District of Massachusetts IP Blog

Affirmative Defenses Sent To Arbitration

Abbott is accusing Centocor of infringing several patents related to drugs used to treat reheumatoid arthritis.  (Another case between the parties involves drugs used to treat psoriasis.)  Abbott moved for judgment on the pleadings / summary judgment on a number of Centocor’s affirmative defenses.  Defenses for express license and implied license were removed due to an intervening arbitrator’s decision (and Centocor’s agreement that such defenses could not be raised).  The defense of equitable estoppel was referred to arbitration by Judge Saylor in view of a previous agreement between the parties. 

Abbott Biotechnology Ltd. v. Centocor Ortho Biotech, Inc., 09-40089-FDS (D. Mass. Oct. 3, 2011)

Arbitration Ordered Three Years Into Infringement Suit

AsymmetRx and Biocare had been involved in a patent suit for several years which went up on appeal.  There, the Federal Circuit determined that Harvard, the owner of the rights asserted by licensee AsymmetRx, was a necessary party.  Once Harvard got involved it invoked an arbitration clause of the license agreement and moved to compel arbitration. 

Biocare opposed the motion, arguing that the case had been going for years and Harvard shouldn’t have waited so long.  Harvard responded that it wasn’t a party until the Federal Circuit decided that it needed to be.  Judge Stearns sided with Harvard, noting: 

Under the circumstances, I would be hard pressed to conclude that Harvard was lying in the weeds in order to extract an advantage in an arbitration that no one foresaw. Harvard’s lawyers have a reputation for being smart, but being clairvoyant is something else altogether. 

AsymmetRx, Inc. v. Biocare Medical LLC, 07-11189-RGS (D. Mass. Dec. 3, 2010)