Last year, we detailed that the U.S. Court of Appeals for the Federal Circuit upheld a trial court decision that three patents held by Purdue Pharma LP couldn’t be enforced because of misrepresentations to the U.S. Patent and Trademark Office about the painkiller’s effectiveness thus giving Endo Pharmaceutical Holdings Inc. the right to sell a generic version. OxyContin, a time-release painkiller generally prescribed to cancer patients and chronic-pain sufferers, had about $2 billion in sales last year.

This was a patent infringement case in which the patents were held unenforceable by the trial court due to inequitable conduct during prosecution before the USPTO. The district court found that Endo would infringe Purdue’s patents, but determined the patents were unenforceable due to the inequitable conduct that occurred during prosecution. Purdue then appealed the inequitable conduct judgment. Purdue Pharma was filed a combined petition for panel rehearing and rehearing en banc.

We then reported that the CAFC granted the panel rehearing and withdrew the previous opinion and issued a new one. The CAFC vacated the trial court’s judgment that the patents-in-suit are unenforceable due to inequitable conduct and remanded the case for further proceedings consistent with this opinion. The trial court’s judgment of infringement was affirmed.

Purdue and Endo have now settled the patent infringement lawsuit between them that was pending in the United States District Court for the Southern District of New York. According to the agreement, Endo will stop selling infringing versions of OxyContin by the end of 2006. In exchange, Purdue Pharma will not pursue damages against Endo for Endo’s past infringement of its OxyContin patents.

On February 1, 2006, the Court of Appeals for the Federal Circuit ruled that Endo’s extended-release oxycodone products infringe the Purdue Pharma patents. In its ruling, the Court also vacated a trial court finding that the Purdue Pharma patents were unenforceable and sent the issue back to the trial court for reconsideration.

Under the terms of the settlement agreement, Endo will no longer dispute that the Purdue Pharma OxyContin patents are valid, enforceable and infringed by Endo’s extended-release oxycodone product. The parties also have agreed to propose to the Court a consent judgment holding that Endo is infringing the Purdue patents and prohibiting Endo from infringing sales after December 31, 2006.

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