Depomed Announces Two Favorable Decisions In Inter Partes Review Proceedings Versus Endo Pharmaceuticals

NEWARK, Calif., Sept. 23, 2015 /PRNewswire/ -- Depomed, Inc. (Nasdaq: DEPO) today announced favorable decisions by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office that confirmed the patentability of all 23 claims of two Depomed patents (U.S. Patent Nos. 6,340,475 and 6,635,280) subject to inter partes review proceedings (IPRs) initiated by Endo Pharmaceuticals (Endo). This decision clears the way for Depomed to continue its patent infringement lawsuit against Endo related to OPANA® ER.

"We are pleased that PTAB upheld each claim of the two patents at issue, and with this ruling, our path is clear to proceed with our patent infringement case against Endo, as well as our case against Purdue," said Jim Schoeneck, president and chief executive officer of Depomed. "This marks the second favorable ruling in this quarter where Depomed has defended these same patents with the prior ruling upholding the 25 contested claims of these same patents. As a company, we remain committed to the defense and vigorous enforcement of our intellectual property estate with the goal of creating long-term shareholder value."  

Depomed's patent infringement lawsuits in New Jersey Federal District Court alleging infringement of U.S. Patent Nos. 6,340,475 and 6,635,280 by Endo's OPANA ER product and Purdue's Oxycontin® product have been stayed pending the outcome of the IPRs initiated by Endo and Purdue. In July 2015, Depomed announced the PTAB had confirmed the patentability of all 25 claims of the same patents in IPR challenges initiated by Purdue. Based on the PTAB's final decisions against the IPR challenges initiated by Endo and Purdue, Depomed will request that the District Court lift the stay. Endo and Purdue will not be able to assert invalidity arguments based on prior art they raised or could have raised in the IPRs.

Last week, Depomed announced that on September 16, 2015 USPTO's PTAB issued its final decision in IPR proceedings initiated by Endo against Depomed's US Patent No. 6,723,340 determining that eight of the nine challenged claims (of 19 total patent claims) are unpatentable. This decision has no impact on the expected market exclusivity of any of Depomed's products or receivable royalties and the company is considering an appeal of the decision to the United States Court of Appeals for the Federal Circuit.

About Depomed 

Depomed is a specialty pharmaceutical company that commercializes products for pain and neurology related disorders. Our NUCYNTA® franchise includes NUCYNTA® ER (tapentadol) extended release tablets indicated for the management of pain, including neuropathic pain associated with diabetic peripheral neuropathy (DPN), severe enough to require daily, around-the-clock, long-term opioid treatment, and NUCYNTA® (tapentadol), an immediate release version of tapentadol, for management of moderate to severe acute pain in adults. Gralise® (gabapentin) is a once-daily treatment approved for the management of postherpetic neuralgia. CAMBIA® (diclofenac potassium for oral solution) is a non-steroidal anti-inflammatory drug indicated for acute treatment of migraine attacks with or without aura in adults (18 years of age or older). Zipsor® (diclofenac potassium) Liquid Filled Capsules is a non-steroidal anti-inflammatory drug indicated for relief of mild to moderate acute pain in adults. Lazanda® (fentanyl) Nasal Spray is an intranasal fentanyl drug used to manage breakthrough pain in adults (18 years of age or older) who are already routinely taking other opioid pain medicines around-the-clock for cancer pain. Gralise, Nucynta ER and various partner product candidates are formulated with Depomed's proven, proprietary Acuform® drug delivery technology. Additional information about Depomed may be found at www.depomed.com. 

NUCYNTA®, Gralise® CAMBIA®, Zipsor®, Lazanda® and Acuform® are registered trademarks of Depomed, Inc.

"Safe Harbor" Statement under the Private Securities Litigation Reform Act of 1995.  The statements that are not historical facts contained in this release are forward-looking statements that involve risks and uncertainties including, but not limited to, those related to the uncertainties of intellectual property litigation and enforcement of patent claims and other risks detailed in the company's Securities and Exchange Commission filings, including the company's Annual Report on Form 10-K and most recent Quarterly Report on Form 10-Q.  The inclusion of forward-looking statements should not be regarded as a representation that any of the company's plans or objectives will be achieved.  The achievement of those plans and objectives involves risks and uncertainties including, but not limited to, risks detailed in the company's Securities and Exchange Commission filings, including the company's Annual Report on Form 10-K and most recent Quarterly Report on Form 10-Q.  You are cautioned not to place undue reliance on these forward-looking statements, which speak only as of the date hereof.  The company undertakes no obligation to publicly release the result of any revisions to these forward-looking statements that may be made to reflect events or circumstances after the date hereof or to reflect the occurrence of unanticipated events.

OPANA® is registered trademark of Endo Pharmaceuticals Inc.

Oxycontin® is a registered trademark of Purdue Pharma.

Investor Contact:

Depomed, Inc.  
Christopher Keenan
510-744-8000
ckeenan@depomed.com

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SOURCE Depomed, Inc.