For our weekly SoCal IP Institute meeting on Monday, September 9th, 2019, we will discuss the following cases:
BioDelivery Sci. v. Aquestive Therapeutics (CAFC 2019) (available here)
BioDelivery petitioned for IPR review of several patents owned by Aquestive Therapeutics. The PTAB instituted review on a single ground in each of BioDelivery’s IPR petitions, all claims were sustained as patentable. In the meantime, the Supreme Court handed down a ruling that IPR proceedings must proceed in conformance to the petition, BioDelivery then moved to remand. The PTAB then modified the institution decisions, denied the petitions, and terminated the proceedings. On appeal the Federal Circuit held there was no requirement that once instituted, an IPR had to proceed to a final written decision.
Allergan Sales, LLC v. Sandoz, Inc. (CAFC 2019) (available here)
Allergan sued Sandoz for making generic drugs that infringed Allergan’s patents. A trial court found infringement and the Federal Circuit affirmed. Specifically, the parties disputed the limitations of the claims due to a “wherein” clause. Allergan successfully argued that during prosecution, the improved efficacy and safety of the claimed methods were unexpected results claimed by the wherein clause. This argument allowed the formulation to be novel and non-obvious.
All are invited to join us on Monday September 9th, 2019, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.