Venable Secures IPR on Behalf of Gilead Challenging University of Minnesota’s Virus Treatment Patent

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On May 28, 2020, the Patent Trial and Appeal Board granted Venable client Gilead’s petition to institute an inter partes review (IPR) challenging U.S. Patent No. 8,815,830, owned by the University of Minnesota.

The University of Minnesota sued Gilead in 2016, alleging that Gilead’s blockbuster multi-billion-dollar hepatitis C drugs that include sofosbuvir infringe its patent. Gilead filed four petitions challenging the validity of the patent at issue, and the district court case was paused pending the board's ruling on the challenges.

The board denied three of the petitions. The fourth petition argued that part of the university’s patent was invalid for being anticipated by an earlier patent application publication known as Sofia, which discloses a compound for treating viral infections. Upon review, the board found that Venable’s petition satisfied the threshold requirement, showing Gilead has a reasonable likelihood of winning the argument that the patent is invalid.

The Venable team included Alicia Russo, Fred Millett, Robert Schwartz, and Stephen Yam. Venable serves as co-counsel alongside Bartlit Beck LLP, which is handling the district court litigation.

The decision was covered by Law360.