BioCentury
ARTICLE | Company News

BioDelivery, MonoSol Rx neurology, drug delivery news

October 22, 2012 7:00 AM UTC

The U.S. Patent and Trademark Office resolved two reexaminations of MonoSol's U.S. Patent Nos. 7,425,292 and 7,357,891, covering its PharmFilm technology for preparing drug-containing films. In February and March, the PTO respectively granted reexamination and rejected all claims in a non-final action for both patents. MonoSol said that in the reexamination certificates, the PTO canceled no claims and noted 33 new claims for the '292 patent and replaced the original nine claims of the '891 patent with 19 new claims. BioDelivery said that the proceedings forced MonoSol to significantly narrow its claims to obtain allowance. BioDelivery believes that the PTO's decision to significantly narrow or reject claims of the patents strengthens BioDelivery's position in surrounding disputes. Reexamination proceedings for a related patent, U.S. Patent No. 7,824,588, are ongoing (see BioCentury, Oct. 31, 2011; Feb. 27, 2012 & March 12, 2012).

In March, U.S. District Court for the District of New Jersey granted BioDelivery's motion to stay proceedings in MonoSol's patent infringement suit against Aveva Drug Delivery Systems Inc. (Miramar, Fla.), BioDelivery and Meda AB (SSE:MEDAA, Solna, Sweden) pending the resolution of the PTO's reexaminations of the three patents at the center of the dispute. MonoSol is alleging that the defendants' manufacture and marketing of Onsolis BEMA fentanyl infringes the '588, '292 and '891 patents. MonoSol filed the suit in 2010 based on the '588 patent and last September added the '292 and '891 patents to the suit (see BioCentury, Dec. 5, 2011 & March 19, 2012). ...