Allergan survives Combigan patent challenge

Pharmaceutical company Allergan has survived an attempt by hedge fund Ferrum Ferro Capital (FFC) to invalidate a patent covering its Combigan (brimonidine and timolol) drug after the Patent Trial and Appeal Board (PTAB) opted not to institute an inter partes review (IPR).

FFC claimed that US patent number 7,030,149, which covers glaucoma treatment drug Combigan, was invalid on the grounds that it was obvious.

In March, FFC petitioned the PTAB to institute an IPR, but this was rejected on September 21.

The dispute hinged on FFC’s argument that the statement “without loss of efficacy”, which is outlined in claim 4 of the ‘149 patent, is not a claim limitation under the broadest reasonable interpretation (BRI) standard, which is applied by the US Patent and Trademark Office (USPTO).

FFC cited a 2013 ruling by the US Court of Appeals for the Federal Circuit on the validity of the term.

Judge Timothy Dyk, in a dissenting opinion on the claim construction, said that the phrase is not a limitation and is therefore obvious. The phrase “without loss of efficacy”, for Dyk, was not a “separate step” but rather a “result of the claimed method”.

FFC cited Dyk’s opinion in its IPR petition, stating that he adopted a broader interpretation than the other judges.

The hedge fund said that the PTAB should therefore come to the same conclusion on the application of the BRI.

In response to the IPR petition, Allergan said FFC “wrongly argues” that Dyk adopted a different claim construction to the other judges.

Instead, Dyk “simply parted company” on the interpretation of claim 4 of the ‘149 patent.

Administrative Patent Judge Jacqueline Wright Bonilla agreed with Allergan.

She said: “Petitioner does not persuade us that ‘without loss of efficacy’ is not a limitation in claim four, regardless of whether we apply the BRI or the ‘Phillips’ standard of claim construction”.

Bonilla was joined by the two other judges presiding over the case in deciding not to institute an IPR.

The dispute between the parties has proven to be contentious.

Last month, FFC hit back at Allergan’s claim that the IPR petition was filed simply to “extort” money.

Allergan had sued FFC at the US District Court for the Central District of California in June alleging that it was liable for malicious prosecution because its IPR was filed with an “unlawful purpose”.

The hedge fund responded by claiming that the lawsuit violated California’s Anti-SLAPP laws, designed to stop parties from intentionally burdening another party with a legal complaint.