PTAB Life Sciences Report - September 2016

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

Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH

PTAB Petition:  IPR2016-01665; filed August 22, 2016

Patent at Issue:  U.S. Patent No. 6,858,650 ("Stable salts of novel derivatives of 3,3-diphenylpropylamines," issued February 22, 2005) claims derivatives of 3,3-diphenylpropylamines and salt forms.

Amerigen Pharmaceuticals, Ltd. is challenging the '650 patent on three grounds as being obviousness under 35 U.S.C. § 103(a).  View the petition here.

Related Matters:  According to the petition, the '650 patent is involved in litigation in the District of Delaware, Pfizer, Inc. and UCB Pharma GmbH v. Mylan Pharmaceuticals, Inc., No. 1:15-cv-00079-GMS; the Northern District of West Virginia, captioned Pfizer Inc. and UCB Pharma GmbH v. Mylan Pharmaceuticals Inc., No. 1:15-cv-00013-IMK; and in the District of Delaware, captioned Pfizer, Inc. and UCB Pharma GmbH v. Sandoz, Inc., et al., No. 1:13-cv-01110-GMS.  Petitioner Amerigen Pharmaceuticals, Ltd. seeks joinder with IPR2016-00510 through a Motion for Joinder under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b).  IPR2016-00510 (Mylan Pharmaceuticals Inc. v. UCB Pharma GmbH); Petitioners Mylan Pharmaceuticals Inc. and Mylan Laboratories Ltd.; filed 2/2/2016; instituted 7/20/2016.

Alembic Pharmaceuticals Limited v. UCB Pharma GmbH

PTAB Petition:  IPR2016-01596; filed August 22, 2016

Patent at Issue:  U.S. Patent No. 6,858,650 ("Stable salts of novel derivatives of 3,3-diphenylpropylamines," issued February 22, 2005) claims derivatives of 3,3-diphenylpropylamines and salt forms.

Amerigen Pharmaceuticals, Ltd. is challenging the '650 patent on three grounds as being obviousness under 35 U.S.C. § 103(a).  View the petition here.

Related Matters:  According to the petition, the '650 patent is involved in litigation in the District of Delaware, Pfizer, Inc. and UCB Pharma GmbH v. Mylan Pharmaceuticals, Inc., No. 1:15-cv-00079-GMS; the Northern District of West Virginia, captioned Pfizer Inc. and UCB Pharma GmbH v. Mylan Pharmaceuticals Inc., No. 1:15-cv-00013-IMK; and in the District of Delaware, captioned Pfizer, Inc. and UCB Pharma GmbH v. Sandoz, Inc., et al., No. 1:13-cv-01110-GMS.  Petitioner Amerigen Pharmaceuticals, Ltd. seeks joinder with IPR2016-00510 through a Motion for Joinder under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b).  IPR2016-00510 (Mylan Pharmaceuticals Inc. v. UCB Pharma GmbH); Petitioners Mylan Pharmaceuticals Inc. and Mylan Laboratories Ltd.; filed 2/2/2016; instituted 7/20/2016.

Celltrion, Inc. v. Genentech, Inc.

PTAB Petition:  IPR2016-01667; filed Month August 24, 2016

Patent at Issue:  U.S. Patent No. 7,976,838 ("Therapy of autoimmune disease in a patient with an inadequate response to a TNF-alpha inhibitor," issued July 12, 2011) claims the use of antagonists that bind to B cell surface markers to treat autoimmune disease in a mammal that experiences an inadequate response to a TNF-alpha inhibitor.

Celltrion, Inc. is challenging the '838 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.

Related Matters:  According to the petition, the '838 patent was involved in IPR2015- 00417 (Boehringer Ingelheim Pharmaceuticals, Inc v. Genentech, Inc.); Boehringer Ingelheim Pharmaceuticals, Inc., and Boehringer Ingelheim International GmbH; filed on 12/15/2014; instituted on 07/14/2015; terminated on 10/01/2015 through Petitioner Request for Adverse Judgment for Abandonment of the Contest under 37 C.F.R. § 42.73(b)(4).  The '838 patent was also involved in IPR2015-01733 (Celltrion, Inc. v. Genentech, Inc.); Petitioner Celltrion, Inc.; filed 08/14/2015; motion for joinder to IPR2015-00417; dismissed without prejudice 10/6/2015.

Dexcom, Inc. v. AgaMatrix, Inc.

PTAB Petition:  IPR2016-01679; filed August 25, 2016

Patent at Issue:  U.S. Patent No. 7,146,202 ("Compound material analyte sensor," issued December 5, 2006) claims a method of measuring the concentration of an analyte within an animal body, specifically the detection of glucose levels in blood.

Dexcom, Inc. is challenging the '202 patent on four grounds as being anticipated under 35 U.S.C. § 102(b) (grounds 2 and 4) or obviousness under 35 U.S.C. § 103(a) (grounds 1 and 3).  View the petition here.

Related Matters:  According to the petition, the '202 patent is involved in litigation in the District of Oregon, captioned AgaMatrix, Inc. v. Dexcom, Inc., 3:16-cv-536-JE.

Dexcom, Inc. v. AgaMatrix, Inc.

PTAB Petition:  IPR2016-01680; filed August 25, 2016

Patent at Issue:  U.S. Patent No. 8,187,433 ("Compound material analyte sensor," issued May 29, 2012) claims a method of measuring the concentration of an analyte within an animal body, specifically the detection of glucose levels in blood.

Dexcom, Inc. is challenging the '433 patent on seven grounds as being anticipated under 35 U.S.C. § 102(b) (ground 1) or obviousness under 35 U.S.C. § 103(a) (grounds 2-7).  View the petition here.

Related Matters:  According to the petition, the '433 patent is involved in litigation in the District of Oregon, captioned AgaMatrix, Inc. v. Dexcom, Inc., 3:16-cv-536-JE.

Mylan Pharmaceuticals Inc. v. Genentech, Inc.

PTAB Petition:  IPR2016-01693; filed August 30, 2016

Patent at Issue:  U.S. Patent No. 6,407,213 ("Method for making humanized antibodies," issued June 18, 2002) claims humanized antibodies and methods for making and using such humanized antibodies.

Mylan Pharmaceuticals, Inc., Mylan Inc., Mylan GmbH, and Biocon Ltd. Mylan N.V. are challenging the '213 patent on eight grounds as being anticipated under 35 U.S.C. § 102(b) (grounds 1 and 2) or obviousness under 35 U.S.C. § 103(a) (grounds 3-8).  View the petition here.

Related Matters:  According to the petition, the '213 patent is related to U.S. Patent Nos. 6,639,055; 6,800,788; 6,719,971; and 8,075,890.

Mylan Pharmaceuticals, Inc. v. Genentech, Inc.

PTAB Petition:  IPR2016-01694; filed August 30, 2016

Patent at Issue:  U.S. Patent No. 6,407,213 ("Method for making humanized antibodies," issued June 18, 2002) claims humanized antibodies and methods for making and using such humanized antibodies.

Mylan Pharmaceuticals, Inc., Mylan Inc., Mylan GmbH, and Biocon Ltd. Mylan N.V. are challenging the '213 patent on seven grounds as being obviousness under 35 U.S.C. § 103(a) (grounds 1–7).  View the petition here.

Related Matters:  According to the petition, the '213 patent is related to U.S. Patent Nos. 6,639,055; 6,800,788; 6,719,971; and 8,075,890.

Arthrex, Inc. v. KFx Medical, LLC

PTAB Petition:  IPR2016-01697; filed August 31, 2016

Patent at Issue:  U.S. Patent No. 9,044,226 ("System and method for attaching soft tissue to bone," issued June 2, 2015) claims a bone anchor comprising a base and a top so that the suture material may be compressed between the surfaces on the base and top to secure the suture to the anchor and an associated inserter.

Arthrex, Inc. is challenging the '226 patent on seven grounds as being anticipated under 35 U.S.C. § 102(b) (ground 1) or obviousness under 35 U.S.C. § 103(a) (grounds 2-7).  View the petition here.

Related Matters:  According to the petition, the '226 patent is involved in litigation in the District of New Jersey, captioned Arthrex, Inc. v. Joseph Tauro et al., 3:15-cv-06580-PSG-LHG.

Arthrex, Inc. v. KFx Medical, LLC

PTAB Petition:  IPR2016-01698; filed August 31, 2016

Patent at Issue:  U.S. Patent No. 8,926,663 ("System and method for attaching soft tissue to bone," issued January 6, 2015) claims a bone anchor comprising a base and a top so that the suture material may be compressed between the surfaces on the base and top to secure the suture to the anchor and an associated inserter.

Arthrex, Inc. is challenging the '663 patent on seven grounds as being anticipated under 35 U.S.C. § 102(b) (ground 1) or obviousness under 35 U.S.C. § 103(a) (grounds 2-7).  View the petition here.

Related Matters:  According to the petition, the '663 patent is involved in litigation in the District of New Jersey, captioned Arthrex, Inc. v. Joseph Tauro et al., 3:15-cv-06580-PSG-LHG.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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