Federal Court Rules on Ownership of Androxal Patents
Repros Therapeutics Inc. announced Dec. 29 that a federal judge in Texas has issued a definitive ruling finding correct inventorship for two of the company’s Androxal patents, confirming that Repros Therapeutics is the sole and rightful owner of the patents, U.S. Patent No. 7,759,360 (the “‘360 patent”) and U.S. Patent No. 7,737,185 (the “‘185 patent”).
Calling Dr. Harry Fisch’s claims of co-inventorship “strained to the point of absurdity,” Judge Vanessa Gilmore of the U.S. District Court for the Southern District of Texas found that Dr. Fisch “contributed nothing to the actual invention” of the ‘360 patent. She also found “an absence of material facts to support a finding of co-inventorship” of the ‘185 patent.
A release from Repros stated:
Dr. Fisch, a New York urologist and fertility specialist, has made numerous statements, including to the news media, that he was a co-inventor and had contributed to the conception of the patents.
Repros filed suit against Dr. Fisch in August 2013 seeking a declaratory judgment of ownership and inventorship of the ‘360 and ‘185 patents regarding the treatment of hypogonadism in men. In the lawsuit, the Company asserted that Repros’ President and CEO, Joseph S. Podolski, was correctly named as the sole inventor of the ‘360 patent, and that he and Repros Vice President of Research and Development, Ronald Wiehle, were correctly named as co-inventors of the ‘185 patent.
In October 2013, Dr. Fisch filed counterclaims against Repros as well as against Mr. Podolski and Dr. Wiehle, seeking correction of inventorship of these patents.
On the basis of equitable estoppel and an absence of material facts to support a finding of co-inventorship in the case of each of the patents, the court granted both of Repros’ motions for summary judgment and denied Dr. Fisch’s motion for summary judgment.
The decision confirms Repros’ rights to the Androxal patents.
