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2 June 2020Americas

PTAB to review Minnesota patent after Gilead petition

Gilead Sciences has persuaded the US Patent Trial and Appeal Board (PTAB) to review an antiviral patent owned by the  University of Minnesota (UM).

The PTAB, which has the power to invalidate patents, instituted inter partes review (IPR) of the UM patent after concluding that Gilead had a “reasonable” chance of proving its claims.

The move comes just six months after the US Supreme Court refused to overturn a lower court’s decision that UM was not entitled to state sovereign immunity from IPR challenges.

UM had argued that, as a state institution, its patents could not be challenged at the PTAB, in the same way that states cannot be sued in court.

But the US Court of Appeals for the Federal Circuit said that IPRs were administrative proceedings and not subject to state sovereign immunity in the same way as litigation.

UM filed an appeal at the Supreme Court, but certiorari was denied in January. That decision cleared the way for the PTAB to institute IPR based on Gilead’s complaint, which looks to have a UM patent covering an “enormous number of compounds” invalidated.

Among the compounds covered by the patent is sofosbuvir, the active ingredient in Gilead’s breakthrough Hepatitis C antiviral Sovaldi.

Gilead was just one of several parties who urged the Supreme Court to block UM from raising the state sovereign immunity defence at the PTAB.

The dispute made its way to the Supreme Court after the university sued Gilead, Broadcom subsidiary LSI, and Ericsson, seeking royalties for UM patents.

Each of the companies responded with a PTAB challenge against the respective patents asserted by UM.

The university asked the US Court of Appeals for the Federal Circuit to block the IPR petitions, on the grounds that it was a state institution.

But the Federal Circuit said that universities were not entitled to any immunity from administrative PTAB proceedings. Gilead had argued that UM should face the claims as IPRs are simply a review of whether a patent should have been granted or not, rather than a question of alleged wrongdoing on part of the patent owner.

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