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Product-by-Process Claims Invalid when the Process Does Not Impart Structural or Functional Differences

Product-by-Process Claims Invalid when the Process Does Not Impart Structural or Functional Differences

by Cary Miller | May 5, 2017 | Pharmaceutical

By Kunyong Yang and Cary Miller, Ph.D. The PTAB issued a final written decision in IPR2016-00006, holding claims 1–22 of U.S. Patent No. 8,497,393 (“the ’393 patent”) unpatentable under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).  All of the claims are...
Allergan Successfully Invalidates Claims Relating to Using Botox to Treat Back Pain

Allergan Successfully Invalidates Claims Relating to Using Botox to Treat Back Pain

by Cary Miller | Apr 24, 2017 | Final Written Decisions, Pharmaceutical

By Unmesh Shah, Ph.D. and Cary Miller, Ph.D. Allergan is typically the patent holder in these types of disputes, however, it recently successfully played the role of petitioner in an IPR against 1474791 Ontario Ltd.’s U.S. Patent No. 6,806,251 covering the use of...
Pharmaceutical Compound Nonobvious Absent Evidence Suggesting Specific Modification to Prior Art Compound

Pharmaceutical Compound Nonobvious Absent Evidence Suggesting Specific Modification to Prior Art Compound

by Jones Day's PTAB Team | Apr 20, 2017 | Pharmaceutical

By Wanli Tang, Ph.D. and J. Patrick Elsevier, Ph.D. The PTAB issued a final written decision in IPR2016-00204, upholding the validity of claims 1–13 of Patent RE38,551 E (“the ’551 patent”), which covers the antiepileptic drug VIMPAT® (lacosamide). The petitioner,...
PTAB Grants Motion to Amend Claims, Kind Of

PTAB Grants Motion to Amend Claims, Kind Of

by Jones Day's PTAB Team | Apr 7, 2017 | Amendment Practice, Pharmaceutical

By Lisamarie LoGiudice, Ph.D. and J. Patrick Elsevier, Ph.D. In Amerigen Pharmaceuticals Limited v. Shire LLC, IPR2015-02009 (March 31, 2017), the PTAB granted Shire’s Motion to Amend the claims in U.S. Reissued Patent RE 42,096, listed in the FDA’s Orange Book as...
PTAB Invalidates Two Anacor KERYDIN® Patents

PTAB Invalidates Two Anacor KERYDIN® Patents

by Cary Miller | Mar 30, 2017 | Final Written Decisions, Pharmaceutical

By Olga Schwier, Ph.D. and Cary Miller, Ph.D. The PTAB found obvious all claims of U.S. Patent Nos. 7,582,621 and 7,767,657 in the three final written decisions issued on February 23, 2017 (IPR2015-01776, IPR2015-01780, and IPR2015-01785).  This marks another victory...
Unsuccessfully Using the Wayback Machine to Establish Status as a Printed Publication

Unsuccessfully Using the Wayback Machine to Establish Status as a Printed Publication

by Cary Miller | Mar 24, 2017 | Pharmaceutical, Prior Art Issues

By Jeff Giering, Ph.D. and Cary Miller, Ph.D. On March 6, 2017, the PTAB issued a pair of final written decisions upholding the patentability of U.S. Patent Nos. 7,932,268 (IPR2015-01836) and 8,618,135 (IPR2015-01835), in challenges filed by the Coalition for...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.