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ARTICLE · 31 OCTOBER 2025

Divergent Claim Construction Results In Discretionary Denial

Jones Day
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In a recent decision, Acting Director Coke Morgan Stewart granted Patent Owner's request for discretionary denial in Sun Pharmaceuticals Industries Inc. v. Nivagen Pharmaceuticals, Inc., IPR2025-00893.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
Evan Tassis
Evan Tassis
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In a recent decision, Acting Director Coke Morgan Stewart granted Patent Owner's request for discretionary denial in Sun Pharmaceuticals Industries Inc. v. Nivagen Pharmaceuticals, Inc., IPR2025-00893. While some factors weighed against denial, the Acting Director emphasized Patent Owner's different claim construction positions in the current proceeding and the parallel district court case as favoring denial.

On April 22, 2025, Sun Pharmaceuticals Industries Inc. ("Petitioner") filed a petition requesting an inter partes review of U.S. Patent No. 11,878,076 ("the '076 Patent") directed to compositions of phenobarbital. On July 18, 2025, Nivagen Pharmaceuticals, Inc. ("Patent Owner") filed a request for discretionary denial arguing that the IPR should be discretionarily denied partly because the projected final written decision would issue before the parallel district court trial.

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