Notable Successes

Desmarais LLP secured a significant victory for its client, Sun Pharmaceutical Industries Inc., following a final determination in its favor by the U.S. International Trade Commission (ITC) in an investigation involving photodynamic therapy systems and related products. 

The Commission found that Biofrontera’s RhodoLED XL system infringes certain asserted claims of U.S. Patent Nos. 11,446,512 and 11,697,028.  It also rejected Biofrontera’s invalidity defenses, including arguments related to obviousness, written description, enablement, and indefiniteness.

The Commission issued limited exclusion orders and cease-and-desist orders barring the importation and sale of infringing products in the United States. The orders apply to Biofrontera and its affiliated entities and cover certain photodynamic therapy systems, components, and related pharmaceutical products.

The result enforces Sun Pharmaceutical’s patents and prevents infringing products from entering the U.S. market. The Commission also determined that Sun Pharmaceutical satisfied the domestic industry requirement based on substantial U.S.-based research, development, and regulatory investment.

The exclusion order will remain in effect for the remaining term of the asserted patents, subject to the statutory Presidential review period.

“This decision reflects the strength of our client’s intellectual property and the record developed before the Commission,” said Betty Chen, lead trial counsel at Desmarais LLP. “The Commission’s findings across infringement and invalidity reinforce the value of our client’s investments in the United States.” 

The other Desmarais team members representing Sun Pharmaceutical included Tuhin Ganguly, Raymond Habbaz, Paul Macri, and Atifah Safi.

The case is In the Matter of Certain Photodynamic Therapy Systems, Components Thereof, and Pharmaceutical Products Used in Combination with the Same, Investigation No. 337-TA-1411. 
 

Betty Chen

Tuhin Ganguly

Raymond N. Habbaz

Paul Macri

Atifah Safi