After a slow start, AIA challenges are now a frequent life-or-death risk for biopharmaceutical patents, totaling 212 in 2016, more than twice the number two years earlier. Exemplifying the PTAB’s power was the Federal Circuit’s April decision in Novartis v. Noven that upheld the invalidation by the PTAB of claims covering Novartis’ dementia patch Exelon, even though both the Federal Circuit and Delaware’s federal court had earlier ruled otherwise. Our panelists, all litigators with extensive pharma patent PTAB experience, will spell out winning strategies specific to the industry for both patent owners and challengers, and also will highlight lessons for patent prosecutors that emerge from PTAB practice. Topics to be discussed include:
- The role of objective indicia of nonobviousness. Pharma patents do put up a better fight at the PTAB than other technologies: last year, a third of biotech/pharma claims survived PTAB trials, almost three times the survival rate of electrical/computer claims;
- The surge in PGRs challenges to pharma patents on Section 112 grounds of indefiniteness and enablement;
- The relationship between district court Hatch-Waxman litigation and PTAB challenges;
- How to inoculate continuations or divisionals of challenged patents to relevant prior art.
Speakers:
- Eldora Ellison, Sterne Kessler Goldstein & Fox, PLLC
- Cynthia Lambert Hardman, Goodwin Procter LLP
- Kerry Taylor, Knobbe, Martens, Olson & Bear LLP
