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ARTICLE · 15 FEBRUARY 2019

Bioisosterism, By Itself, May Not Be Sufficient Motivation To Modify A Lead Compound

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In affirming the PTAB, the Federal Circuit also assumed for the purposes of its decision that compound 31 was an appropriate lead compound.

United StatesIntellectual Property
Stephen (Steve) G. Baxter
Stephen (Steve) G. Baxter
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In the recent decision, Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc., the Federal Circuit affirmed the PTAB's finding that Claims 8 to 13 of U.S. Reissue Patent 38,551 ("the '551 patent") owned by Research Corporation Technologies, Inc. ("RCT") are not unpatentable. Claim 8 of the '551 patent is directed toward (R)-N-benzyl-2-acetamido-3- methoxypropionamide ("BAMP") of the following formula:

,

which is useful in the treatment of, inter alia, epilepsy.

In the IPR filed by Argentum Pharmaceuticals LLC ("argentum"), the PTAB instituted two grounds: (1) obviousness of Claims 1 to 9 over Kohn 1991 and Silverman and (2) obviousness of Claims 10 to 13 over Kohn 1991, Silverman, and U.S. Patent 5,378,729 ("the '729 patent"). Argentum relied on Kohn 1991 for disclosure of compound 31, which it asserted to be a lead compound:

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