PTAB Requests Additional Briefing on Hedge Fund IPR Questions: A Decision May Be Near

Foley & Lardner LLP

On Sept. 1, 2015, the PTAB issued an order in Coalition for Affordable Drugs (CFAD) v. NPS Pharmaceuticals for the parties to brief the following questions in 7 business days:

“1) the standing requirement for challenging the validity of that patent in an inter partes review under 35 U.S.C. § 311(a);

2) to what extent, if any, the business objective or intent of the Petitioner should be considered in reaching a determination of abuse of process;

3) the intent of Congress to provide an alternative to litigation and to provide a mechanism to increase patent quality by allowing expedited administrative patent challenges; and

4) the resulting social costs/benefits associated with a decision to address the merits of the Petitions versus a decision to dismiss the Petitions for abuse of process without reaching the merits of the Petitions.”

The request for additional briefing could signal that PTAB is going to address the question of Kyle Bass’ hedge fund standing to file IPRs head on in this particular proceeding, perhaps within a month or so after the briefing.

As noted in our earlier post, “Kyle Bass Loses Round 1 of IPR Attack Against Pharma/Biotech Patents”, the PTAB declined to address the standing or abuse of process issue in an earlier CFAD IPR petition against Acorda, instead declining to institute on the basis that the particular cited prior art in that petition was not publicly accessible to qualify as prior art. The request for additional briefing on the questions above implies that the PTAB may be readying itself to issue a detailed opinion on the issues.

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