A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Safe Harbor

Sailing is one of those endeavors that really make you respect the ancestors. As a kid (and indeed, a thirty-something) it seemed like a simple matter or pointing a sheet in the wind to go forward. Then you actually go on one of these crazy things and—even setting aside the knots—there's this mad calculus that goes into what turns where when that somehow makes you best off when you're perpendicular to the actual wind. Real witchcraft.

Ludomil Sawicki, Unsplash

This, of course, brings us to one of my favorite areas of patent law, the safe harbor provision. For those, less familiar, Judge Barker's opinion this week in Merus N.V. v. Xencor, Inc., C.A. No. 24-913-JCB, D.I. 35 (D. Del. Sep. 30, 2025), gives a good overview.

Briefly, 35 U.S.C. § 271(e)(1) allows one to make/use/etc, a patented invention "solely for uses reasonably related to the development and submission of information under" a qualifying regulatory regime. This most often comes into play in the ANDA context where the generic manufacturer can use the otherwise patented drug to perform the necessary studies to submit their ANDA to the FDA.

The situation is somewhat more complicated in Merus. The patents there

wind-ira-NWr0IHXHTZo-unsplash
Wind Ira, Unsplash

We've discussed before how difficult it is to successfully invoke the safe harbor provision of 271 at the motion to dismiss stage. This is especially so since a plaintiff generally need not look very hard to find statements from the Defendant that they are, like, totally about to sell eleventy-billion-dollars worth of the drug in question. How then, can a defendant—with all inferences taken against them—show that the otherwise infringing product is "solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products?"

The defendant in Allergan, Inc. v. Revance Therapeutics, Inc., No. 21-1411-RGA, 2022 U.S. Dist. …

Honestly, it's not a very safe harbor
Honestly, it's not a very safe harbor Youngje Park, Unsplash

Judge Burke faced an interesting hypothetical last week regarding the rarely invoked safe harbor provision of 35 U.S.C. § 271(e)(1). For those unfamiliar, the safe harbor provision provides that:

It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.

The Sole Use Question

The issue in Wilson Wolf Manufacturing Corp. v. Sarepta Therapeutics, Inc., C.A. No. 19-2316-RGA-CJB, …