About the PTAB Life Sciences Report:  Each month we will report on developments at the PTAB involving life sciences patents.

Pain Point Medical Systems, Inc. v. Blephex LLC

PTAB Petition:  IPR2016-01670; filed August 24, 2016.

PTAB Trial Instituted; entered March 1, 2017.

Patent at Issue:  U.S. Patent No. 9,039,718 ("Method and device for treating an ocular disorder," issued May 26, 2015) claims a method of treating an eye for an ocular disorder with a swab operably connected to an electromechanical device, wherein the eye has an eyelid margin and includes a removable debris, the method comprising; effecting movement of the swab relative to the electromechanical device, the swab having at least a portion thereof configured to access an inner edge portion of the eyelid margin; while the swab is being moved by the electromechanical device, contacting a portion of the eye between the eyelashes and the inner edge of the eyelid margin that includes the removable debris with the swab thereby impacting the debris with the swab to remove debris from the eye.

Petitioner Pain Point Medical Systems, Inc. DBA MiBo Medical Group is challenging the '718 patent on four grounds as obvious under 35 U.S.C. § 103(a) (grounds 1-3) and unpatentable in view of the prosecution history of U.S. Patent Application No. 13/949,365 (ground 4).  View the petition here.  Administrative Patent Judges Meredith C. Petravick, Scott A. Daniels (author), and Scott C. Moore issued a decision instituting inter partes review of whether claims 1–11 and 14–17 of the '718 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over AlgerBrush II, Seminara, and Stevens; whether claims 1-11 and 14-17 are unpatentable under 35 U.S.C. § 103(a) as obvious over AlgerBrush II and Hamburg; and whether claims 1-11 and 14-17 are unpatentable under 35 U.S.C. § 103(a) as obvious over Yamaura and Stevens.

Related Matters:  According to the petition, the '718 patent is also at issue in the following litigation:  Blephex LLC v. Pain Point Medical Systems, Inc., 3:16-cv-00410-N (N.D. Tex.).

Oticon Medical AB v Cochlear Bone Anchored Solutions AB

PTAB Petition:  IPR2017-01018; filed March 3, 2017.

Patent at Issue:  U.S. Patent No. 7,043,040 ("Hearing aid apparatus," issued May 9, 2006) claims a bone-conducting bone-anchored hearing aid apparatus for sound transmission from one side of a patient's head to the patient's cochlea on another side of the patient's head for rehabilitation of unilateral hearing loss.

Petitioners Oticon Medical AB, Oticon Medical LLC, and William Demant Holding A/S are challenging the '040 patent on four grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

Related Matters:  According to the petition, the '040 patent is involved in the following litigation:  Cochlear Ltd. et al. v Oticon Medical AB et al., No. 1:16-cv-01700 (D. Co.).  The petitioners concurrently filed a petition for an inter partes review of the '040 patent on different grounds (IPR2017-01019; filed 03/03/2017).

Oticon Medical AB v Cochlear Bone Anchored Solutions AB

PTAB Petition:  IPR2017-01019; filed March 3, 2017.

Patent at Issue:  U.S. Patent No. 7,043,040 ("Hearing aid apparatus," issued May 9, 2006) claims a bone-conducting bone-anchored hearing aid apparatus for sound transmission from one side of a patient's head to the patient's cochlea on another side of the patient's head for rehabilitation of unilateral hearing loss.

Petitioners Oticon Medical AB, Oticon Medical LLC, and William Demant Holding A/S are challenging the '040 patent on two grounds as anticipated under 35 U.S.C. § 102(b) (ground 1) or as obvious under 35 U.S.C. § 103(a) (ground 2).  View the petition here.

Related Matters:  According to the petition, the '040 patent is involved in the following litigation:  Cochlear Ltd. et al. v Oticon Medical AB et al., No. 1:16-cv-01700 (D. Co.).  The petitioners concurrently filed a petition for an inter partes review of the '040 patent on different grounds (IPR2017-01018; filed 03/03/2017).

Fresenius Kabi USA, LLC v. Hospira, Inc.

PTAB Petition:  IPR2017-01054; filed March 8, 2017.

Patent at Issue:  U.S. Patent No. 8,242,158 ("Dexmedetomidine premix formulation," issued December 25, 2012) claims a ready to use liquid pharmaceutical composition for parenteral administration to a subject, comprising dexmedetomidine or a pharmaceutically acceptable salt thereof at a concentration of about 4 μg/mL disposed within a sealed glass container.

Petitioner Fresenius Kabi USA, LLC is challenging the '158 patent on three grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

Related Matters:  According to the petition, the '158 patent is involved in the following litigations:  Hospira Inc. v. Fresenius Kabi USA, LLC, 1:16-cv-00651 (N.D. Ill.); and Hospira Inc. v. Amneal Pharmaceuticals LLC, 1:15-cv-00697-RGA (D.Del.).  According to the petition, the '158 patent is the subject of inter partes review IPR2016-01577 (Petitioner Amneal Pharmaceuticals LLC; filed 08/10/2016; instituted 02/09/2017; pending).  The petitioners concurrently filed petitions for inter partes review of U.S. Patent Nos. 8,338,470 (IPR2017-01055; filed 03/08/2017; pending) and 8,455,527 (IPR2017-01056; filed 03/08/2017; pending).

Fresenius Kabi USA, LLC v. Hospira, Inc.

PTAB Petition:  IPR2017-01055; filed March 8, 2017.

Patent at Issue:  U.S. Patent No. 8,338,470 ("Dexmedetomidine premix formulation," issued December 25, 2012) claims a ready to use liquid pharmaceutical composition for parenteral administration to a subject, comprising dexmedetomidine or a pharmaceutically acceptable salt thereof at a concentration of about 0.005 to about 50 μg/mL disposed within a sealed glass container.

Petitioner Fresenius Kabi USA, LLC is challenging the '470 patent on three grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

Related Matters:  According to the petition, the '470 patent is involved in the following litigations:  Hospira Inc. v. Fresenius Kabi USA, LLC, 1:16-cv-00651 (N.D. Ill.); and Hospira Inc. v. Amneal Pharmaceuticals LLC, 1:15-cv-00697-RGA (D.Del.).  According to the petition, the '470 patent is the subject of inter partes review IPR2016-01578 (Petitioner Amneal Pharmaceuticals LLC; filed 08/10/2016; instituted 02/09/2017; pending).  The petitioners concurrently filed petitions for inter partes review of U.S. Patent Nos. 8,242,158 (IPR2017-01054; filed 03/08/2017; pending) and 8,455,527 (IPR2017-01056; filed 03/08/2017; pending).

Fresenius Kabi USA, LLC v. Hospira, Inc.

PTAB Petition:  IPR2017-01056; filed March 8, 2017.

Patent at Issue:  U.S. Patent No. 8,455,527 ("Methods of treatment using a dexmedetomidine premix formulation," issued June 4, 2013) claims a method of providing sedation to a patient in need thereof, the method comprising administering to the patient an effective amount of a composition, wherein the composition comprises dexmedetomidine or a pharmaceutically acceptable salt thereof at a concentration of about 0.005 to about 50 μg/mL, wherein the composition is a ready to use liquid pharmaceutical composition for parenteral administration to the patient disposed within a sealed glass container.

Petitioner Fresenius Kabi USA, LLC is challenging the '527 patent on three grounds as obvious under 35 U.S.C. § 103(a).  View the petition here.

Related Matters:  According to the petition, the '527 patent is involved in the following litigations:  Hospira Inc. v. Fresenius Kabi USA, LLC, 1:16-cv-00651 (N.D. Ill.); and Hospira Inc. v. Amneal Pharmaceuticals LLC, 1:15-cv-00697-RGA (D.Del.).  According to the petition, the '527 patent is the subject of inter partes review IPR2016-01579 (Petitioner Amneal Pharmaceuticals LLC; filed 08/10/2016; instituted 02/09/2017; pending).  The petitioners concurrently filed petitions for inter partes review of U.S. Patent Nos. 8,242,158 (IPR2017-01054; filed 03/08/2017; pending) and 8,338,470 (IPR2017-01055; filed 03/08/2017; pending).