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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Authored by Michael S.Turner
As accused infringers rush to challenge patents in trials before the Patent Trial and Appeal Board, they must consider the estoppels of 35 U.S.C. § 315(e). The estoppel statute may prevent petitioners from later raising any ground of unpatentability that was raised, or could have been raised, during the PTAB trial. If claims survive, the accused infringer may be left without prior art patents or printed publications to present in district court, and should consider other types of prior art: prior art use or sale in the United States.
In its first ruling on an appeal of a final IPR decision, the Federal Circuit has affirmed the Board’s decision in all respects. The case, In re Cuozzo Speed Techs., LLC, No. 2014-1301 (Fed. Cir. Feb. 4, 2015), involved two key issues on appeal which have been hotly debated since the PTAB began hearing IPRs and other post-grant proceedings under the AIA, and which sparked a lengthy dissent. A divided Federal circuit panel ruled (a) that the court lacked jurisdiction to review the PTAB’s decision to institute the IPR even in connection with the appeal of a final decision; and (b) that the broadest reasonable interpretation (“BRI”) standard applies to construction of claims in an IPR proceeding. In addition, the court upheld the PTAB’s decision that the tried claims were obvious and that Cuozzo’s motion to amend improperly attempted to broaden the claims.