- Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentablePTAB · Mar 31, 2020 · IPR2018-01711 · APJ James A Worth · IPR · Final written decision
The Board held claims 1–18 of the ’907 patent not unpatentable over Olesen, Tan, and Queen under §103, finding Lilly had not met its burden.
RulingsFinal written decision- Skill levelSkill level board ownOther
“appreciable difference in the parties’ respective definitions of a person of ordinary skill in the art. Inst. Dec. 8. Accordingly, we determined for purposes of our Institution Decision that a person of ordinary skill in the art” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“2. “effective amount” The term “effective amount” is recited in all of the independent” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“the cross-examination of Dr. Ferrari as beyond the scope of Dr. Ferrari’s direct testimony. Mot. Excl. 9. Upon review of the Ferrari Declaration, Exhibit 2268, we agree that questions on cyclic AMP were beyond the scope of the Ferrari Declaration. Accordingly, we grant this aspect of the motion.” slip op. at 159
Patent outcomesUS 9,884,907 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,884,907 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentablePTAB · Mar 31, 2020 · IPR2018-01710 · APJ Richard J Smith · IPR · Final written decision
The Board found that Lilly did not prove claims 1, 3, 4, 8–17, 19, 20, and 24–31 of the ’045 patent, or claims 1–18 of the ’907 and ’908 patents, unpatentable over Olesen, Tan, and …
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“appreciable difference in the parties’ respective definitions of a person of ordinary skill in the art. Inst. Dec. 8. Accordingly, we determined for purposes of our Institution Decision that a person of ordinary skill in the art” slip op. at 13
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“conclusion based on underlying factual findings. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018)). The underlying factual findings include whether the reference was publicly accessible. Id. (citing In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011)). In an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Id. (citing Medtronic Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)); see also In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility).” slip op. at 152
- Strike new argumentNew argument consideredDenied
“(Ex. 2239), and also the opportunity to submit a Sur-reply (Paper 43). Therefore, we determine that Patent Owner has failed to meet its burden to show that the arguments and evidence should be stricken. See 37 C.F.R. § 42.20; Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016); see also Anacor Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (reply may document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness). Accordingly, this aspect of the motion is denied.” slip op. at 163
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93
Patent outcomesUS 8,586,045 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,586,045 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentablePTAB · Mar 31, 2020 · IPR2018-01712 · APJ James A Worth · IPR · Final written decision
The Board held claims 1–18 of the ’908 patent not unpatentable because Lilly failed to prove the Olesen, Tan, and Queen obviousness ground by a preponderance of the evidence.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“form, not relevant, vague, mischaracterized the witnesses’ prior testimony, called for a legal conclusion, lacked clarity, or contained compound questions. Mot. Excl. 7–12. We consider Patent Owner’s arguments in this regard to address issues of weight rather than admissibility, and we deny these aspects of the motion. See Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (sitting as a non-jury tribunal, the Board may assign appropriate weight to evidence presented) (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)).” slip op. at 158
- Strike new argumentNew argument consideredDenied
“(Ex. 2239), and also the opportunity to submit a Sur-reply (Paper 43). Therefore, we determine that Patent Owner has failed to meet its burden to show that the arguments and evidence should be stricken. See 37 C.F.R. § 42.20; Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016); see also Anacor Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (reply may document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness). Accordingly, this aspect of the motion is denied.” slip op. at 163
Patent outcomesUS 9,884,908 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,884,908 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01712 · APJ James A Worth · IPR · Rehearing
The Board denied Teva’s rehearing request, finding it had not overlooked or misapprehended arguments when it declined supplemental Arthrex briefing and denied a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
NonePatents in suitUS 9,884,908 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01711 · APJ James A Worth · IPR · Rehearing
The Board denied Patent Owner’s requests for rehearing of its denial of supplemental briefing and a stay concerning Arthrex.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
NonePatents in suitUS 9,884,907 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01710 · APJ Jennifer Meyer Chagnon · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding it had not overlooked or misapprehended the arguments for supplemental Arthrex briefing or a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
NonePatents in suitUS 8,586,045 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01427 · APJ James A Worth · IPR · Rehearing
The Board denied Teva’s rehearing request, finding it had not overlooked or misapprehended arguments when it declined supplemental Arthrex briefing and denied a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
NonePatents in suitUS 8,597,649 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01426 · APJ James A Worth · IPR · Rehearing
The Board denied Teva’s request for rehearing, finding it had not misapprehended or overlooked arguments when it declined supplemental Arthrex briefing and denied a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Teva authorization to file supplemental briefing addressing Arthrex and a motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the limitations of [the] Arthrex remedy and the constitutional issues that remain to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent Owner’s argument in this regard. Instead, we declined to consider Patent Owner’s constitutional arguments, as the issue has been addressed by the Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the parties was not necessary to come to the decision to decline consideration of these constitutional arguments.” slip op. at 3
NonePatents in suitUS 9,890,211 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01425 · APJ James A Worth · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended arguments in denying supplemental briefing and a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Teva authorization to file supplemental briefing addressing Arthrex and a motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the limitations of [the] Arthrex remedy and the constitutional issues that remain to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent Owner’s argument in this regard. Instead, we declined to consider Patent Owner’s constitutional arguments, as the issue has been addressed by the Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the parties was not necessary to come to the decision to decline consideration of these constitutional arguments.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Teva authorization to file supplemental briefing addressing Arthrex and a motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the limitations of [the] Arthrex remedy and the constitutional issues that remain to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent Owner’s argument in this regard. Instead, we declined to consider Patent Owner’s constitutional arguments, as the issue has been addressed by the Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the parties was not necessary to come to the decision to decline consideration of these constitutional arguments.” slip op. at 3
NonePatents in suitUS 9,890,210 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01424 · APJ James A Worth · IPR · Rehearing
The Board denied Teva’s rehearing request, finding it had not misapprehended or overlooked arguments when it declined supplemental briefing on Arthrex and denied a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
- Other 314aOther
“overlooked that a brief stay until the Arthrex mandate issues will conserve agency resources, and will avoid taking further steps in this proceeding while an Appointments Clause violation still exists.” Req. Reh’g 5, 14–15. Regarding Patent Owner’s request for a stay of the proceedings, we disagree that we overlooked Patent Owner’s arguments. Instead, we note that except in cases involving the unique nature of the sovereign immunity right of the States, see, e.g., Taiwan Semiconductor Manufacturing Co. v. STC.UNM, IPR2019-01410, Paper 8 at 2–3 (PTAB Oct. 11, 2019) (cited by Patent Owner at Req. Reh’g 14–15), the Board generally declines to stay proceedings pending an appeal to the Federal Circuit or the Supreme Court. See, e.g., Askeladden LLC v. Purple Leaf, LLC, IPR2016-01720, Paper 22 at 2 (PTAB Sept. 11, 2017) (denying authorization to file a motion to stay pending the outcome of an appeal to the Supreme Court).4 The present proceedings simply do not fall within the narrow category of cases in which the Board generally entertains a stay pending Federal Circuit review.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“Teva authorization to file supplemental briefing addressing Arthrex and a motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the limitations of [the] Arthrex remedy and the constitutional issues that remain to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent Owner’s argument in this regard. Instead, we declined to consider Patent Owner’s constitutional arguments, as the issue has been addressed by the Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the parties was not necessary to come to the decision to decline consideration of these constitutional arguments.” slip op. at 3
Discretionary denialPatents in suitUS 9,346,881
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.