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2017 Pat. App. LEXIS 5430

Patent Trial and Appeal Board Representative Orders, Decisions and Notices

May 19, 2017, Decided

Case IPR2016-00297 1, Paper: 55; Patent 8,865,688 B2

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

Opinion

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.

I. BACKGROUND

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.

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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.

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.

CORE TERMS

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