During the week of January 7, the Patent Trial and Appeal Board (“the Board”) issued four decisions in TC 1600, one denying institution of inter partes review (“IPR”) and three final written decisions.  Summaries of the decisions follow: Continue Reading PTAB Tech Center 1600 Round-Up: Week of January 7-11, 2019

During the week of December 17, 2018, the Patent Trial and Appeal Board (“the Board”) issued five decisions in TC 1600.  Those decisions instituted inter partes review (“IPR”) of five petitions, four of which involved related patents.  As detailed below, the Patent Owners did not substantively challenge the petitions at the Preliminary Response stage, but instead opposed institution on procedural grounds—namely, failure to name a real party in interest or duplicative issues under 35 U.S.C. § 325(d).

Merck Sharp & Dohme Corp. v. GlaxoSmithKline Biologicals SA, Nos. IPR2018-01229; IPR2018-01234; IPR2018-01236; and IPR2018-01237 (Decisions Granting Institution Entered December 18, 2018).  Merck Sharp & Dohme Corp. (“Merck”) filed four IPR petitions, Continue Reading PTAB Tech Center 1600 Round-Up: Week of December 17-21, 2018

During the week of December 10, 2018, the Board issued several Final Written Decisions and institution decisions in Technology Center 1600.  The decisions are summarized below: Continue Reading PTAB Tech Center 1600 Round-Up: Week of December 10-14, 2018

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.

During the week of November 26, 2018, the Patent Trial and Appeal Board (“the Board”) issued seven decisions in TC 1600, one denying institution of inter partes review (“IPR”), one termination decision, and five final written decisions.  Summaries of the decisions follow: Continue Reading PTAB Tech Center 1600 Round-Up: Week of November 26 – 30, 2018

During the week of November 5, 2018, the Board issued one decision granting institution of inter partes review.

Amneal Pharmaceuticals LLC v. Alkermes Pharma Ireland Limited, IPR2018-00943 (Decision Granting Institution of IPR November 7, 2018). Petitioner Amneal challenged the patentability of claims 1-13 of United States Patent No. 7,919,499 (“the ᾽499 patent”) on two grounds of anticipation and four grounds of obviousness. IPR2018-00953 at 4. The ᾽499 patent is directed to methods for treating alcohol-dependent patients with a long-acting formulation of naltrexone. Id. at 3. Claim 1 includes a step of administering “a long acting formulation comprising about 310 mg to about 480 mg of naltrexone and a biocompatible polymer” in which “the serum AUC of naltrexone is about three times greater than that achieved by 50 mg/day oral administration.” Id. at 4-5.

Continue Reading PTAB Tech Center 1600 Round-Up: Week of Nov. 5-9

IPR petitioners Proppant Express Investments, LLC and Proppant Express Solutions, LLC (collectively, “PropX”) have a pending instituted inter partes review (IPR) on certain claims of U.S. Patent No. 9,511,929 (“the ’929 patent”).  Unfortunately for PropX, it mistakenly grouped its arguments against one of the dependent claims—claim 4—into the wrong ground, which led the Patent Trial and Appeal Board (the “Board”) to deny institution of IPR of that claim, due to inadequate support.  IPR2017-02103, Paper 19 at 32, 34.  After institution, PropX sought to amend the petition to move claim 4 into the proper ground.  The Board denied PropX’s request because PropX was not diligent: despite Patent Owner’s (“Oren”) Preliminary Response pointing out PropX’s mistake, PropX failed to notice the mistake until after institution.  IPR2017-02103, Paper 22.

Continue Reading PTAB Holds that 35 U.S.C. § 315(c) Prevents Same-Party Joinder of Issues to An Instituted IPR