Pharmaceutical Claims Found Unpatentable

Authored by Michael K. Levy

On June 20, 2014, the Patent Trial and Appeal Board (PTAB) issued the first inter partes review (IPR) decisions reaching pharmaceutically-related subject matter, which in this case constituted dietary supplement and vitamin products. Four separate final written decisions, addressing four respective patents claiming related subject matter, held claims unpatentable directed to pharmaceutical compositions and methods of treatment using such compositions.

The twenty claims among the four patents ultimately reviewed by the PTAB were generally directed to treating particular indications by administering compositions containing a natural isomer of a reduced folate (e.g., 5-methyl-(6S)-THF), as an alternative to folic acid, which some individuals reportedly do not absorb easily. Petitioner essentially relied upon one prior art reference disclosing preparations for the use of folate or an undefined suitable active metabolite, and another disclosing the natural folate metabolite 5-methyl-(6S)-THF for treating folate deficiency. Despite Patent Owners’ reliance on nearly a dozen experts and other declarants’ testimony rebutting the combination, the PTAB found all challenged claims either anticipated or rendered obvious by the prior art. Notably, the PTAB carefully assessed the proffered objective evidence of nonobviousness (“secondary considerations”), finding in all cases that Patent Owners had failed to establish a nexus linking the evidence of commercial success, unexpected results, long-felt need, licensing and copying to any novel element in the claims. During the IPR proceedings, Patent Owners canceled a number of claims among the four patents, leaving only 30 for the PTAB to consider.

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Activists and Investors: A New Breed of IPR Petitioners?

Authored by Michelle Carniaux and Michael E. Sander

In District Court, one must satisfy Article III standing requirements before bringing an action challenging a patent’s validity. This requirement is often satisfied by a preexisting controversy between parties, or one party’s demand for remuneration for alleged patent infringement. In contrast, in an inter partes review proceeding, any “person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent,” except under certain circumstances. See 35 U.S.C. §§ 311(a), 315. The petitioner need not be involved in a preexisting controversy or generally satisfy the Article III standing requirements.

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Not So Fast! PTAB Rules Patent Not Covered Business Method

Authored by Brian S. Mudge

The Patent Trial and Appeal Board recently ruled, in a case of first impression, that a patent challenged under the Covered Business Method (“CBM”) transitional review program was not directed to a financial product or service. In PNC Financial Services Group, Inc. v. Intellectual Ventures I, LLC, CBM2014-32 (“PNC Financial”), the petitioners challenged U.S. patent 7,757,298 on grounds that claims 1-16 were unpatentable under 35 U.S.C. §101. But the Board did not even reach the merits of the dispute because it determined, as a threshold matter, that the challenged patent failed to qualify for CBM review.

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The Top 10 Patent Owners at the PTAB: A Who’s Who of IPR and CBM Proceedings

Authored by Michelle Carniaux and Michael E. Sander

As inter partes review and covered business method proceedings become more popular, it is becoming the norm for patent owners to face an IPR or CBM challenge during any patent monetization campaign. Below we provide a ranking of the top 10 patent owners having the most IPR or CBM petitions filed against their patents.

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The Curious Case (Part II): The End of the VirnetX Saga

Authored by Michelle Carniaux

In a previous post, we reported that RPX Corporation (“RPX”), a defensive patent licensing entity, filed seven petitions for Inter Partes Review (“IPR”) against patents owned by a publicly traded patent licensing entity VirnetX Holding Corporation (“VirnetX”). In its petitions, RPX identified only itself as the real party in interest. Yesterday, the PTAB denied institution of all seven IPRs. Unusually, the decisions are marked “Parties and Board Only,” so they are not publicly available. We expect redacted versions of the decisions will be made available at some point.

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