Press Release

Haynes and Boone Secures Patent Trial Victory for Prinston Pharmaceutical

June 14, 2017

Haynes and Boone, LLP won a complete victory in New Jersey federal court for client Prinston Pharmaceutical Inc., a generic drug company.

Prinston is seeking to market a generic version of Brisdelle®, a non-hormonal (i.e., non-estrogen based) treatment for hot flashes associated with menopause. Plaintiff Sebela International Limited filed a Hatch-Waxman suit against Prinston and other drug companies, alleging they had infringed patents related to Brisdelle®.

The U.S. District Court for the District of New Jersey held a five-day bench trial last December and allowed additional days of closing arguments in February and March, after post-trial briefing was concluded.

On June 9, the court issued a ruling concluding that one patent claiming a particular solid form of the active ingredient was not infringed and that two other patents were invalid because their claims would have been obvious over what was previously known in the field.  Additionally, the court determined that had it not found the latter two patents obvious, it would have invalidated them on two other, independent grounds.

The trial team from Haynes and Boone’s Washington, D.C., office consisted of Partners Kyle Musgrove and Scott Cunning, Associates Elizabeth Crompton and Yongjin Zhu, and Attorney Scott Benfield.

Haynes and Boone’s Pharmaceutical Practice Group assists clients with proposed generic product patent issues from product development and design through ANDA filing to Hatch-Waxman litigation. Pharmaceutical Practice Group members have both technical and legal experience in pharmaceuticals, nutraceuticals, biotechnology, and chemical manufacturing processes. The team represents a wide array of emerging growth, middle stage and established generic pharmaceutical companies in these industries; its clients are located across the U.S. and Asia, including in such jurisdictions as China, Taiwan, and India.