November 21, 2019

Law360 Covers Venable’s Representation of Grunenthal GmbH Before the Patent Trial and Appeal Board

2 min

On November 21, 2019, Law360 covered Venable’s representation of Grunenthal GmbH during a post-grant review before the Patent Trial and Appeal Board (PTAB).

According to the article, the PTAB appeared skeptical of Antecip Bioventures II LLC's argument that Grunenthal didn't do enough to prove that it can use a 2012 article published by Oxford University Press as prior art to invalidate a patent covering the use of neridronic acid to treat complex regional pain syndrome triggered by a bone fracture.

An attorney for Antecip said Grunenthal must do more than produce a document downloaded from the internet. The attorney said, for example, that it’s easy to retrieve a journal article from a library and obtain a declaration from the librarian attesting to its authenticity.

Dan Minion, who represented Grunenthal, said that getting such a declaration from a foreign institution isn’t so simple and might require subpoena power. Minion said that the board’s current process for dealing with printed publications is the “way it has to be” and that the proceedings would get bogged down otherwise.

The issue came up in a related proceeding concerning another Antecip patent, which the board invalidated in October. Antecip had contested that the article was prior art then as well, but the board said there was a "cluster of indicia to support the prior art status" of the article copy, including a publication date at the top of Nov. 30, 2012. The board also pointed to a copyright notice from the same year.

Minion told the panel during the two-hour hearing that there was no good reason to deviate from its finding in that case.