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Carlson Caspers claimed a series of victories at both the district court and Federal Circuit to pave the way for Teva to begin selling generic forms of the multi-billion dollar product OxyContin®. Purdue held a large and growing portfolio of patents covering the active ingredient and formulation of OxyContin®. Three of these patents were directed to oxycodone having low levels of an unwanted impurity, called the “Low ABUK” patents, while two of these patents were directed to formulations having tamper-resistant properties, namely, crush resistance and gelling. Following a bench trial, Judge Stein of the Southern District of New York held that the Low ABUK patents were invalid as obvious, the crush resistance patent was invalid as both anticipated and obvious, and the gelling patent was invalid for indefiniteness. With respect to the crush resistance patent, Carlson Caspers convinced Judge Stein that a prior art patent taught formulations that inherently conferred the claimed crush resistance. (This verdict had implications extending beyond OxyContin®, as the crush-resistance patent was listed in the Orange Book as covering additional products, such as Opana ER®.) With respect to the gelling patent, Judge Stein concluded that the claims were so ambiguous that they failed to satisfy the now abandoned “insolubly ambiguous” indefiniteness standard.
In the wake of this win, Carlson Caspers led the efforts in a second trial involving another patent listed in the Orange Book for OxyContin®. This patent was directed to oxycodone dosage forms that yield solutions having high viscosities when dissolved in water in order to prevent illicit injection. Carlson Caspers convinced Judge Stein that these claims were invalid as obvious, and that one of the asserted claims was also invalid for indefiniteness. In reaching his decision, Judge Stein credited significant testimony elicited by direct examinations performed by Carlson Caspers, as well as admissions secured by Carlson Caspers during cross-examination of Plaintiffs’ marquee validity witness.
Purdue appealed the invalidity judgments of the Low ABUK patents and the crush resistance patent to the Federal Circuit. Carlson Caspers defeated these efforts. The Federal Circuit affirmed the court’s judgment of anticipation of the crush resistance patent, finding that while McGinity did not discuss the breaking strength of the tablets, Teva’s expert offered “experimental results [that] indicate[d] unanimously, reliably, clearly, and convincingly that any tablet made according to the McGinity Application would exhibit this characteristic.” The court considered this experimental evidence “pivotal” to Teva’s inherency defense. Purdue’s efforts to challenge these decisions on rehearing en banc were denied.
Purdue had yet more patents covering its products, but these victories enabled Teva to land a settlement agreement permitting it to sell generic versions of OxyContin®.
In September 2015, Carlson Caspers won an important victory for its client, Exmark Manufacturing Co., a Beatrice, Nebraska-based division of The Toro Company, a global provider of outdoor solutions and equipment headquartered in Bloomington, Minnesota. In what has been reported as one of the largest awards in Nebraska history, a jury in the United States District Court in Omaha awarded Exmark more than $24.2 million, determining that Briggs & Stratton had willfully infringed on Exmark’s patent directed to an improved commercial lawn mower. After post-trial hearings and argument, Senior United States District Judge Joseph F. Bataillon, in May of 2016, has doubled the jury’s award in light of the willful nature of Briggs & Stratton’s infringement. Judge Bataillon further awarded Exmark prejudgment and post judgment interest, as well as the costs associated with the lawsuit. Significantly, he also denied a series of post-trial motions filed by Briggs & Stratton, including a request for a new trial. In total, Carlson Caspers secured a final judgment for Exmark of more than $50 million. Carlson Caspers worked closely with Exmark’s in-house counsel to prepare the case, present the case at trial, and argue post-trial motions. The Carlson Caspers team was led by Derek Vandenburgh and included Joe Winkels and Alex Rinn.
Phil Caspers, Sam Hamer and Joe Winkels scored a $75 million win for ADC Telecommunications, Inc. Following the dot-com bubble, ADC divested its data transport business unit, but retained the patent assets. Looking to monetize those assets, Mike Ouyang of ADC contacted Phil Caspers to assess the value of a 10-year-old, pending application related to the divested business unit. After some investigation, the team concluded that the application (filed in 1995) may be relevant to the developing 4G wireless standards that incorporate OFDM. Caspers and Hamer developed a long-term strategy for maximizing the value of the pending application, without litigation. That strategy included relentless due diligence into emerging wireless technology and standards and aggressive use of often overlooked Patent Office procedures (including more than 50 accelerated filings and reissue applications) to perfect a broad portfolio of patent rights covering multiple fundamental features of the emerging wireless standards. The team also developed and implemented a world-wide marketing plan to demonstrate to the industry the value of the portfolio and sell it. That long-term strategy paid off. In April of 2011, the team negotiated the sale of the patent portfolio for $75 million to HTC Corporation. The team’s work did not stop there. Following the transaction, Caspers and Hamer assisted HTC in understanding and developing an enforcement strategy for the portfolio, and in an ITC action against Apple, the team provided assistance to HTC’s counsel representing key third party witnesses and defending prosecution counsel in trial depositions, ultimately scoring a successful result against Apple.
For the past several years, Carlson Caspers has represented one of the largest agribusinesses companies in the world, DuPont Pioneer®. Although much of the firm’s work on behalf of DuPont Pioneer® involves confidential information, one public example of its representation is in its 2013 negotiation with Monsanto Company over the genetically modified trait known as Roundup Ready 2, one of the largest patent licensing agreements ever struck. Brian Hayes and Sam Lockner of Carlson Caspers assisted DuPont Pioneer in the complex negotiations on this matter, which resulted in DuPont Pioneer gaining broad, royalty-bearing licenses to Monsanto’s new technology, and being allowed to stack multiple traits in the same product. Both companies also agreed to dismiss all existing antitrust and patent infringement actions against each other with respect to their technology for genetically modified seeds.