Tag Archives: Biotechnology

Mind The Gap: The PTAB Will Not Bridge It For You

Petitioners should beware gaps in their evidence and reasoning.  Two DepoMed patents recently survived their second IPR challenge because the petitioner failed to meet its burden of proof.  The PTAB rejected petitioner’s obviousness arguments as “overly vague and nonspecific,” concluding that petitioner failed to “explain persuasively why or how a person of ordinary skill in … Continue Reading

PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard

Score another win for pharma against investment funds-turned-IPR petitioners. On September 21, 2015, the PTAB denied institution of Ferrum Ferro Capital, LLC’s (“FFC”) petition for IPR of an Allergan patent claim related to its Combigan® eye-drop product for treating glaucoma. This dispute has attracted publicity for having bled into the courts, where Allergan has sued … Continue Reading

PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition

The PTAB recently denied institution of an inter partes review (IPR) on the basis of the estoppel provision of the AIA (35 USC § 315(e)). Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (PTAB Sept. 16, 2015). The decision is not appealable, and is significant because it offers guidance on how the PTAB will construe this … Continue Reading

PTAB Considers Qualifications To Testify Concerning The Understanding of One of Ordinary Skill

En route to holding the claims of the challenged patent invalid, the PTAB addressed two issues regarding the qualifications of a declarant providing testimony concerning how one of ordinary skill would understand the applied prior art. U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27 (Sept. 14, 2015).  The first issue was whether … Continue Reading

PTAB Denies Institution of Two IPR Petitions Filed by Hedge Fund

As the patent community anxiously awaits the PTAB’s decision concerning whether the Coalition For Affordable Drugs (CFAD) should be sanctioned for filing an IPR petition against a Celgene patent¹, the PTAB recently denied institution of two IPR petitions² the CFAD filed concerning two Acorda patents that cover Ampyra, a billion-dollar drug for treating multiple sclerosis.  The … Continue Reading

PTAB Denies Institution in Cepheid v. Roche: PCR Primers Found Not Inherently Anticipated

On June 11, 2015, the PTAB denied institution of Cepheid’s petition seeking inter partes review of Patent No. 5,643,723 directed to methods of detecting tuberculosis in humans (IPR2015-00255). To defeat institution, the patent owner successfully used its preliminary response to persuade the Board to (a) narrowly construe claim terms (despite the broadest-reasonable-construction standard), and (b) … Continue Reading

Pharma Patent Owner Attacks Bass IPR Petitions by Requesting Discovery of Real Parties-In-Interest

A picture can be worth a thousand words. This one illustrates the complex web of actual and potential real parties-in-interest (RPIs) that a pharmaceutical patent owner is attempting to pierce for two IPR petitions recently filed by Coalition For Affordable Drugs II—one of several similarly-named creations of hedge-fund manager Kyle Bass and his Hayman Credes … Continue Reading

Hatch-Waxman and BPCIA Patents May Be Exempted from Post-Grant Proceedings Under Pending Senate Legislation

On Thursday, June 4, the Senate Judiciary Committee approved the Protecting American Talent and Entrepreneurship (PATENT) Act. We previously reported the significant provisions of the bill. Several members of the Judiciary Committee expressed support for a further proposal that would exempt from PTO post-grant proceedings patents that are subject to the Hatch-Waxman or Biologics Price … Continue Reading
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