Earlier this week, the PTAB instituted inter partes review of two patents directed to methods of treating rheumatoid arthritis by subcutaneously administering tocilizumab and devices for subcutaneously administering tocilizumab, respectively.  Fresenius filed petitions for inter partes review of U.S. Patent Nos. 8,580,264 (“the ’264 patent”), owned by Chugai and Roche, and 10,874,677 (“the ’677 patent”), owned by Chugai, Roche, and Genentech, on August 18, 2021.  In separate decisions, the PTAB instituted review of all challenged claims of both patents, finding that Petitioners have demonstrated a reasonable likelihood that they will prevail in showing the unpatentability of the claims challenged in the Petitions.

With respect to the ’264 patent, the PTAB indicated that it found the Petitioners had established a basis for institution on the two grounds it substantively addressed—one anticipation ground and one obvious ground – and therefore instituted on all grounds as required under SAS.  Concerning the claims of the ’677 patent, the PTAB similarly found that Petitioners had established a basis for institution on the grounds it substantively addressed – one anticipation ground and two obviousness grounds – and again instituted on all grounds.

These institution decisions follow a pair of decisions issued last month instituting inter partes review in response to petitions filed by Fresenius challenging two other patents owned by Chugai and directed to treating rheumatoid arthritis with tocilizumab.