Royalty Report: Drugs, Cancer, Software – Collection: 6607

License Grant

In May 2004, the Licensor filed a complaint alleging that we infringement upon their patent related to antivirus software.  In November 2008, the Licensee filed a complaint against the Licensor in the United States District Court for the Northern District of California alleging, among other claims, that the patents are invalid.

License Grant

The Company announced today that it received a ruling from the U.S. District Court in regards to ongoing royalty rates for Phase I of its patent litigation with Plaintiff. As previously announced, Phase 2 surrounding the cervical plates involved in the dispute was settled.

License Property

On August 17, 2012, Plaintiff filed additional patent claims in the U.S. District Court for the Northern District of Indiana alleging that the Company various spinal implants (including its CoRoent® XL family of spinal implants) infringe U.S. Patent No. 8,021,430, and that the Company's Osteocel® Plus bone graft product infringes U.S. Patent No. 5,676,146 C2. On August 28, 2012, Plaintiff amended its complaint in the Northern District of Indiana alleging that NuVasive's XLIF® procedure and use of MaXcess IV retractor during the XLIF procedure infringe methodology claims of U.S. Patent No. 8,251,997.

Field of Use

The CoRoent XL is a family of spinal implants used to replace weakened or damaged intervertebral discs. These discs act as the spine’s shock absorber allowing forces to be distributed evenly during the body’s movements.

And MaXcess instruments provide access to the spine in a manner that affords direct visualization and our nerve monitoring systems assist surgeons in avoiding critical nerves.  Our MaXcess system consists of instrumentation and specialized implants that provide maximum access to the spine with minimal soft tissue disruption. MaXcess has a split blade design consisting of three blades that can be positioned to build the surgical exposure in the shape and size specific to the surgical requirements rather than the fixed tube design of other minimally invasive surgical systems. MaXcess’ split blade design also provides expanded access to the spine, which allows surgeons to perform surgical procedures using instruments that are similar to those used in open procedures but with a significantly smaller incision. The ability to use familiar instruments reduces the learning curve and facilitates the adoption of our products. Our system’s illumination of the operative corridor aids in providing surgeons with direct visualization of the patient’s anatomy, without the need for additional technology or other special equipment.

License Grant

The parties entered into a settlement and License Agreement whereby all claims were resolved and the Company obtained the rights to certain patents in and related to the litigation including rights to U.S. Reissue Patent REI 41,884, as well as all foreign counterparts, all of which expire in 2016.

With the settlement, Licensee will pay Licensor a one-time fee and the Licensor will not receive any additional payments for sales of Abraxane®, or any other nab®-Paclitaxel product in the United States or globally. Licensee will acquire a fully-paid up, exclusive, world-wide license to select Licensor's U.S. and foreign patents for Abraxane®.

License Property

Prior to the settlement, on July 19, 2006, Licensor filed a lawsuit against the predecessor entity of Licensee in the U.S. District Court for the District of Delaware alleging that Licensee willfully infringed two of its patents by making, using and selling the Abraxane® brand drug. Licensor sought unspecified damages and an injunction. In response, Licensee contended that it did not infringe the Licensor patents and that the Licensor patents are invalid and unenforceable. Before trial, Licensor dropped its claim that Licensee infringed one of the two asserted patents. Licensor also dropped its request for an injunction as to the remaining patent. On June 13, 2008, after a trial with respect to the remaining patent, a jury ruled that Licensee had infringed that patent, that Licensee’s infringement was not willful, and that the patent was valid and enforceable.

At issue was Licensee’s alleged infringement of Licensor’s patent for the nanoparticulate formulation of the breast cancer drug Abraxane.

A federal jury in the U.S. District Court for the District of Delaware agreed with that contention, and ordered the Company Licensee to pay an upfront fee and ongoing royalty.

Field of Use

Abraxane® for injectable suspension (paclitaxel protein-bound particles for injectable suspension) (albumin-bound) was approved by the U.S. Food and Drug Administration, or FDA, in January 2005, for the treatment of metastatic breast cancer and, as of December 2010, was approved for marketing in 42 countries.

License Grant

Licensors filed a complaint against Licensee in the U.S. District Court for the Central District of California. The complaint alleged that Yescarta* infringes certain claims of U.S. Patent No. 7,446,190 concerning CAR T cell technologies.

In April 2020, the Court granted in part Licensor’s motion and entered a final judgment awarding royalties on Licensee’s sales of Yescarta* from December 13, 2019 through the expiration of the Patent in August 2024.

License Property

CAR T refers to cell therapy.

Yescarta is a trademark of Licensee.   Yescarta, a CAR T cell therapy, involves (i) harvesting T cells from the patient’s blood, (ii) engineering T cells to express cancer-specific receptors, (iii) increasing the number of engineered T cells and (iv) infusing the functional cancer-specific T cells back into the patient.

Field of Use

Yescarta is cell therapy used in the treatment of cancer.  Licensee is a clinical-stage biopharmaceutical company focused on the development and commercialization of novel cancer immunotherapy products designed to harness the power of a patient’s own immune system to eradicate cancer cells.