In Rare Sua Sponte Order, PTAB Finds Using A Trademark Could Render Claim Indefinite

In a rare sua sponte action, the Board issued an order providing notice that the patent owner's amended claims in an ongoing PGR may be unpatentable. Galderma S.A. v. Medy-Tox, Inc., PGR2019-00062, Paper 54 (Feb. 24, 2021). The Board found that Medy-Tox's use of the trademark "BOTOX®" in the only independent claim of its U.S. Patent No. 10,143,728 ("the '728 Patent") provided potential grounds for finding the claims indefinite.

The underlying PGR began in September 2019 when Galderma filed a petition challenging the validity of the '728 patent, which generally relates to using an animal-protein-free botulinum toxin composition, instead of an animal-protein-containing botulinum toxin composition, to reduce glabellar lines, or face wrinkles. The '728 patent claimed that the animal-free toxin had a longer lasting effect than animal-containing botulinum toxins.