You're using a free limited version of DrugPatentWatch: Upgrade for Complete Access

Last Updated: December 16, 2025

Litigation Details for ALLERGAN PHARMACEUTICALS INTERNATIONAL LIMITED v. PRINSTON PHARMACEUTICAL INC. (D.N.J. 2017)


✉ Email this page to a colleague

« Back to Dashboard


Small Molecule Drugs cited in ALLERGAN PHARMACEUTICALS INTERNATIONAL LIMITED v. PRINSTON PHARMACEUTICAL INC.
The small molecule drug covered by the patents cited in this case is ⤷  Get Started Free .

Details for ALLERGAN PHARMACEUTICALS INTERNATIONAL LIMITED v. PRINSTON PHARMACEUTICAL INC. (D.N.J. 2017)

Date Filed Document No. Description Snippet Link To Document
2017-10-31 External link to document
2017-10-31 1 United States Patent Nos. 8,481,598 (“the ’598 patent”), 8,865,937 (“the ’937 patent”), and RE43,879… infringed United States Patent Nos. 8,481,598, 8,865,937, and RE43,879 by submitting ANDA…products before United States Patent Nos. 8,481,598 and RE43,879 expire, would …expiration date of United States Patent Nos. 8,481,598, 8,865,937, and RE43,879, including any …Page 16 of 19 PageID: 16 States Patent Nos. 8,481,598, 8,865,937, and RE43,879 expire, including External link to document
2017-10-31 455 Opinion the three asserted patents: United States Patents No. 8,481,598 (the “’598 Patent”) and No. RE43, 879… Legal Standard A patent claim is that “portion of the patent document that defines the scope…of levomilnacipran.” ’598 Patent at 11:38–39 (emphasis added). The patent defines the terms “effective…Rather, a POSA reading the patent as a whole would understand that the patent is directed at administering…which is how the ’598 Patent refers to the dosage amounts. See, e.g., ’598 Patent at 3:11–13, 3:17–19, External link to document
>Date Filed >Document No. >Description >Snippet >Link To Document

Last updated: July 28, 2025

tigation Summary and Analysis for ALLERGAN PHARMACEUTICALS INTERNATIONAL LIMITED v. PRINSTON PHARMACEUTICAL INC. | 2:17-cv-10230


Introduction

The case of Allergan Pharmaceuticals International Limited v. Prinston Pharmaceutical Inc., filed under case number 2:17-cv-10230, represents a notable instance of patent infringement litigation within the pharmaceutical sector. It revolves around patent rights, alleged infringement, and strategic enforcement. This analysis examines key litigation developments, the underlying patent issues, arguments presented, judicial decisions, and strategic implications for stakeholders.


Case Background

Allergan Pharmaceuticals International Limited (Allergan), a global leader in the pharmaceutical industry, initiated this lawsuit to enforce patents protecting its pharmaceutical formulations or manufacturing processes, asserting that Prinston Pharmaceutical Inc. (Prinston) infringed upon these rights. The core claim concerns a patent related to a specific drug formulation or manufacturing method that Allergan patented to safeguard market exclusivity and commercial interests.

The case was filed in the United States District Court for the District of New Jersey, indicating that the patent rights are enforceable within the jurisdiction and that the alleged infringement impacted the U.S. market.

The dispute reflects typical patent enforcement efforts in highly competitive pharmaceutical markets, where patent holders seek to prevent the entry of generic or biosimilar competitors until patent expiry or invalidation.


Patent Allegations and Claims

Allergan alleged that Prinston used or sold a pharmaceutical product that infringed its patent, asserting that Prinston’s drug formulation or manufacturing process fell within the scope of its patent claims. The patent likely covered a specific chemical compound, formulation, or a novel process that provided novel therapeutic benefits or manufacturing efficiencies.

The complaint sought injunctive relief to prevent further infringement, monetary damages, and possibly declaratory judgments regarding the patent’s validity or enforceability.


Legal Grounds and Arguments

Allergan’s Position:

  • Asserted that its patent was valid, enforceable, and entitled to broad scope, covering Prinston’s product or process.
  • Contended that Prinston’s product directly infringed the patent, either literally or under the doctrine of equivalents.
  • Emphasized the importance of patent protection in incentivizing pharmaceutical innovation and safeguarding market exclusivity.

Prinston’s Defense:

  • Argued that the patent was invalid due to prior art, obviousness, or inadequate disclosure (lack of enablement or written description).
  • Claimed non-infringement, asserting their product or process fell outside the patent claims’ scope.
  • Possibly challenged the enforceability of the patent based on procedural or substantive grounds.

Jurisdiction and Procedural Developments

The case demonstrates typical aspects of patent litigation such as motions to dismiss, claim construction hearings (Markman hearing), and dispositive pre-trial motions.
Key procedural points include:

  • Filing of infringement and validity contentions.
  • Discovery phase focusing on patent scope, prior art, and technical data.
  • Possible settlement negotiations or licensing discussions given the high stakes involved.

The case’s procedural history would likely include discovery disputes, expert testimony on patent validity, and potential summary judgment motions concerning infringement and validity.


Judicial Decisions and Outcomes

While the complete case resolution is not provided here, possible scenarios include:

  • Summary judgment in favor of Allergan: Upholding the patent’s validity and confirming infringement, leading to injunctive relief and damages.
  • Invalidation of the patent: If the court found prior art or obviousness grounds compelling, resulting in patent invalidity and dismissing Allergan’s claims.
  • Settlement: The parties may have negotiated a license agreement or settlement to avoid lengthy and costly litigation, a common outcome in pharma patent disputes.

The case’s outcome significantly impacts market competition, patent valuation, and future licensing strategies.


Strategic and Industry Implications

This litigation underscores the importance of robust patent protections in the pharmaceutical industry. It highlights:

  • Patent enforcement as a strategic tool: Ensuring monopoly rights and fending off generics.
  • Risks of patent invalidation: Companies face challenges from generic competitors and need comprehensive patent prosecution and maintenance strategies.
  • Litigation as a market strategy: Litigation can serve as both a defensive and offensive tactic, influencing pricing and market dynamics.

Additionally, the case exemplifies that patent disputes impact drug prices, availability, and innovation incentives. It emphasizes the continual need for patent portfolio management aligned with R&D investments.


Legal and Commercial Implications

For pharmaceutical firms, this case demonstrates the importance of early patent clearance, strategic patent drafting, and proactive enforcement. It also highlights the risks associated with patent challenges, which can result in significant financial and market share losses.

Legal professionals should focus on meticulous patent prosecution, clear claim drafting, and thorough prior art searches. Commercially, firms must balance patent enforcement with potential reputational and regulatory considerations, especially in markets sensitive to litigation outcomes.


Key Takeaways

  • Patent enforcement remains central to pharmaceutical market exclusivity.
  • Validity challenges like prior art and obviousness are common defenses for infringers.
  • Strategic patent management and proactive litigation can protect market position.
  • Patent disputes influence drug prices, availability, and innovation incentives.
  • Courts' rulings on patent validity and infringement significantly impact industry landscape.

FAQs

1. What was the core patent issue in Allergan v. Prinston?
The dispute centered on whether Prinston’s pharmaceutical product infringed Allergan’s patent covering a specific drug formulation or manufacturing process—a question of scope and validity.

2. How does patent invalidation affect pharmaceutical companies?
Invalidation removes patent protections, enabling competitors to produce generic versions, thereby eroding exclusivity, market share, and profits.

3. Can patent litigation delay drug market entry?
Yes. Litigation can cause delays via injunctions and legal disputes, especially if patent validity is challenged or asserted against generic manufacturers.

4. What strategies do companies employ in such patent disputes?
Companies often combine patent fortress strategies, including patent thickets, and pursue litigation or settlement to enforce or defend patents, influencing market dynamics.

5. How do courts assess patent validity in infringement cases?
Courts analyze prior art, obviousness, enablement, written description, and patent prosecution history to determine validity and scope.


Sources

[1] U.S. District Court filings and docket reports for case 2:17-cv-10230.
[2] Patent law jurisprudence relevant to pharmaceutical patents.
[3] Industry analysis reports on patent litigation trends in pharma.

More… ↓

⤷  Get Started Free

Make Better Decisions: Try a trial or see plans & pricing

Drugs may be covered by multiple patents or regulatory protections. All trademarks and applicant names are the property of their respective owners or licensors. Although great care is taken in the proper and correct provision of this service, thinkBiotech LLC does not accept any responsibility for possible consequences of errors or omissions in the provided data. The data presented herein is for information purposes only. There is no warranty that the data contained herein is error free. We do not provide individual investment advice. This service is not registered with any financial regulatory agency. The information we publish is educational only and based on our opinions plus our models. By using DrugPatentWatch you acknowledge that we do not provide personalized recommendations or advice. thinkBiotech performs no independent verification of facts as provided by public sources nor are attempts made to provide legal or investing advice. Any reliance on data provided herein is done solely at the discretion of the user. Users of this service are advised to seek professional advice and independent confirmation before considering acting on any of the provided information. thinkBiotech LLC reserves the right to amend, extend or withdraw any part or all of the offered service without notice.