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ARTICLE · 24 FEBRUARY 2021

No Unpatentability In A Successful Motion To Amend

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In Mylan Labs. Ltd. v. Aventis Pharma S.A., IPR2016-00712, Paper 112 (P.T.A.B. Oct. 22, 2019), aff'd without opinion (Fed. Cir. Jan. 15, 2021), the Patent Trial and Appeal Board granted Patent Owner's motion to amend, ...

United StatesIntellectual Property
Amanda Murphy
Amanda Murphy
Stacy Lewis
Stacy Lewis
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Holding

In Mylan Labs. Ltd. v. Aventis Pharma S.A., IPR2016-00712, Paper 112 (P.T.A.B. Oct. 22, 2019), aff'd without opinion (Fed. Cir. Jan. 15, 2021), the Patent Trial and Appeal Board ("PTAB") granted Patent Owner's motion to amend, finding that Petitioner had not shown the proposed substitute claims to be unpatentable.

Background

The drug at issue was JEVTANA® (cabazitaxel), which is indicated for use in combination with prednisone for the treatment of patients with metastatic castration-resistant prostate cancer. Mylan challenged claims 1-5 and 7-30 of Orange Book-listed U.S. Pat. No. 8,927,592 ("the '592 patent") as unpatentable under 35 U.S.C. § 103(a). The '592 patent, along with two continuation patents that issued from it, moved the patent expiration date for JEVTANA® out about five years beyond the other Orange Book-listed patents. This can be seen from the present Orange Book report on cabazitaxel:

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