Hedge Fund IPR Challenges to Pharma Patents: Latest Developments and Strategies to Strengthen Patents

Description

On Aug. 24, 2015, the PTAB declined to institute two hedge fund IPRs on the merits, leaving the issue of real party in interest for another day. There are now 22 IPR petitions that have been filed against pharmaceutical patent holders. For those who thought pharma patents were going to be generally immune from IPRs, the flurry of recent IPR petitions filed by hedge funds is a clear message that, so far at least, they were wrong.

In October, the PTAB instituted the first IPR petitions filed by a hedge fund. These latest developments may potentially change the landscape for both patent owners and hedge funds. This decision, in addition to the Board's denial of Celgene's sanctions motion against a hedge fund, demonstrates, at least for now, the Board's acceptance of hedge funds' ability to challenge patent in IPRs.

AIA post-grant proceedings were heralded by many as an effort to legislatively address the perceived problem of “bad” patents. It was widely considered to be a tool that would be used primarily in the computer and electronic industries, where most of those “bad” patents were thought to exist.

These recent IPRs have set off a great deal of controversy and confusion. For example, there are current lobbying efforts attempting to limit, perhaps legislatively, the ability of third parties to file IPR petitions. As of now, however, there is no standing requirement for filing an IPR petition.

The goal of this program is not to assess or debate standing or whether non-practicing entity (NPE) IPR petitioners are good, bad or indifferent. Rather, the goal is to report objectively what is being done in these IPRs, i.e., what kinds of pharma patents are being challenged, how those challenges are expressed, patent owner’s responses so far, and PTAB’s decisions to date.

Against this background, pharma patent owners can assess what is happening and what pharma patent owners can do now to strengthen patents against IPR attack, no matter the identity of the petitioner. According to reports in the media, at least one of these petitioners is not planning to settle in any IPR. (“We are going to challenge and invalidate patents through the IPR process ... (and) we are not going to settle,” Reuters.com, Jan. 7, 2015).

Listen as our expert panel, with extensive experience drafting, prosecuting and litigating patents before PTAB and federal courts, provides an analysis of the kinds of patents that have been attacked so far and the grounds of the attacks. The panel will also provide insight on what lessons innovative pharma patent owners can take away.