Analyzing AIA reviews of Orange Book-listed patents to date – strategic considerations in filing and conducting AIA review proceedings
Attorneys from Sughrue Mion and other international law firms recently participated in the annual Symposium for Managing Pharmaceutical, Biotechnology and Chemical Patent Portfolios, hosted by the Institute of Intellectual Property Research and Development. As a member of the group from Sughrue Mion, I presented two lectures – one on strategic considerations in deciding whether to file AIA reviews of pharmaceutical patents (i.e., patents listed in the Orange Book), and a second on strategies and pitfalls in conducting an inter partes review of a pharmaceutical patent, including analysis of each of the unique final written decisions to date.
In Edmund Optics, Inc. v. Semrock, Inc. the PTAB addressed whether a petitioner, who did not put on evidence or arguments showing that the prior art enables the claimed invention in its petition, may do so in its reply, if the patentee argues that the prior art is non-enabling in its response. IPR 2014-00599, Paper No. 72 at 22-23. In that case the PTAB instituted inter partes review of all claims requested by the Petitioner, claims 33-36, 39-41, 44, and 45 of U.S. Patent No. 7,119,960 C1 (“the ʼ960 Patent”). Id. at 2. Petitioner asserted that all of the claims would have been obvious over a treatise by “MacLeod,” and also that claim 33 is anticipated by Macleod. Id. at 6.