The agreement, in which both sides agree not to sue for patent infringement, calls for Transcend to pay a 1% royalty on sales of its Cy-Pass micro-stent until April 2022, with the total amount capped at $6 million, Glaukos said.
The deal does not cover stents designed to relieve eye pressure by unconventional outlflow pathways, the company said, meaning its iStent Supra suprachoroidal micro-bypass stent is not bound by the covenant.
“We believe this settlement provides an efficient and reasonable solution to this patent dispute,” Glaukos president & CEO Thomas Burns said in prepared remarks. “It allows us to move forward and focus our full attention and resources on executing our growth strategy to transform glaucoma therapy with a family of micro-scale injectable therapies that can be used individually or in combination to address the full range of glaucoma disease states and progression.”
Glaukos allegedly left Dr. Richard Hill’s name off of its patent applications in a bid to avoid paying royalties to the university, according to court documents. Hill’s name was later added to the patents and Glaukos wound up paying UCI $2.7 million plus a 2.5% royalty on iStent sales, according to the documents. Goldberg ruled that there’s enough evidence to “support a finding that intent to deceive is the single most reasonable inference to be drawn at this stage of the proceedings.”
“Therefore, I find that the evidence could support a finding that intent to deceive is the single most reasonable inference to be drawn at this stage of the proceedings. As such, a trial is necessary to resolve disputed issues of material fact, assess the credibility of witnesses and more fully develop the record,” he wrote.
Glaukos said it might appeal and plans a vigorous defense at the inequitable conduct trial. The patents in the case relate only to its iStent Supra device, not the original iStent that won FDA approval in 2012 or the iStent Inject device that’s in U.S. investigational trials.