July 10, 2019

Drinker Biddle Patent Litigation Team Secures Dismissal for Vital Pharmaceuticals in Federal Patent Infringement Action

A Drinker Biddle patent litigation trial team, led by partner Frank DiGiovanni and including partner Geoffrey Zelley and counsels Hui-Ju Wu and M. Curt Lambert, obtained dismissal without prejudice from the U.S. District Court, Southern District of Florida, of a three-year-long patent infringement suit against client Vital Pharmaceuticals, Inc.

In the lawsuit, filed on March 31, 2016, plaintiffs Werteks (a Russian pharmaceutical company and the owner of U.S. Patent No. 8,350,077) and ThermoLife International (Arizona-based licensee of the patent) sued Vital Pharmaceuticals for patent infringement in connection with Vital’s “Bang Master Blaster” dietary supplement product.

In March 2019, the court dismissed Werteks’ claims because the company's counsel withdrew and Werteks did not retain new counsel.

The Drinker Biddle trial team immediately moved to dismiss the case on Vital’s behalf, arguing that, by itself, ThermoLife was not a “patentee” under 35 U.S.C. Sec. 281 because it did not have “all substantial rights” in the patent due to the nature of the Werteks–ThermoLife license agreement. The agreement was a “field of use” license, under which Werteks retained certain rights.

ThermoLife opposed the motion, arguing, among other things, that the “field of use” restriction of the license agreement was “illusory.” The trial team refuted ThermoLife’s argument with a number of examples from prior art patents, public documents, and even the patent itself.

On July 9, 2019, U.S. District Judge William P. Dimitrouleas ruled in Vital’s favor, dismissing the case without prejudice and holding that ThermoLife did not have “all substantial rights” in the patent and thus could not maintain the litigation by itself as a plaintiff.

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