Case review: Merck defeated in BMS patent row


Ernest Linek

Case review: Merck defeated in BMS patent row

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In March, Merck unsuccessfully tried to invalidate a patent owned by Bristol-Myers Squibb covering metastatic skin cancer treatment. Ernest Linek of Banner & Witcoff reviews the arguments and the court’s ruling.

On March 29, 2016, the US District Court for the District of Delaware denied Merck’s motion to dismiss a Bristol-Myers Squibb (BMS) patent under Federal Rule of Civil Procedure 12(b)(6) regarding the patent ineligibility (based on §101) of a method of treating a metastatic melanoma.

The court’s action could signal to the pharmaceutical industry that some methods of treatment claims, such as those in US patent number 9,073,994, can be the subject of §101 ineligibility analysis. Claim 1 of the patent reads as follows:

1. A method of treating a metastatic melanoma comprising intravenously administering an effective amount of a composition comprising a human or humanized anti-PD-1 monoclonal antibody and a solubilizer in a solution to a human with the metastatic melanoma, wherein the administration of the composition treats the metastatic melanoma in the human.

Ernest Linek, Banner & Witcoff, Bristol-Myers Squibb, Merck, infringement, patent, Mayo v Prometheus, Alice,