During the week of December 3, 2018, the Board issued one decision in Technology Center 1600 denying institution of inter partes review:
- Mylan Pharm. Inc. v. Bayer Intellectual Prop. GmbH, IPR2018-01143 (Decision Denying Institution of Inter Partes Review, December 3, 2018). Petitioner Mylan challenged the patentability of claims 1-4 of U.S. Patent No. 9,539,218 (the ’218 patent) as obvious over Straub, Kubitza Abstracts, and Forsman. Patent owner Bayer filed a preliminary response to the petition. The Board exercised its discretion to deny the petition under 35 U.S.C. § 325(d) and 314(a). The ’218 patent relates to a method of treating a thromboembolic disorder by a once-daily administration of a “rapid-release tablet” of a direct factor Xa inhibitor, e.g., rivaroxaban. The Board denied the petition under 35 U.S.C. § 325(d) after finding that substantially the same prior art and arguments were previously presented to the Office and the Board in an ex parte appeal. IP2018-01143, Paper 13 at 12. The Board exercised its discretion to deny the petition under 35 U.S.C. § 314(a) after finding that a trial would be an inefficient use of Board resources due to the parallel district court case set for trial on April 1, 2019. Id. at 13. The Board emphasized three reasons for taking this step: 1) the district court proceeding was at an advanced stage; 2) the Board adopted the same claim construction as the district court; and 3) the prior art and expert testimony asserted in the petition overlapped extensively with those presented in the district court. Id.