On May 6, 2019, the Patent Trial and Appeal Board (“the Board”) denied institution of inter partes review (IPR) of U.S. Patent No. 5,847,170 (“the '170 patent”), in favor of Venable Fitzpatrick’s client Sanofi Mature IP (“Sanofi”). The '170 patent covers the active ingredient in Sanofi’s JEVTANA® product, a drug indicated for the treatment of patients with metastatic castration-resistant prostate cancer previously treated with a docetaxel-containing regimen.
Venable Fitzpatrick previously defended this Sanofi patent twice: first by preventing institution of an IPR filed by another party in 2016, and second at an eight-day bench trial in the District of New Jersey in 2017.
Here, the Board exercised its discretion to deny institution, finding substantial similarities between the arguments and references of Petitioner Neptune Generics, LLC, and those that had been presented unsuccessfully in the previously denied petition for IPR and district court litigation. To the extent that this second petition raised any new arguments, the Board found them inadequately developed or unsupported. Taking into consideration its goal “to make the patent system more efficient,” the Board denied institution.