Fitzpatrick Cella Announces Win in Trusopt Patent-Infringement Case

Fitzpatrick Cella Wins Appeal on behalf of Merck & Co. in Trusopt® Patent-Infringement Case
April 2, 2007

For Immediate Release

Rosemarie Yu / Aaron Virola
212-642-7781 / 212-704-8237

Fitzpatrick Cella Wins Appeal on behalf of Merck & Co. in Trusopt Patent-Infringement Case

NEW YORK, April 2, 2007 – Leading intellectual property law firm Fitzpatrick, Cella, Harper & Scinto announced that it won an appeal on behalf of client Merck against generic patent challenges by Hi-Tech Pharmacal Co. in a case involving glaucoma eye drug Trusopt® (dorzolamide HCl opthalmic solution).

The U.S. Court of Appeals for the Federal Circuit held that a patent term extension under 35 U.S.C. §156 may be applied to a patent that is subject to a terminal disclaimer. Hi-Tech had argued that Merck’s patent on Trusopt® expired in 2004 because a patent term extension on the patent was invalid.

A Merck loss would have had drastic effects on pharmaceutical companies and patent owners, since the Patent Office has routinely granted patent term extensions on patents that are subject to a terminal disclaimer. Brand-name drug companies could have lost years of patent protection on some of their best-selling drugs if the Federal Circuit had decided that a terminal disclaimer precludes a patent term extension.

Fitzpatrick, Cella attorneys representing Merck are Robert Baechtold and Paul Maier. The case was appealed from U.S. District Court for the District of New Jersey.

Fitzpatrick, Cella, Harper & Scinto, founded in 1971, is an intellectual property law firm of approximately 140 lawyers with offices in New York, Costa Mesa, California and Washington, D.C. The Firm’s practice covers the spectrum of intellectual property services, including applying for patent and trademark protection, litigation, appeals, interferences, alternative dispute resolution, licensing, opinions, corporate transactions and due diligence. Fitzpatrick represents an international client base from Fortune 500 companies to start-up companies.