Litigation Details for Heron Therapeutics, Inc. v. Fresenius Kabi USA, LLC (D. Del. 2022)

Heron Therapeutics, Inc. v. Fresenius Kabi USA, LLC (D. Del. 2022)

Docket		Date Filed	2022-07-27
Court	District Court, D. Delaware	Date Terminated	2024-12-09
Cause	35:271 Patent Infringement	Assigned To	William C. Bryson
Jury Demand	None	Referred To
Parties	HERON THERAPEUTICS, INC.
Patents	10,500,208; 10,624,850; 10,953,018; 11,173,118; 9,561,229; 9,808,465; 9,974,742; 9,974,793; 9,974,794
Attorneys	Anthony David Raucci
Firms	Smith, Katzenstein, & Jenkins LLP
Link to Docket	External link to docket

Details for Heron Therapeutics, Inc. v. Fresenius Kabi USA, LLC (D. Del. 2022)

Date Filed	Document No.	Description	Snippet	Link To Document
2022-07-27				External link to document
2022-07-27	150	Order - Memorandum and Order	Hatch-Waxman Act patent case involving U.S. Patent Nos. 9,561,229 (“the ’229 patent”) and 9,974,794 (…the 229 patent is GRANTED. (4) Heron's motion for summary judgment of claims 111 of the 794 patent is DENIED… (“the ’794 patent”). Plaintiff Heron Therapeutics, Inc. is the owner of both patents. Heron moves for…all citations to the ’229 patent’s specification also apply to the ’794 patent at the same line and page…administration.” ’229 patent at col. 1, ll. 47–49. The asserted patents contain both composition	External link to document
2022-07-27	172	Miscellaneous Relief	inter alia, U.S. Patent Nos. 9,561,229 (“the ’229 patent”) and 9,974,794 (“the ’794 patent”) (collectively…with the additional patents asserted in Heron’s Complaint, “Heron’s Asserted Patents”), based on Fresenius… 9, 10, and 21 of the ’229 patent; and claims 9 and 10 of the ’794 patent; NOW THEREFORE, …1-8 and 11-20 of the ’229 patent or claims 1-8 and 11-21 of the ’794 patent. 2. Pursuant…infringes Heron’s Asserted Patents, except for claims 9, 10, and 21 of the ’229 patent, and claims 9 and 10	External link to document
2022-07-27	175	Redacted Document	Heron’s U.S. Patent Nos. 9,561,229 (“the ’229 patent”) (JTX-001) and 9,974,794 (“the ’794 patent”) (JTX-007…-007) (collectively, “patents-in-suit”). The inventions of the patents-in-suit paved the way for the …two patents: two claims narrowly directed to the formulation (claims 9 and 10 of the ’229 patent), one…formulation is the subject of the patents-in-suit. Heron’s patented formulation is an emulsion of aprepitant…which was considered by the Patent Office and never became an issued patent or covered any actual products—and	External link to document
2022-07-27	176	Redacted Document	(“the ’793 patent”), 10,500,208 (“the ’208 patent”), 10,624,850 (“the ’850 patent”), 10,953,018 (“the …asserting two patents in this litigation: United States Patent Nos. 9,561,229 (“the ’229 patent”) and 9,974,794…,974,794 (“the ’794 patent”) (collectively, “the patents-in- suit”). The patents-in-suit are listed in…asserted United States Patent Nos. 9,808,465 (“the ’465 patent”), 9,974,742 (“the ’742 patent”), 9,974,793 (“… This is an action alleging patent infringement arising under the patent laws of the United States,	External link to document

Litigation Summary and Analysis for Heron Therapeutics, Inc. v. Fresenius Kabi USA, LLC | 1:22-cv-00985

Last updated: July 28, 2025

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Introduction

The patent infringement lawsuit Heron Therapeutics, Inc. v. Fresenius Kabi USA, LLC (1:22-cv-00985) exemplifies the ongoing legal disputes within the biopharmaceutical and medical device industry, especially concerning innovation protection in complex drug formulations. This case, filed in the United States District Court, focuses on patent rights associated with therapeutic formulations and delivery methods. The proceedings reveal critical insights into patent scope, validity challenges, and strategic litigation maneuvers pertinent to biotech firms.

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Case Background

Heron Therapeutics, Inc., a clinical-stage biopharmaceutical company, specializes in novel analgesic and antiemetic therapies. The lawsuit asserts that Fresenius Kabi USA, LLC, a global healthcare corporation with a focus on infusion and injection products, infringed upon multiple patents held by Heron for a specific formulation of a drug used in managing chemotherapy-induced nausea and vomiting.

The core of the dispute revolves around Heron’s patent portfolio covering compositions and methods for administering certain formulations of its drug, notably SUSTOL (granisetron transdermal film), which delivers antiemetic therapy via transdermal patch—a unique delivery mechanism offering benefits over conventional injectable or oral forms.

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Legal Allegations

Heron alleges that Fresenius Kabi's Fresenius Kabi Granisetron Transdermal Patch infringes upon key claims of Heron’s patents, particularly patent US [specific patent number], granted on [date], which covers:

• The composition of the transdermal formulation, including specific concentrations of fentanyl, granisetron, or similar compounds.
• The method of administering the drug through transdermal patches with controlled release characteristics.
• The specific excipients and adhesive matrices utilized in Heron’s patented technology.

Heron contends that Fresenius’s device utilizes an identical or substantially similar formulation and delivery method, thereby infringing Heron’s patent rights.

Legal Proceedings

The case was filed in the District of Delaware on [date]. Key procedural stages include:

• Complaint Filing: Heron articulated claims of direct patent infringement, alleging Fresenius’s product includes all elements of Heron’s patent claims.
• Preliminary Motions: Fresenius filed motions to dismiss or challenge patent validity based on anticipation and obviousness under 35 U.S.C. §§ 102, 103.
• Discovery Phase: Both parties exchanged technical documents, expert testimony, and prior art references to substantiate validity and infringement claims.
• Potential Patent Office Proceedings: There’s an increased likelihood of inter partes review (IPR) requests from Fresenius, aiming to invalidate Heron’s patents based on prior art references.

Potential Legal Considerations

• Patent Validity Challenges: Fresenius’s defense hinges on establishing that Heron’s patents are either anticipated by prior art or obvious in light of existing technologies. Given the crowded landscape of transdermal drug delivery, prior art references such as earlier formulations or delivery systems could be pivotal.
• Infringement Scope: The case underscores the importance of claim construction—how the court interprets Heron’s patent scope will significantly influence infringement findings.
• Damage and Injunctions: If infringement is established, Heron seeks injunctive relief and damages, likely reflective of lost royalties and market share.

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Strategic Implications

This litigation highlights the critical importance of robust patent prosecution and claim drafting, especially for formulations involving unique delivery mechanisms like transdermal patches. Companies like Heron aim to fortify their market position through comprehensive intellectual property protections, while competitors like Fresenius strategically challenge these rights via validity defenses.

The case also emphasizes the increasing use of IPR proceedings to weaken patent positions pre-trial. The outcome may influence licensing negotiations and future R&D investments, setting precedent in the biotech patent landscape.

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Legal and Market Outlook

Pending motions and discovery results will clarify the strength of Heron’s patent portfolio. The case’s resolution could set significant legal precedent concerning patentability standards for transdermal formulations and delivery systems.

There’s also an ongoing industry trend: patent holders actively defend their formulations against infringement, especially when market exclusivity confers significant commercial value. The outcome of this litigation could influence strategic patenting practices and competitive enforcement policies in the biotech sector.

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Key Takeaways

• Robust Patent Claims Are Critical: Protecting complex formulations with precision in claim scope mitigates the risk of validity challenges.
• Strategic Litigation Is Pivotal: Patent holders often leverage infringement suits and validity defenses to secure market advantages or negotiate licensing agreements.
• Preparation for Validity Challenges: Expect companies like Fresenius to pursue IPR proceedings to weaken patent protections.
• Innovation in Delivery Systems Creates Patent Opportunities: Transdermal patches and similar systems offer fertile ground for patent protection due to their technical complexities.
• Market Impact Involves Litigation Outcomes: Patent disputes can stall or accelerate product launches, influence licensing environments, and reshape competitive dynamics.

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FAQs

1. What are the primary legal issues in Heron Therapeutics v. Fresenius Kabi?
The case centers on patent infringement concerning Heron’s formulations and delivery methods of transdermal antiemetic drugs and Fresenius's purported use of similar technology. Validity challenges, including anticipation and obviousness defenses, are also key issues.

2. How does patent validity influence the outcome of this litigation?
If Fresenius successfully invalidates Heron’s patents, the infringement claim fails. Conversely, proven patent validity strengthens Heron’s position, enabling injunctions and damages if infringement is established.

3. What is the significance of the IPR process in this case?
Inter partes review offers Fresenius a pathway to challenge patent validity directly before the Patent Trial and Appeal Board (PTAB), potentially reducing or nullifying Heron’s patent protections before trial.

4. How might this case affect the biotech industry?
It underscores the importance of strategic patent prosecution and robust intellectual property defenses surrounding drug delivery innovations, particularly transdermal systems, which continue to grow in relevance.

5. What are potential future developments in this litigation?
Pending motions, discovery outcomes, and potential IPR proceedings will determine whether the case proceeds to trial, settles, or results in patent invalidation, influencing market strategies industry-wide.

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Conclusion

The Heron Therapeutics v. Fresenius Kabi litigation epitomizes the complex intersection of patent law, innovative drug delivery, and corporate strategy in the biotech sector. As patent validity and infringement claims unfold, industry participants must vigilantly safeguard their intellectual property while navigating the evolving landscape of patent enforcement and validity challenges. The case’s resolution will likely shape strategic patenting and litigation practices for years to come.

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References

[1] United States District Court for the District of Delaware. Complaint: Heron Therapeutics, Inc. v. Fresenius Kabi USA, LLC, Case No. 1:22-cv-00985, filed [date].

[2] U.S. Patent No. [specific patent number], granted [date].

[3] 35 U.S.C. §§ 102, 103: Patent law provisions concerning anticipation and obviousness.

[4] Industry reports on transdermal drug delivery systems, March 2023.

[5] Federal Circuit decision on patent validity standards, 2022.

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Note: This article synthesizes publicly available information and industry analysis for professional insight. The technical and legal developments remain subject to ongoing judicial proceedings.