Not a Lexis Advance subscriber? Try it out for free.

2017 Pat. App. LEXIS 13020

Patent Trial and Appeal Board Representative Orders, Decisions, and Notices

December 11, 2017, Decided

Case IPR2017-01910, Paper No. 10; Patent 6,774,122 B2

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.


OBERMANN, Administrative Patent Judge.


Denying Institution of Inter Partes Review

37 C.F.R. § 42.108


Petitioner Fresenius-Kabi USA LLC ("Petitioner") filed a Petition requesting an inter partes review of claims 1, 2, 5, and 9 U.S. Patent No. 6,774,122 B2 (Ex. 1001, "the '122 Patent"). Paper 1 ("Pet."). AstraZeneca AB ("Patent Owner") filed a Preliminary Response to the Petition. Paper 8 ("Prelim. Resp.").

Institution of an inter partes review is authorized by statute when "the information presented in the petition . . . and [*2]  any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 35 U.S.C. § 314; see  37 C.F.R. §§ 42.4, 42.108. Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we decline to institute an inter partes review of the '122 Patent.

A. Related Applications and Proceedings

The '122 Patent shares substantially the same specification with U.S. Patent Nos. 7,456,160 B2 ("the '160 Patent"), 8,329,680 B2 ("the '680 Patent"), and 8,466,139 B2 ("the '139 Patent), which are related as follows. The '139 Patent issued from Application No. 13/602,667 ("the '667 Application"), which is a continuation of Application No. 12/285,887  [*3]  ("the '887 Application") (now the '680 Patent), which is a continuation of Application No. 10/872,784 ("the '784 Application") (now the '160 Patent), which is a continuation of Application No. 09/756,291("the '291 Application") (now the '122 Patent). This chain of continuations was first filed on January 9, 2001, and each patent in the family claims benefit of foreign priority to applications filed April 12, 2000, and January 10, 2000.

According to the parties, the '122 Patent has been the subject of numerous district court litigations. See Pet. 4-5; Paper 6, 2-3. According to Patent Owner, the related '160, '680, and '139 Patents have also been involved in district court proceedings. Paper 6, 3.

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

2017 Pat. App. LEXIS 13020 *

FRESENIUS-KABI USA LLC,; Petitioner,; v.; ASTRAZENECA AB,; Patent Owner.

Notice: [*1] 

ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion below has been designated a routine opinion.


fulvestrant, patent, inject, intramuscular, castor oil, prelim, benzoate, benzyl, prior art, disclosure, volume, subcutaneous, dose, concentrate, ethanol, solubility, patient, benzyl alcohol, *** cancer, excipients, plasma, tamoxifen, blood, ordinary skill, artisan, invent, therapeutically, disease, predict, composite