Pacira Pharmaceuticals has been busy protecting Exparel from generic competition.  For the past few years, Pacira has launched multiple patent lawsuits against Jiangsu Hengrui Pharmaceuticals, along with its regulatory agent, eVenus Pharmaceutical Laboratories.  In December 2024, Pacira acquired a new patent and immediately commenced another patent suit against Jiangsu Hengrui.  The patent is U.S. Patent No. 12,156,940, and it will not expire until 2044.  It is the parent patent in a new family, and Pacira has already filed a follow-up application to the ‘940 patent, which suggests more patents are in the pipeline.  What is the ‘940 patent?  And how successful will it be for prolonging Pacira’s monopoly pricing for Exparel?

Where is the line between writing a letter that asks for licensing discussions, based on a reasonable assessment of existing infringement, versus one that triggers a DJ action where you are hauled into court in a foreign forum. A recent precedential decision from the Federal Circuit, Apple Inc. v. Zipit Wireless, Inc., addresses this question. While the law generally favors pre-suit settlement discussions that avoid litigation, the practical effects of the Zipit decision may inadvertently do the opposite.

A recent precedential case by the Federal Circuit, Maxchief Investments, Ltd. v. Wok & Pan, Ind., Inc., shows that the risk of a DJ action resulting from a pre-suit notice letter may be less troubling for a different reason than the one that preceded TC Heartland—namely, personal jurisdiction.