A lawsuit was filed last Thursday in the District of Nevada by Pacira Pharmaceuticals, Inc. Pacira sued the Research Development Foundation, or RDF, for declaratory relief regarding royalties that had been disputed between the two parties.
Pacira currently produces a drug known as EXPAREL, which is described as the “first single-dose local anesthetic administered at the time of surgery to control pain and reduce or eliminate the use of opioids for postoperative pain. acute surgery.
The complaint explained that in early 1994, the plaintiff and the defendant entered into an agreement that RDF would provide the plaintiff with certain experimental technologies and intellectual property so that they could continue manufacturing and marketing their products. In return, Pacira would pay royalties to RDF. EXPAREL did not exist in 1994, Pacira only had to pay royalties on its cytotoxic cancer drug, DepoCyt.
In 2004, Pacira and RDF settled a dispute that arose over the 1994 agreement. The amendment clarified the terms of the 1994 agreement, requiring Pacira to pay royalties on “products incorporating particularly defined inventions that are claimed in certain patents or patent applications so long as such particular patents or patent applications have not expired”.
When the patents protecting EXPAREL expired on December 24, 2021, Pacira argued that they no longer had any obligation to RDF under the 1994 agreement and its subsequent amendment in 2004, all of which detail that royalties will not be due. only when the patents have not expired. . However, the defendant asserts that Pacira will continue to owe EXPAREL royalties after the patents expire.
The complaint seeks a favorable judgment that Pacira no longer owes royalties and that the terms of the agreements are unenforceable. Pacira further seeks reimbursement of all royalties they pay subject and any other relief the Court deems just. Pacira is represented by Pisanelli Bice PLLC.