Regeneron convinces PTAB to review Novartis syringe patent
The US Patent Trial and Appeal Board (PTAB) has granted a review of a Novartis syringe patent following a challenge from biotech giant Regeneron.
The board will conduct an inter partes review (IPR) of US patent number 9,220,631 after deciding there was a “reasonable likelihood” that claims of the patent could be invalidated in a challenge.
The patent is titled “Syringe” and “relates to a syringe, particularly to a small volume syringe… suitable for ophthalmic injections” and was granted in December 2015.
Claims 1-26 of the ‘631 patent, will be reviewed in an upcoming trial within a year, according to the PTAB decision granting the review handed down on Tuesday, October 26 2021.
Regeneron had attempted to file an IPR petition of the patent in July 2020 but was denied due to a concurrent US International Trade Commission (ITC) investigation.
Background
Novartis first filed a complaint claiming Regeneron infringed on the ‘631 patent with the US District Court for the Northern District of New York on 19 June 2020.
The complaint said that Regeneron had infringed on its syringe invention through its EYELEA product line—a pre-filled syringe used to treat certain ophthalmic conditions
In response, Regeneron filed its own complaint with the US District Court for the Southern District of New York against Novartis and Vetter Pharma seeking a judgment that their conduct violates the Sherman Act and that the ‘631 patent be declared unenforceable.
Novartis then filed a complaint with the ITC in June 2020 alleging that Regeneron infringed claims 1-6 and 11-26 of the ‘631 patent but moved to terminate the investigation on the basis of withdrawal of the complaint in April 2021.
Regeneron had moved to challenge the patent, requesting an inter partes review in July 2020. However, the request was denied due to the parallel investigation at the ITC.
It filed another petition to institute an inter partes review of claims 1-26 of the ‘631 patent in April 2021 following the termination of the ITC investigation.
