What happens when trials are instituted based on five inter partes review petitions filed by four petitioners, targeting just three claims in a single patent? This situation arose in connection with a patent owned by B.E. Tech., and recently resulted in five Final Written Decisions canceling the challenged claims. See IPR2014-00029 (Sony Mobile); IPR2014-00031 (Google); IPR2014-00033 (Google); IPR2014-00040 (Microsoft); IPR2014-00044 (Samsung).
Although IPR proceedings were intended to provide those accused (or at risk of being accused) of patent infringement a faster and less costly proceeding to challenge the validity of a patent, it has also drawn the attention of outsiders. There are several types of “PTAB crashers,” each having its own motivation for challenging the validity of one or more patents. What they have in common is that each has filed one or more IPR petitions despite having no risk of being charged with infringement of the subject patent(s). To date, PTAB crashers account for 47 IPR petitions.
In what now seems to be part of a trend, two new petitions for inter partes review were recently filed by what appear to be hedge funds and financiers targeting patents owned by large pharmaceutical companies. Last week, Ferrum Ferro Capital, LLC (“Ferrum”) filed a petition for inter partes review against a single claim of a patent owned by Allergan Sales, LLC (“Allergan”). See IPR2015-00858, No. 1 Petition (P.T.A.B. Mar. 9, 2015). The claim at issue relates to the treatment of glaucoma by administering two known active ingredients, timolol and brimonidine, in a single composition. The claim previously survived a lengthy litigation against generic drug manufacturer, Sandoz, Inc. Eventually, the Federal Circuit agreed with the district court that Sandoz had not proven that the claim was invalid as obvious. See Allergan, Inc. v. Sandoz Inc., 11-1619 (Fed. Cir. May. 1, 2013).
In one of the first PTAB decisions of its kind, a 4 to 3 split expanded panel issued an opinion granting a rehearing request and effectively overturned an earlier panel’s decision to deny a joinder motion. See IPR2014-00508, No. 28 (Feb. 12, 2015).
On Tuesday, the Coalition for Affordable Drugs LLC (“CFAD”) filed its first IPR petition against a patent owned by Acorda Therapeutics. See IPR2015-00720. In its petition, CFAD, a wholly owned subsidiary of Hayman Credes Master Fund, LP, challenges the validity of claims to a method of improving walking in a human multiple sclerosis patients.
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