Biogen to Pay Forward $1.25 Billion in Settlement
Forward Pharma A/S (“Forward”) recently announced that a necessary super majority of its shareholders have approved a settlement of various patent disputes with two wholly-owned subsidiaries of Biogen Inc. (“Biogen”) in which Forward will receive USD $1.25 billion cash from Biogen. 77% of the voting shareholders voted in favor of accepting the settlement agreement.
Founded in 2005, Forward, a Danish biopharmaceutical company, develops pharmaceutical treatments for patients with neurological conditions such as multiple sclerosis. The company reports that it is currently conducting Phase 1 clinical trials for its formulation of dimethyl fumarate (DMF).
Boston, Massachusetts-based Biogen, founded in 1978, is also a biopharmaceutical company specializing in treatments for multiple sclerosis and other neurological conditions and rare genetic disorders. Biogen developed and now markets an oral multiple sclerosis medication (a DMF therapy) under the trade name TECFIDERA™ for which FDA approval was obtained in early 2013.
Forward and Biogen have been engaged in patent disputes before tribunals in the US and Europe since at least 2014. As exemplified by its suit for patent infringement brought in Germany, Forward alleges that Biogen infringes certain of Forward’s patents relating to oral DMF therapies for the treatment of multiple sclerosis. Forward has also brought an interference proceeding (seeking priority over Biogen’s patent to DMF therapy) in the U.S. Patent and Trademark Office (“USPTO”), and multiple opposition proceedings in the European Patent Office (“EPO”). Under the terms of the settlement agreement, one of the EPO oppositions and the patent infringement suit will be terminated, but the USPTO interference proceeding and the other EPO opposition will be allowed to continue to a final determination of patentability (appeals included).
In addition to the up-front cash payment it agreed to pay Forward, Biogen will pay royalties (10–20%) on U.S. and non-U.S. sales of its orally administered DMF products, but only if Forward successfully obtains patent rights covering those treatment methods as a result of the USPTO and EPO proceedings referenced above.
Cynosure Announces Settlement of Patent Infringement Lawsuits Against Tria Beauty
(Dec. 20, 2013) Cynosure, Inc., which according to its website develops and markets laser- and light-based aesthetic treatment systems for high-volume applications, announced that it will receive $10 million plus future royalty payments under a settlement agreement with Tria Beauty, Inc. The settlement ends the patent infringement litigation between Tria and Palomar Medical Technologies, which Cynosure acquired in June 2013. According to the press release, the settlement includes two non-exclusive patent license agreements between Cynosure and Tria. The first agreement reportedly grants Tria non-exclusive, worldwide licenses to U.S. Patent Nos. 5,735,844, titled “Hair Removal using Optical Pulses,” and 5,595,568, titled “Permanent Hair Removal using Optical Pulses,” and their foreign counterparts. The second agreement reportedly grants Tria non-exclusive, worldwide licenses to U.S. Patent Nos. 8,182,473, 8,328,794, and 8,328,796, for consumer hair removal products. The press release states:
“This agreement resolves the litigation involving certain Palomar patents, eliminating potential future legal expense to enforce those patents,” said Michael R. Davin, Cynosure’s President and CEO. “Equally important, the settlement fully values our intellectual property rights by fairly compensating Cynosure and its shareholders for sales of products based on our proprietary hair-removal technology.”
According to its website, Cynosure is based in Westford, Massachusetts.
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