Kyle Musgrove

Practices

Industries

Education and Clerkships

J.D., University of North Carolina at Chapel Hill, 1995, with honors; Order of the Coif; Holderness Moot Court Bench; Journal of International Law and Commercial Regulation

Chemical Engineer, B.S., Tulane University, 1992, Omega Chi Epsilon Honor Society

Bar Admissions

District of Columbia

New York

U.S. Patent and Trademark Office

Court Admissions

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the District of Columbia

Profile

C. Kyle Musgrove is a patent trial and appellate lawyer. While he is experienced in many types of patent litigation, his primary goal is helping generic pharmaceutical companies navigate the patent litigation process and bring their products to market.

Thus, for most of his nearly twenty years in practice, Kyle has focused on patent litigation under the Hatch-Waxman Act, particularly in the United States District Courts of both Delaware and New Jersey. A number of his cases have involved drug products with sales exceeding $1 billion per year. Despite the high stakes, Kyle has successfully obtained judgments invalidating and/or holding non-infringed the asserted claims of patents alleged to cover those products. In some instances, his strategic approach to litigation has facilitated favorable settlements for his clients while avoiding the uncertainties and expense associated with protracted litigation.

Perhaps most significantly, however, clients appreciate Kyle’s understanding that the ultimate goal of any engagement is to aid his clients in the pursuit of their business interests. Litigation is often part of that process, but, ultimately, litigation needs to be considered as merely a component of the process. And, as such, Kyle crafts the litigation strategy in close consultation with clients so as to best achieve the client’s business goals.

Given his experience in federal courts across the country, non-pharmaceutical clients also turn to Kyle for assistance with patent cases in other fields. For example, Kyle has litigated cases in a variety of technologies including paper and pulp bleaching, optics, cervical collars, medical devices and imaging, nutritional supplements, and vaccines and other types of biotechnology. Additionally, Kyle has practiced before the United States International Trade Commission and litigated antitrust violations relating to allegations of “sham” litigation brought by patentees.

Kyle also handles appellate proceedings before the United States Court of Appeals for the Federal Circuit. His experience includes briefing and arguing appeals where the underlying district court litigation was handled by other counsel.

Yet further aspects of Kyle's practice include counseling clients regarding possible infringement or invalidity issues and transactional work relating to intellectual property (including negotiating both license and settlement agreements).

Kyle is a frequent author and is often quoted in various media outlets. For example, Kyle previously authored an annually updated chapter relating to the intersection of the patent and antitrust laws for Aspen Publishing. Additionally, LMG Life Sciences has recognized Kyle as a "Life Science Star" every year since inception of the rankings.

Trial Experience

  • GlaxoSmithKline LLC v. Banner Pharmacaps, Inc. (D. Del. 2011) 
  • Alza Corp. and McNeil-PPC, Inc. v. Andrx Pharmaceuticals, LLC and Andrx Corp. (D. Del. 2007)  
  • Pfizer, Inc. v. Synthon Holdings BV, et al. (M.D.N.C. 2006)  
  • SmithKline Beecham Corp. v. Teva Pharmaceuticals USA, Inc. (D.N.J. 2005)  
  • Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline, PLC (E.D. Va. 2002)

Appellate Work

  • Eurand Inc. v. Impax Laboratories, Inc., No. 2012-1280 (Argued) 
  • Alza Corp. and McNeil-PPC, Inc. v. Andrx Pharmaceuticals, LLC and Andrx Corp., No. 2009-1350, 603 F.3d 935 (Fed. Cir. 2010) (Argued) 
  • Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc., 545 F.3d 1312 (Fed. Cir. 2008); earlier opinion reported at 468 F.3d 1366 (Fed. Cir. 2006) (Argued)  
  • On-Line Technologies, Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133 (Fed. Cir. 2004)  
  • Geneva Pharmaceuticals, Inc. and Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline, PLC, 349 F.3d 1373 (Fed. Cir. 2003)  
  • Evans Medical Ltd. v. American Cyanamid Co., 215 F.3d 1347 (Fed. Cir. 1999) (Unpublished)

Selected Client Representations

  • Astrazeneca Pharmaceuticals LP et al. v. Pharmadax USA, Inc. et al (D.N.J. 2014) (Pending)
  • Otsuka Pharmaceutical Co., Ltd. v. Prinston Pharmaceutical Inc. et al (D.N.J. 2014) (Pending)
  • Teijin Limited et al v. Prinston Pharmaceutical Inc. (D. Del. 2014) (Pending)
  • Pfizer, Inc. v. Impax Laboratories, Inc. (D. Del. 2013)
  • Eisai Inc. v. Banner Pharmacaps, Inc. (D. Del. 2011) (Settled favorably)
  • Shionogi Pharma et al v. Impax Labs (D. Del. 2010) (Settled favorably)
  • Abbott Labs. et al. v. Impax Labs. and Elan Pharma et al. v. Impax Labs. (D.N.J. 2009) (Settled favorably)
  • In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation (D. Del. 2009)
  • Pfizer Inc. et al. v. Impax Laboratories, Inc. (D.N.J. 2008) (Settled favorably)
  • Purdue et al. v. Impax Laboratories, Inc. (D. Del. 2008) (Dismissed)
  • Wyeth v. Watson Pharmaceuticals, Inc. and Watson Laboratories, Inc. (D. Del. 2008) (Dismissed)
  • Abbott Laboratories v. Impax Laboratories, Inc., (D. Del. 2007) (Settled favorably)
  • Certain Endodontic Instruments, No. 337-TA-610 (ITC 2007) (Investigation Dismissed)
  • Elan Corp., PLC v. Andrx Pharmaceuticals, Inc. (S.D. Fla. 2005) (Settled favorably)
  • Abbott Laboratories, et al. v. Impax Laboratories, Inc. (D. Del. 2003) (Infringement portion of case dismissed with prejudice; client's antitrust counterclaims settled favorably)
  • On-Line Technologies, Inc. v. Perkin-Elmer Corp., et al. (D. Ct. 1999) (Settled favorably after partial summary judgment of invalidity granted on behalf of client)
  • Alcon Labs. v. Bausch & Lomb (N.D. Tex. 1999) (Settled favorably after preliminary injunction was granted on behalf of client)

Professional and Community Activities

  • Federal Circuit Bar Association 
  • The American Bar Association, Sections on Intellectual Property Law and Litigation 
  • New York State Bar Association 
  • District of Columbia Bar Association

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