King Pharmaceuticals prevails in Federal Circuit appeal against Eon Labs
Clients King Pharmaceuticals, Inc.
Jones Day attorneys prevailed on behalf of client King Pharmaceuticals, Inc. in an appeal before the U.S. Court of Appeals for the Federal Circuit. King owned two patents relating to methods of using its drug Skelaxin® to treat patients suffering from musculoskeletal conditions. Eon had argued that it was entitled to recover its attorneys' fees because the patentee had allegedly committed inequitable conduct during prosecution of the patents-in-suit. Judge David Trager of the U.S. District Court for the Eastern District of New York previously ruled in King's favor, finding that Eon failed to meet its burden of proof with respect to both the materiality and intent prongs of inequitable conduct. Eon appealed.
The Federal Circuit held oral argument on August 4, 2011. Eight days later, on August 12, 2011, the Federal Circuit affirmed Judge Trager's ruling. The case was notable in that after completion of briefing on appeal but prior to oral argument, the Federal Circuit issued its landmark ruling in Therasense, Inc. v. Becton, Dickinson & Co., ___ F.3d ____, 2011 WL 2028255 (Fed. Cir. May 25, 2011) (en banc), which significantly altered the standards for proving inequitable conduct. King v. Eon was thus one of the first cases requiring the Federal Circuit to apply the new standards set forth in Therasense. Judges Randall Rader, Pauline Newman and Jimmie V. Reyna sat on the panel for the Federal Circuit.
Pharmaceutical group co-head Nick Cerrito argued for King before the Federal Circuit. With him on the briefing was partner Dan Malone, who led the briefing on appeal before unexpectedly passing away shortly before oral argument, and partners Eric Stops and Evangeline Shih and associate Dan Wiesner, all of New York.
King Pharmaceuticals, Inc. et al. v. Eon Labs, Inc., Appeal No. 2011-1070 (Fed. Cir. Aug. 12, 2011)