© 2014 The Texas Lawbook.
By Natalie Posgate – (December 30) – 2014 has treated Winn Carter well.
Just over a month ago, Carter won one of the biggest trials of the year when a Houston jury cleared his client, International Paper, in an environmental case that could have cost the company and its co-defendants billions.
And now, he ends the year with a bang with his most recent victory for The Woodlands-based Repros Therapeutics, Inc.
Houston federal judge Vanessa Gilmore ruled last week that the biopharmaceutical company is the sole inventor of two patents related to Androxal, a drug that treats male hypogonadism. Harry Fisch, a New York urologist and fertility specialist, had argued otherwise, claiming that he deserved co-inventorship on the patents.
“If he had been named co-inventor, he would have been able to share any monetization of the patents or the products currently being developed by Repros,” said Carter, a partner in Morgan Lewis’ Houston office. “[That] could have been a significant amount of money.”
Greenberg Traurig’s Mary-Olga Lovett, who led Fisch’s legal team, could not be reached for comment.
The lawsuit surfaced after Fisch made statements to the media and Repros investors about being a co-inventor of the drug and threatened litigation against Repros in 2013.
In 2001, Fisch and company executives at Zonagen, which is now called Repros, briefly entered talks of going into business together to develop an oral treatment for hypogonadism, but Zonagen decided that it was not interested, according to Judge Gilmore’s opinion.
Male hypogonadism is a condition in which the body does not produce enough testosterone.
Fisch, who had a patent on hypogonadism-related medication, argued that Repros had used technology in his patent to obtain its own. Repros argued that the technology used in its own patents was different from Fisch’s, therefore he did not deserve co-inventorship.
Judge Gilmore agreed with Repros.
“Fisch made no significant contribution to the conception of the claimed invention when measured against the dimension of the full invention,” Gilmore wrote in her 34-page definitive ruling. “Fisch contributed nothing to the actual invention of the ‘360 patent, which was the use of transclomiphene as opposed to clomiphene citrate to treat secondary hypogonadism.
“The Patent Office found, and Fisch conceded, that he did not invent the use of clomiphene citrate to treat low testosterone, but only certain disorders related to it,” Gilmore writes on an earlier page. “The ‘360 patent is a purported improvement on existing treatments for low testosterone itself, not merely the related disorders.”
Along with Carter, the Morgan Lewis trial team included New York partner David Clough, Ph.D., who co-led the litigation, as well as Houston partner Craig Stanfield, Houston associates Ryan McBeth and Nicholaus Floyd, and associates from the firm’s Chicago office.
In addition to Lovett, who is based in Houston, the Greenberg Traurig team included Houston shareholder Dwayne Mason, of counsel Ira Hatton and associate Pamela Ferguson; as well as attorneys from the firm’s New York and New Jersey offices.
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