© 2018 The Texas Lawbook.
By Natalie Posgate
(Feb. 21) – The U.S. Patent Trial and Appeal board has ruled that it will review a pharmaceutical patent associated with the treatment of conditions such as asthma, allergies, allergic rhinitis and dermatitis. The patent is owned by Seattle-based Immunex.
This is good news for a McKool Smith client, the U.S. subsidiary of French pharmaceutical giant Sanofi, which claims the patent stands in the way of its new medication, Dupixent, which is the first FDA-approved biologic drug that can treat eczema.
McKool Smith founder Mike McKool led the petition on behalf of Sanofi.
In a Feb. 15 decision, the PTAB ruled in favor of Sanofi, determining that Sanofi “has established a reasonable likelihood that it would prevail in showing the unpatentability” of certain claims of Immunex’s patent, called the ‘487 patent.
The board also ruled that Sanofi’s challenge met the standard set out in its recent General Plastic ruling from September, which set precedent for when petitioners can refile rejected patent challenges, making it so challengers simply can’t adjust their petition multiple times.
The PTAB emphasized that Sanofi’s argument was sufficiently different from an earlier challenge the board had rejected.
“Having considered each of the General Plastics factors and the facts and circumstances of this case… we are not inclined to exercise our discretion to deny the petition,” the PTAB wrote. “We are persuaded that the grounds are sufficiently different in each petition that [Sanofi] did not appear to ‘strategically stage its prior art and arguments in multiple petitions…’”
Sanofi’s legal battle with Immunex and its parent company, Amgen, first began last March, when Sanofi filed suit against the two companies in Boston federal court in an attempt to avoid infringement litigation ultimately brought a few weeks later in California. Sanofi had asked the Boston court to issue an order declaring that its eczema drug doesn’t infringe on an Amgen patent tied to a failed asthma treatment.
The McKool Smith team also included Austin principals John Campbell and John Garvish.
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