & Bird LLP in New York, N.Y.

    The case was assigned to Judge T. John Ward and has been referred to Magistrate Judge Charles Everingham for pretrial proceedings.

    Case No. 2:09-cv-124-TJW-CE

  • CFN International LP et al vs. Sevea International Inc. et al

    Plaintiffs CFN International and Elan Global seek a declaratory judgment that defendants do not have any valid ownership interests or rights in the '456 Patent Application.

    They also want the court to declare that they have the exclusive and unfettered right against defendants to make, use or sell the technology for customized artificial finger nail products.

    Seven companies are named as defendants: Sevea International Inc., Flowering Scents LLC, Macris Enterprises LLC, American Equities Management LLC, Artificial Nail Technologies Inc., True Fit Nails LLC and Angels of America LLC.

    Nine individuals have been named as defendants: Michael Macris, Jerry Saxton, Katie Saxton, Christina McNally, Justin Williams, Ron Steffen, Craig P. Gifford, Scott L. Nielson and Staci Gifford.

    A similar suit was filed on April 8 in the Marshall Division by plaintiffs NLS Global LP and VSN Global Inc. against the same defendants (Case No. 2:09-cv-099-TJW).

    The suit states that Dr. Gifford, as sole inventor, was issued U.S. Patent No. 5,968,302 on Oct. 19, 1999, and U.S. Patent No. 6,196,234 on March 6, 2001. The patents were for precision fit fingernails.

    In 2002, Dr. Gifford and Nielson formed True Fit Nails LLC to pursue the artificial nail business, and TFN received an assignment of all rights and ownership of the '302 and '234 patents on Aug. 2, 2003.

    Gifford and Nielson applied for six more patents in 2004 for methods and computer programs to create customized, three-dimensional nails.

    According to the complaint, in June 2005, Dr. Gifford, Nielson and Williams formed Artificial Nail Technologies Inc. and transferred the patents to ANT.

    In September 2005, Gifford and Nielson filed applications for three more patents on technology to make nail mold impressions to create artificial nails.

    ANT formed a joint business venture with Flowering Scents and Macris under a new entity Sevea. The Asset Contribution Agreement included assignment of the '302 and '234 patents along with the nine pending patent applications. ANT was to receive 10 million shares of common stock in Sevea.

    ANT claims that despite the agreement and the contribution of substantially all of its assets, it never received the share or any other type of consideration from Sevea.

    ANT took civil action against Sevea in 2006 in a federal court in Utah, and the judge in that case issued a Writ of Replevin order. Sevea was ordered to return all intellectual property, patents and patents pending to ANT, thereby negating the previous assignments of the '302 and '234 Patents.

    Dr. Gifford and Nielson then assigned the patents to American Equities Management on Aug. 29, 2007. Four months later, the inventors filed U.S. Patent Application No. 11/957,456 for a System and Method for Precision Fit Artificial Fingernails.

    The system utilizes a scanned and digitized nail surface to form a three-dimensional nail object that can then be used to create a nail from blank stock or make a custom mold.

    The plaintiffs point out that at the time of the agreement between ANT and FS, the technology in the '456 Patent Application had not yet been invented.

    The '456 Patent Application was then assigned to plaintiff CFN International on April 3. CFN has since granted an exclusive license to Elan to begin practicing the technology.

    CFN is asking that the court declare it is the owner of the '456 Patent Application, that Elan has the right to make and sell the artificial nails and that neither CFN nor Elan have infringed on the '302 or '234 Patents.

    The plaintiffs also seek attorneys' fees, costs and other just and proper relief.

    Clyde Siebman of Siebman, Reynolds, Burg, Phillips & Smith LLP in Sherman is representing the plaintiffs.

    The case was assigned to U.S. District Judge T. John Ward and has been referred to Magistrate Judge Charles Everingham for pretrial proceedings.

    Case No. 2:09-cv-126-TJW-CE

    Tyler Division

    April 24

  • Pozen Inc. vs. Teva Pharmaceuticals USA Inc.

    According to the complaint, plaintiff Pozen is a specialty pharmaceutical company dedicated to developing therapeutic advancements for diseases with unmet medical needs.

    "Pozen currently specializes in innovative drug products designed to alleviate patient pain and suffering," the complaint states.

    The suit states that defendant Teva is in the business of developing, manufacturing, distributing and selling generic drug products throughout the U.S.

    Pozen claims to own the rights to two U.S. patents for drugs to treat headaches and migraines.

    U.S. Patent No. 6,060,499 was issued May 9, 2000, for an Anti-Migraine Method and Composition Using 5-HT Agonists with Long-Acting NSAIDS.

    U.S. Patent No. 6,586,458 was issued July 1, 2003, for a Method of Treating Headaches Using 5-HT Agonists in Combination with Long-Acting NSAIDS.

    The suit goes on to say that the U.S. Food and Drug Administration approved Pozen's New Drug Application for Treximet, an approved treatment for acute migraine attacks.

    Pozen claims that Teva filed papers with the FDA seeking an Abbreviated New Drug Application to make, use and sell a generic version of Treximet.

    Both drugs are oral tablets containing 85 mg of sumatriptan, present as a succinate, and 500 mg of naproxen sodium.

    On April 14, Pozen received a letter from Teva's senior director of regulatory affairs informing the company that Teva was planning to sell generic Treximet, and alleging that Pozen's '499 and '458 Patents are invalid and unenforceable.

    Pozen however, maintains that Teva's generic product will infringe at least some of the claims contained in the '499 and '458 Patents.

    The plaintiff is seeking a permanent injunction against Teva, costs, expenses and any other relief the court deems just and proper.

    Willem G. Schuurman of Vinson & Elkins LLP in Austin is representing the plaintiff, with attorneys from Ireland Carroll & Kelley PC in Tyler.

    The case has been assigned to U.S. District Judge Leonard E. Davis.

    Case No. 6:09-cv-182-LED

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