Capricorn Keeps Zicam® IP Suit Active, But Loses Bid for Inventorship Change
September 01, 2009
Biotech/Pharma Docket
By Suresh Pillai --
patentdocs.org
Capricorn Keeps Zicam® IP Suit Active, But Loses Bid for Inventorship Change
The U.S. District Court for the District of Delaware has ruled that Capricorn Pharma, Inc. can proceed with its suit against Matrixx Initiatives Inc. for allegedly infringing Capricorn's patent covering Zicam®, a cold medication. The patent-in-suit, U.S. Patent No. 6,375,982, covers rapid semi-solid compositions and methods of making such compositions. In its complaint, Capricon alleges that Matrixx infringed the '982 patent following the expiration of a manufacturing agreement between the two companies, under which Capricorn had used its proprietary technology to manufacture RapidMelt® disintegrating tablets that would be sold under the Zicam® brand by Matrixx. At the time, Matrixx had knowledge of the technology, and Capricorn has alleged that Matrixx was bound by non-disclosure terms in the agreement not to disclose this technology. However, after the agreement was executed, Matrixx, through Zicam® LLC, filed two provisional patent applications which, according to Capricorn, contained its proprietary and confidential information.
In the latest action, Matrixx attempted to dismiss Capricorn's claims of breach of contract, specific performance, misappropriation of trade secrets, fraud, and negligent misrepresentation under the reasoning that such claims were time barred under a three-year statute of limitations. Capricorn countered Matrixx's arguments by stating that Matrixx had fraudulently concealed its misappropriation of trade secrets and breach of the manufacturing agreement, thereby negating the application of the statute of limitations. Capricorn also sought to correct inventorship on a pending patent application related to the '982 patent.
Though the District Court sided with Capricorn on the statute of limitations issue, the Court refused to correct inventorship, holding that such changes were under the exclusive control of the U.S. Patent and Trademark Office. |
