Celgene Gets Another Shot on Drug Delivery Patent Claim

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By Dana A. Elfin

Celgene Corp. will get another chance to argue one of its patent claims related to avoiding side effects caused by cancer drugs is valid ( Coalition for Affordable Drugs VI LLC v. Celgene Corp. , P.T.A.B., No. IPR2015-01096, 9/8/17 ).

The Patent Trial and Appeal Board said the New Jersey-based company was entitled to a rehearing on whether one of its patent claims related to drug delivery methods was obvious. Dallas hedge-fund manager Kyle Bass’s Coalition for Affordable Drugs had asked the U.S. Patent and Trademark Office’s board to review the Celgene patent, which relates to Celgene’s cancer drugs Pomalyst (pomalidomide) and Revlimid (lenalidomide).

The board’s decision means Celgene will have the opportunity to overturn one part of the PTAB’s October 2016 decision finding its U.S. Patent No. 6,315,720 invalid.

Since 2015, Bass has filed a total of 37 petitions challenging several drug companies’ patents before the PTAB, mostly through the Coalition for Affordable Drugs. Bass, who claimed many drug patents had been improperly granted and unfairly protected drug companies’ monopoly prices on drugs, has had mixed success.

Mixed Success

The PTAB agreed to review 21 of the petitions filed by Bass. Out of those 21 reviews, the PTAB issued final written decisions in 19 of the challenges, ruling for Bass in 10 decisions.

On Celgene’s ‘720 patent, Administrative Patent Judge Grace Karaffa Obermann granted Celgene’s petition for a rehearing on one of the claims in the patent because the coalition didn’t prove the claim more likely than not was unpatentable for obviousness. That claim covers requiring diagnostic genetic testing information be obtained from patients for diagnosis and treatment to make sure the drugs aren’t given to patients likely to suffer adverse side effects from the drugs.

Obermann left intact the rest of the board’s 2016 decision, in which the PTAB found multiple other claims of the ‘720 patent weren’t patentable. The ‘720 patent covers methods for delivering a drug to a patient while avoiding the occurrence of an adverse side effect known as, or suspected of, being caused by the drug.

Michael P. Tierney, vice chief administrative patent judge, and Tina E. Hulse, administrative patent judge, also heard argument in the case.

Bloomberg BNA contacted the coalition and Celgene for comment but no one was available to respond.

Skiermont Puckett LLP represented the Coalition for Affordable Drugs.

Quinn Emanuel Urquhart & Sullivan LLP and Jones Day represented Celgene.

To contact the reporter on this story: Dana A. Elfin in Washington at delfin@bna.com

To contact the editor responsible for this story: Randy Kubetin at RKubetin@bna.com

For More Information

The PTAB's final written decision is available at http://src.bna.com/sso.

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