MBI claims victory over Nycomed in ultrasound contrast patent battle

U.S. Patent Office rejects key Nycomed patent

The patent position held by Molecular Biosystems in the war over ultrasound contrast technology may have become a little stronger last month. The U.S. Patent and Trademark Office ruled in favor of the San Diego company in rejecting a patent held by Nycomed Amersham of the U.K. for perfluorocarbon-based ultrasound contrast agents.

With the action, Nycomed Amersham joins Sonus Pharmaceuticals of Bothell, WA, among other ultrasound contrast developers whose patents have fallen victim to reexamination claims filed by MBI and its marketing partner, Mallinckrodt of St. Louis. Another ruling could come soon regarding two patents held by ImaRx Pharmaceutical of Tucson.

MBI and Mallinckrodt launched the reexamination petitions last year in response to patent infringement lawsuits filed by their competitors regarding the use of perfluorocarbon material as an ultrasound contrast agent, the core technology at the heart of MBI's Optison product. MBI and Mallinckrodt claim that enough prior art has existed on using perfluorocarbon as a contrast material to make the technology unpatentable (SCAN 10/1/97).

The Patent Office apparently agrees, at least on some counts. The office in June issued a final rejection of the Sonus patents (SCAN 6/24/98), and appeared to reinforce its position with last month's final rejection of Nycomed Amersham's patent no. 5,529,766. Nycomed Amersham tried to put a positive spin on the Patent Office's ruling, pointing out that the agency agreed with the company on some points in the patent. The company will continue to pursue the issue with the agency, and has a meeting with Patent Office officials in the next several weeks, according to Matthew Butler, director of corporate affairs for the Buckinghamshire, U.K., company.

MBI executives, however, believe that the Patent Office's final rejection means that Sonus and Nycomed Amersham must negotiate an appeal process that may take years, according to Thomas Jurgensen, vice president of legal affairs and general counsel for MBI. The ruling has also seriously weakened Nycomed's patent infringement case, as the agency has rejected the patent that Nycomed Amersham claims MBI is infringing, according to Jurgensen.

"It's very difficult for them to successfully proceed in their situation," he said.

Nycomed Amersham does not believe the ruling affects its lawsuit, however, and the company will continue to pursue its patent infringement case against MBI and Mallinckrodt in a U.S. District Court in Washington, DC, Butler said. He emphasized that the patent covered by last month's ruling does not cover technology used in NC100100, a contrast agent that Nycomed is developing. Nycomed has two families of patents pertaining to ultrasound contrast technology, Butler said.

MBI is still debating the legal course it will take in response to the Patent Office action, such as whether it will file a motion to stay or dismiss Nycomed Amersham's patent infringement lawsuit, Jurgensen said. The company believes that last month's ruling will increase the chances that the ultrasound contrast patent battle can be settled without further litigation.

"(The ruling) gives us a business advantage and a chance to work these things out in a businesslike settlement," Jurgensen said.