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

Merck Sharp & Dohme Corp. v. Genentech, Inc.

PTAB Petition:  IPR2017-00047; filed October 11, 2016.

PTAB Trial Instituted Document entered January 3, 2017.

Patent at Issue:  U.S. Patent No. 6,331,415 ("Methods of producing immunoglobulins, vectors and transformed host cells for use therein," issued December 18, 2001) claims a process for producing an immunoglobulin or an immunologically functional immunoglobulin fragment containing at least the variable domains of the immunoglobulin heavy and light chains.  The process can use one or more vectors which produce both the heavy and light chains or fragments thereof in a single cell.

Petitioner Merck Sharp & Dohme Corp. is challenging the '415 patent on two grounds as being obvious under 35 U.S.C. § 103(a).  View the petition here and the Motion for Joinder here.  Administrative Patent Judges Toni R. Scheiner, Lora M. Green (author), and Susan L.C. Mitchell issued a decision instituting inter partes review of claims 1, 3, 4, 11, 12, 14, 19, and 33 as being obvious under 35 U.S.C. § 103(a) over Bujard and Riggs & Itakura; and claims 1, 2, 18, 20 and 33 as being obvious under 35 U.S.C. § 103(a) over Bujard and Southern.  The Judges also ordered that Case IPR2017-00047 and Case IPR2016-00710 are joined and administratively terminated under 37 C.F.R. § 42.72, and that all further filings in the joined proceedings shall be made in Case IPR2016-00710 (Petitioners, Mylan Pharmaceuticals, Inc.; filed 03/03/2016; instituted 09/08/2016; pending).

Related Matters:  According to the petition, the '415 patent is involved in IPR2015-01624 (Sanofi-Aventis US LLC v. Genentech, Inc. and City of Hope; Petitioner Sanofi-Aventis US LLC; filed on 07/27/2015; instituted on 02/05/2016; and terminated 09/02/2016 through settlement).  The petition also indicates that the '415 patent is involved in IPR2016-00383 (Petitioner Genzyme Corp.; filed on 12/30/2015; institution denied 06/23/2016); IPR2016- 00460 (Petitioner Genzyme Corp.; filed on 01/15/2016; Instituted 06/08/2016; Joined with IPR2016-01624 06/23/2016; terminated 09/02/2016); IPR2016-00710 (Petitioner Mylan Pharmaceuticals Inc.; filed on 03/03/2016; instituted 09/08/2016; pending); and IPR2016-01373 (Petitioner Merck Sharp & Dohme Corp.; filed on 07/07/2016; institution denied 01/03/2017).

Reactive Surfaces Ltd., LLP v. Toyota Motor Corp.

PTAB Petition:  IPR2017-00572; filed January 4, 2017.

Patent at Issue:  U.S. Patent No. 8,252,571 ("Preparation of solvent-borne polymeric bioactive coatings," issued August 28, 2012) claims a preparation of a protein-polymer composite material, comprising providing an admixture of a polymer resin, a surfactant and a non-aqueous organic solvent, and mixing an aqueous solution containing bioactive proteins with the admixture.

Petitioner Reactive Surfaces Ltd., LLP is challenging the '571 patent on two grounds as being obvious under 35 U.S.C. § 103(a).  View the petition here.

Related Matters:  According to the petition, there are no current related matters; however, the '571 patent was involved in the following litigations that were dismissed without prejudice:  Reactive Surfaces Ltd. LLP v. Toyota Motor Engineering & Manufacturing North America, Inc. et al., 1:13-CV-1098-LY (W.D. Tex.); and Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., 1:14-CV-1009-LY (W.D. Tex.).

Famy Care Ltd. v Allergan, Inc.

PTAB Petition:  IPR2017-00566; filed January 6, 2017.

Patent at Issue:  U.S. Patent No. 8,648,048 ("Methods of providing therapeutic effects using cyclosporin components," issued February 11, 2014) claims method of increasing tear production in the eye of a human by topically administering an emulsion comprising cyclosporin A.

Petitioners Famy Care Ltd., Axar Pharmaceuticals, Inc., Lupin Atlantis Holdings SA, Lupin Inc., Lupin Ltd., and Lupin Pharmaceuticals are challenging the '048 patent on three grounds as being obvious under 35 U.S.C. § 103(a).  View the petition here.  Petitioners are also seeking joinder to IPR2016-01131 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016) through 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b).  View the motion here.

Related Matters:  According to the petition, the '048 patent is involved in litigations captioned Allergan, Inc. v. Famy Care, Ltd., No. 2:16-cv-0401 (E.D. Tex.); Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et al., No. 2:15-cv-01455 (E.D. Tex.); and Allergan, Inc., v. Innopharma, Inc. and Pfizer, Inc., No. 2:15-cv-1504 (E.D. Tex.).  Also, the '048 patent was the subject of IPR2015-01284 (Petitioners Apotex Corp. and Apotex Inc.; filed 06/04/2015; terminated through settlement 12/16/2015); and IPR2016-01131 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016).

Famy Care Ltd. v Allergan, Inc.

PTAB Petition:  IPR2017-00567; filed January 6, 2017.

Patent at Issue:  U.S. Patent No. 8,629,111 ("Methods of providing therapeutic effects using cyclosporin components," issued February 11, 2014) claims a topical ophthalmic emulsion comprising cyclosporin A.

Petitioners Famy Care Ltd., Axar Pharmaceuticals, Inc., Lupin Atlantis Holdings SA, Lupin Inc., Lupin Ltd., and Lupin Pharmaceuticals are challenging the '111 patent on three grounds as being anticipated under 35 U.S.C. § 102(b) (ground 1) or obviousness under 35 U.S.C. § 103(a) (grounds 2 and 3).  View the petition here.  Petitioners are also seeking joinder to IPR2016-01128 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016) through 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b).  View the motion here.

Related Matters:  According to the petition, the '111 patent is involved in litigations captioned Allergan, Inc. v. Famy Care, Ltd., No. 2:16-cv-0401 (E.D. Tex.); Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et al., No. 2:15-cv-01455 (E.D. Tex.); and Allergan, Inc., v. Innopharma, Inc. and Pfizer, Inc., No. 2:15-cv-1504 (E.D. Tex.).  Also, the '111 patent was the subject of IPR2015-01282 (Petitioners Apotex Corp. and Apotex Inc.; filed 06/04/2015; terminated through settlement 12/16/2015); and IPR2016-01128 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016).

Famy Care Ltd. v Allergan, Inc.

PTAB Petition:  IPR2017-00568; filed January 6, 2017.

Patent at Issue:  U.S. Patent No. 8,633,162 ("Methods of providing therapeutic effects using cyclosporin components," issued February 4, 2014) claims a method of treating dry eye disease comprising topically administering an emulsion comprising cyclosporin A.

Petitioners Famy Care Ltd., Axar Pharmaceuticals, Inc., Lupin Atlantis Holdings SA, Lupin Inc., Lupin Ltd., and Lupin Pharmaceuticals are challenging the '162 patent on three grounds as being obvious under 35 U.S.C. § 103(a).  View the petition here.  Petitioners are also seeking joinder to IPR2016-01130 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016) through 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b).  View the motion here.

Related Matters:  According to the petition, the '162 patent is involved in litigations captioned Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et al., No. 2:15-cv-01455 (E.D. Tex.); Allergan, Inc., v. Innopharma, Inc. and Pfizer, Inc., No. 2:15-cv-1504 (E.D. Tex.); and Allergan, Inc. v. Famy Care, Ltd., No. 2:16-cv-0401 (E.D. Tex.).  Also, the '162 patent was the subject of IPR2015-01278 (Petitioners Apotex Corp. and Apotex Inc.; filed 06/04/2015; terminated through settlement 12/16/2015); and IPR2016-01130 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016).

Famy Care Ltd. v Allergan, Inc.

PTAB Petition:  IPR2017-00570; filed January 6, 2017.

Patent at Issue:  U.S. Patent No. 8,642,556 ("Methods of providing therapeutic effects using cyclosporin components," issued February 4, 2014) claims a topical ophthalmic emulsion for treating a human eye comprising cyclosporin A.

Petitioners Famy Care Ltd., Axar Pharmaceuticals, Inc., Lupin Atlantis Holdings SA, Lupin Inc., Lupin Ltd., and Lupin Pharmaceuticals are challenging the '556 patent on five grounds as being anticipated under 35 U.S.C. § 102(b) (ground 1) or as obvious under 35 U.S.C. § 103(a) (grounds 2 through 5).  View the petition here.  Petitioners are also seeking joinder to IPR2016-01129 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016) through 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b).  View the motion here.

Related Matters:  According to the petition, the '556 patent is involved in litigations captioned Allergan, Inc. v. Famy Care, Ltd., No. 2:16-cv-0401 (E.D. Tex.); Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et al., No. 2:15-cv-01455 (E.D. Tex.); and Allergan, Inc., v. Innopharma, Inc. and Pfizer, Inc., No. 2:15-cv-1504 (E.D. Tex.).  Also, the '556 patent was the subject of IPR2015-01286 (Petitioners Apotex Corp. and Apotex Inc.; filed 06/04/2015; terminated through settlement 12/16/2015); and IPR2016-01129 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016).

Famy Care Ltd. v. Allergan, Inc.

PTAB Petition:  IPR2017-00571; filed January 6, 2017.

Patent at Issue:  U.S. Patent No. 8,685,930 ("Methods of providing therapeutic effects using cyclosporin components," issued April 1, 2014) claims a topical ophthalmic emulsion for treating an eye of a human having keratoconjunctivitis sicca, wherein the topical ophthalmic emulsion comprises cyclosporin A.

Petitioners Famy Care Ltd., Axar Pharmaceuticals, Inc., Lupin Atlantis Holdings SA, Lupin Inc., Lupin Ltd., and Lupin Pharmaceuticals are challenging the '930 patent on three grounds as being anticipated under 35 U.S.C. § 102(b) (ground 1) or as obvious under 35 U.S.C. § 103(a) (grounds 2 and 3).  View the petition here.  Petitioners are also seeking joinder to IPR2016-01127 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016) through 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b).  View the motion here.

Related Matters:  According to the petition, the '930 patent is involved in litigations captioned Allergan, Inc. v. Famy Care Ltd., No. 2:16-cv-0401 (E.D. Tex.); Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et al., No. 2:15-cv-01455 (E.D. Tex.); and Allergan, Inc., v. Innopharma, Inc. and Pfizer, Inc., No. 2:15-cv-1504 (E.D. Tex.).  Also, the '930 patent was the subject of IPR2015-01283 (Petitioners Apotex Corp. and Apotex Inc.; filed 06/04/2015; terminated through settlement 12/16/2015); and IPR2016-01127 (Mylan Pharmaceuticals v. Allergan, Inc.; filed 6/3/2016; instituted 12/8/2016).