Inter Partes Review of Pre-AIA Patents is Constitutional

Celgene Corp. v. Peter, Appeal Nos. 2018-1167, -1168, -1169 (Fed. Cir. July 30, 2019)

By John Isacson

Celgene owned two patents that pertained to methods of safely distributing potentially hazardous drugs.  The patents were challenged in an inter partes review (IPR) as obvious over the prior art.  The Board determined that the patents were obvious.

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Neptune Generics, LLC v. Eli Lilly & Co., No. 2018-1257 (Fed. Cir. Apr. 26, 2019).

By John Isacson

Cited Statutory Sections: 101 and 103

This appeal concerned 10 inter partes reviews (IPRs) filed by petitioners Neptune Generics, Fresenius Kabi USA and Mylan Laboratories against all of the claims of U.S. Patent No. 7,772,209, which is owned by Eli Lilly & Co. The ’209 patent concerns methods of administering pemetrexed disodium, an antifolate chemotherapeutic agent, in combination with folic acid and a methylmalonic acid (MMA) lowering agent, such as vitamin B12. The co-administration of the folic acid and the MMA lowering agent was represented as reducing the toxicity of the antifolate chemotherapy.

Continue reading “Neptune Generics, LLC v. Eli Lilly & Co., No. 2018-1257 (Fed. Cir. Apr. 26, 2019).”

Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

By Reza Mollaaghababa
In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” Continue reading “Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales”