A suit was filed last Thursday in the District of Nevada by Pacira Pharmaceuticals, Inc. Pacira filed the complaint against the Research Development Foundation, or RDF, for declaratory judgement regarding royalties that had been disputed between the two parties.
Pacira currently produces a drug known as EXPAREL, which is described as a “first-of-its-kind, single dose local anesthetic administered at the time of surgery to control pain and reduce or eliminate the use of opioids for acute postsurgical pain.”
The complaint explained that in early 1994, the plaintiff and defendant entered into an agreement where RDF would provide the plaintiff with certain experimental technology and intellectual property so that they could pursue the manufacture and commercialization of their products. In return, Pacira would pay royalties to RDF. Since EXPAREL did not exist in 1994, Pacira only had to pay royalties on their cytotoxic anticancer drug, DepoCyt.
In 2004, Pacira and RDF settled a dispute that had arisen in regard to the 1994 agreement. The amendment specified the terms of the 1994 agreement, requiring Pacira to pay royalties on “products embodying particularly defined inventions that are claimed in certain patents or patent application for only as long as those particular patents or patent applications are unexpired.”
When the patents protecting EXPAREL expired on December 24, 2021, Pacira contended that they no longer had any obligation to RDF per the agreement in 1994 and its subsequent amendment in 2004, all of which detail that royalties will be owed only when the patents are unexpired. However, the defendant asserts that Pacira will continue to owe royalalties on EXPAREL after the patents have expired.
The complaint seeks favorable judgement that Pacira does not owe royalties any longer and that the terms of the agreements are unenforceable. Pacira is further seeking a refund of any royalties they pay under protest and any other relief that the Court deems equitable.Pacira is represented by Pisanelli Bice PLLC.
