Jury awards $34.9M in post-surgical eyedrops trademark case

Following a four-day trial, a federal jury in San Diego on Wednesday awarded $34.9 million to the plaintiffs in a trademark dispute over post-surgical eyedrops.

Co-lead plaintiff's counsel Keith J. Wesley, a partner at Ellis George LLP, called it "a very sizable award for this type of case."

The dispute focused on compounded ophthalmic medications -- custom-prepared pharmaceutical formulations designed to address the unique needs of individual patients, particularly for eye care treatments. ImprimisRx LLC, based in Carlsbad, claimed to be the first to bring these specialized eye drops to market, offering a portfolio of nine distinct products, each marketed under its own trademark.

The lawsuit accused OSRX Inc. of using the same trademarked names or, in some cases, with the minor modification of replacing the dashes with a plus sign. ImprimisRX accused OSRX of fraud, malice, or oppression, and included a state-law claim for common law unfair competition that entitled the company to punitive damages.

Dylan J. Liddiard of Wilson Sonsini Goodrich & Rosati defended OSRX, which is based in Missoula, Montana. "Significant equitable issues remain. In addition, the plaintiff did not have license to any of the marks at the time of filed the case.  Jurisdictional issue[s] are significant," Liddiard responded when asked for comment. 

Arledge

OSRX argued that the trademarks were generic or, at best, that they were descriptive and lacked secondary meaning and were thus unprotectable, the plaintiff's lawyers said. They also said that OSRX denied that any clients purchased products from it based on any confusion and therefore argued that there were no damages. And they argued a fair use defense.

"They tried a few different arguments but in essence they wanted to invalidate the trademark," Wesley said.

According to the verdict form, the jury agreed with Imprimis on all issues and awarded $10.5 million in actual damages on seven of the trademarks, $4 million in damages on the remaining two trademarks, and $20.4 million in punitive damages.

"I think the size of this verdict showed just how much the jury thought that these guys intended to do wrong," Wesley said.

Christopher W. Arledge, also a partner at Ellis George, was co-lead counsel for the plaintiff.

The case was presided over by U.S. District Judge Cynthia Ann Bashant in San Diego. ImprimisRX LLC and Harrow IP LLC, v. OSRX, Inc.; Ocular Science, Inc., No. 21-CV-01305-BAS-(DDL) (S.D. Cal., filed July 20, 2021).