2017 Pat. App. LEXIS 5430
Patent Trial and Appeal Board Representative Orders, Decisions and Notices
May 19, 2017, Decided
Case IPR2016-00297 , Paper: 55; Patent 8,865,688 B2
USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.
ROESEL, Administrative Patent Judge.
FINAL WRITTEN DECISION
35 U.S.C. § 318 and 37 C.F.R. § 42.73
In this inter partes review, instituted pursuant to 35 U.S.C. § 314, GeneriCo, LLC ("GeneriCo"), Flat Line Capital, LLC ("Flat Line"), Mylan Pharmaceuticals Inc. ("Mylan"), Foxhill [*2] Capital Partners ("Foxhill"), and MycoNovo, Inc. ("MycoNovo") (collectively, "Petitioner") challenge the patentability of claims 1 and 16 of U.S. Patent No. 8,865,688 B2 (Ex. 1001, "the 688 patent"), owned by Dr. Falk Pharma GmbH ("Falk" or "Patent Owner").
We have jurisdiction under 35 U.S.C. § 6. This final written decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 16 of the 688 Patent are unpatentable.
A. Procedural History
On December 8, 2015, GeneriCo and Flat Line filed a Petition requesting inter partes review of claims 1 and 16 of the 688 Patent. Paper 1 ("Pet."). On March 15, 2016, Patent Owner filed a Preliminary Response. Paper 11 ("Prelim. Resp.").
On June 10, 2016, we instituted inter partes review of the challenged claims. Paper 13 ("Decision to Institute" or "Dec.").
On September 14, 2016, Patent Owner [*3] filed a Patent Owner Response. Paper 24 ("PO Resp.").
On November 30, 2016, we granted motions for joinder filed by Mylan, Foxhill, and MycoNovo. Paper 33.
On December 23, 2016, Petitioner filed a Reply to Patent Owner's Response. Paper 36 ("Pet. Reply" ).
With the Petition, GeneriCo and Flat Line filed a Declaration of George A. Digenis, Ph.D. Ex. 1002. Patent Owner cross-examined Dr. Digenis on August 4, 2016, and filed a transcript of his deposition testimony as Exhibit 2032.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 5430 *
GENERICO, LLC, FLAT LINE CAPITAL LLC, MYLAN PHARMACEUTICALS INC., FOXHILL CAPITAL PARTNERS, and MYCONOVO, INC., Petitioner, v. DR. FALK PHARMA GMBH, Patent Owner.
ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion below has been designated a routine opinion.
patent, mesalamine, granulate, food, press release, remission, ulcerative colitis, score, stomach, teach, dose, clinical, recite, coating, pellet, subscores, prior art, absorb, pharmaceutical, patient, skill, intestine, gastrointestinal, pertain, ileum, disease, meal, pharmacokinetic, ph-dependent, antacids