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Patent Trial and Appeal Board Genentech

Goodwin

Genentech and Partners Voluntarily Dismiss IPR Appeals Related to Genentech’s ACTEMRA® (Tocilizumab)

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​​​​​​​On February 12, 2024, Chugai, Genentech, and Hoffmann-La Roche filed a motion for voluntary dismissal of their appeals of the PTAB’s Final Written Decisions in IPR2022-00578 and IPR2022-00579. The appeals concerned...more

Goodwin

PTAB Grants Petitioner Celltrion’s Motion To Submit Supplemental Information in Tocilizumab IPR

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​​​​​​​The U.S. Patent Trials & Appeals Board (Board) recently issued an Order granting Celltrion’s motion to submit supplemental information in its IPR (2022-00578) against U.S. Pat. No. 8,580,264, owned by Chugai Seiyaku...more

Goodwin

PTAB Institutes Another IPR on a Tocilizumab Patent Challenged by Fresenius

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On March 3, 2022, the PTAB instituted another inter partes review of U.S. Patent Nos. 8,580,264 (“the ’264 patent”), owned by Chugai and Roche. Fresenius filed a petition for inter partes review of the ‘264 patent,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genentech, Inc. v. Iancu (Fed. Cir. 2020)

The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genentech, Inc. v. Hospira, Inc. (Fed. Cir. 2020)

Last week, the Federal Circuit affirmed invalidation of claims to methods for reducing Protein A leaching in affinity column chromatographic methods important inter alia in purifying monoclonal antibodies, in Genentech, Inc....more

Troutman Pepper

Attorney General’s Office May Weigh In on Constitutionality of IPRs involving Pre-AIA Patents

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The 2011 America Invents Act (AIA) provided a variety of new ways to administratively challenge patents, including the now widely used inter partes review (“IPR”) procedure. In two recent appeals of IPR decisions, Genentech...more

Goodwin

Biosimilar-Related Appeals Pending before the Federal Circuit

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There are presently seven biosimilar-related appeals pending before the Federal Circuit. Two of those appeals, Amgen v. Sandoz (Case No. 18-1551) and Amgen v. Coherus (Case No. 18-1993), are from district court judgments in...more

Goodwin

Trastuzumab IPR Updates

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Last month, the PTAB issued decisions on two petitions, IPR2017-02063 and IPR2018-00016, filed by Pfizer against one of Genentech’s Herceptin® (trastuzumab) patents, U.S. Patent No. 7,846,441 (“the ‘441 patent”). The ‘441...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Life Sciences Report - January 2018

About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Micro Labs Ltd. v. Santen Pharmaceutical Co. - PTAB Petition: IPR2017-01434; filed May 12,...more

Fish & Richardson

The Herceptin® Battle Moves into the District Court

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On November 17, 2017, Genentech filed suit against Pfizer in the District of Delaware, alleging that Pfizer’s biosimilar of Herceptin® infringes forty Genentech patents covering Herceptin® and its methods of use and...more

Goodwin

Recent IPR Updates

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The PTAB has been a busy place for biologics patents in the past few weeks. Here are some of the highlights...more

Jones Day

Genentech to Defend 3 of 4 Herceptin® Patents Challenged by Hospira

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At least 19 IPRs have been filed against seven of Genentech’s patents covering its blockbuster antibody drug Herceptin® (trastuzumab). On July 27, 2017, the PTAB instituted IPRs filed by Hospira, Inc. (a subsidiary of Pfizer)...more

Goodwin

Board Grants Hospira Mixed Results on its Five Petitions for IPR of Genentech’s Trastuzumab Patents

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The Board granted Hospira a mixed result in its numerous challenges to Genentech’s patents directed to different aspects of Genentech’s trastuzumab product: ...more

Knobbe Martens

PTAB Institutes Two IPRs in Hospira v. Genentech Avastin Dispute

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Bevacizumab (Avastin®) is the subject of the widely watched “patent dance” dispute between Genentech and Amgen regarding Amgen’s proposed biosimilar. Hospira, however, (now owned by Pfizer) has chosen a different path in...more

Goodwin

PTAB Institutes IPR of Genentech’s Bevacizumab Patent

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The PTAB has instituted inter partes review of Genentech’s U.S. Patent 7,622,115, granting Hospira’s petition in IPR2016-01771. According to the institution decision, the patent is directed to methods for treating cancer in...more

Goodwin

PTAB Institutes IPR in Hospira’s Challenge to Genentech’s Trastuzumab Patent

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The PTAB has instituted IPR2016-01837, in which Hospira challenges Genentech’s U.S. Patent 7,807,799. The institution decision extends to all challenged claims, claims 1-3 and 5-11. ...more

Goodwin

PTAB Denies Institution of IPR on Genentech’s Protein Folding Patent

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The PTAB has denied institution of IPR2016-01608, in which Bioeq IP AG sought review of Genentech’s U.S. Patent 6,716,602. That patent is directed to methods for increasing the yield of a heterologous recombinant protein...more

Akin Gump Strauss Hauer & Feld LLP

Petitioner Must Show Actual Injury to Establish Standing to Appeal PTAB Final Written Decision

In this case, the Federal Circuit determined that in its nearly 35-year history, it had not established the legal standard for demonstrating standing in an appeal from a final agency action. The underlying dispute arose from...more

Patterson Belknap Webb & Tyler LLP

Four Years of IPRs: Lessons from Proceedings for the Cabilly II Patent

It has been four years since the first inter partes review proceedings were filed in the United States. The first IPR petition, filed on September 16, 2012 (the first day IPRs became available), made it all the way to the...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Life Sciences Report - September 2016

About the PTAB Life Sciences Report: Each week we will report on recent developments at the PTAB involving life sciences patents. Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH - PTAB Petition: IPR2016-01665;...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Life Sciences Report - August 2016

About the PTAB Life Sciences Report: Each week we will report on recent developments at the PTAB involving life sciences patents. Illumina, Inc. v. Scripps Research Institute - PTAB Petition: IPR2016-01619; filed...more

Knobbe Martens

Cabilly II IPR Update: Sanofi-Aventis U.S. LLC v. Genentech, Inc.

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In July of 2015, Sanofi filed petition for an inter partes review (IPR2015-01624) for 15 claims of U.S. Pat. No. 6,331,415 (“Cabilly II”). In the antibody field, the Cabilly family of patents is well known and is believed to...more

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