WASHINGTON, D.C. (May 8, 2013) – International law firm McDermott Will & Emery LLP achieved a complete patent appeal victory before the U.S. Court of Appeals in Washington, D.C. on behalf of Firm client InSite Vision Incorporated (OTCBB: INSV) in two patent interferences brought by The Regents Of The University of California, San Francisco (UCSF). The University had sought to establish its own prior invention -- and InSite's derivation -- of two commercially practiced patents on topical treatment of eye infections with azithromycin.
The panel's majority found substantial evidence in support of the determination by the U.S. Patent and Trademark Office's (PTO) Board of Patent Appeals and Interferences that UCSF failed to meet its burden of proof as to the legal issue of conception. In addition, the majority rejected the assertion that the Board’s decision on conception was tainted by errors in claim construction and the admission of evidence.
“We are pleased that the Federal Circuit has agreed with our consistent position in this case,” said lead McDermott lawyer Joel M. Freed, an Intellectual Property Litigation partner based in Washington, D.C. “This decision validates InSite’s rights in these two commercially practiced patents, which are also linked to InSite’s product pipeline. We want to extend congratulations to our client. This was a great win for our combined teams.”
InSite Vision is an ophthalmic company developing products for unmet eye care needs based on its innovative DuraSite platform technologies. The DuraSite platform is currently leveraged in two commercial products for the treatment of bacterial eye infections, AzaSite® (azithromycin ophthalmic solution) 1%, marketed in the U.S. by Merck, and Besivance® (besifloxacin ophthalmic suspension) 0.6%, marketed by Bausch + Lomb. InSite Vision is also advancing three novel ophthalmic therapeutics through Phase 3 clinical studies: AzaSite Plus™ and DexaSite™ for the treatment of blepharitis, and BromSite™ for pain and inflammation associated with ocular surgery.
The dispute stems from a 2009 claim by UCSF that inventions in two patents were made by a former university employee alone, without collaboration with InSite. The Regents of the University of California had sought to establish its own prior invention of two of InSite’s commercially practiced patents on topical treatment of eye infections with azithromycin. Shortly after its final hearing on November 18, 2011 the PTO Board of Patent Appeals and Interferences entered judgment for InSite and rendered an opinion upholding virtually all technology and legal positions advanced by the McDermott team on InSite’s behalf. The decision on appeal confirms that judgment.
About McDermott Will & Emery
McDermott Will & Emery is a premier international law firm with a diversified business practice. Numbering more than 1,100 lawyers, we have offices in Boston, Brussels, Chicago, Düsseldorf, Frankfurt, Houston, London, Los Angeles, Miami, Milan, Munich, New York, Orange County, Paris, Rome, Seoul, Silicon Valley and Washington, D.C. Further extending our reach into Asia, we have a strategic alliance with MWE China Law Offices in Shanghai.