Abbvie Dodges Bass Arrow Aimed At Imbruvica
Oct. 23, 2015 (Mimesis Law) — The Bass news out of the USPTO continues. In a recent development, the PTAB continued to employ its preferred method of bouncing Bass & Co. petitions in deciding not to institute a review of Bass’ patent attack against Abbvie’s ‘090 Patent. The method? A decision that there is an evidentiary defect with the prior art relied upon by Bass to support the petition. The benefit to the PTAB? They can refuse to institute the petition “on the merits,” but without necessarily endorsing the strength of the patent in any way — thereby insulating themselves from an accusation that they are being unfair to Bass, or contributing to bad patents propping up drug prices. In walking that fine line, and dismissing the petitions on “evidentiary defect” grounds, the PTAB has not escaped criticism or accusations of a double standard against Bass. But they seem to prefer this approach anyway, as they have used it consistently to deny Bass’ IPR petitions.
So the PTAB decided the prior art was not “proved up” in the ‘090 Patent IPR petition and declined to institute. That will be a (perhaps temporary) relief for Abbvie and its investors, considering the fact that the company purchased the company (Pharmacyclics) that owned the rights to the blockbuster lymphoma-treatment drug protected by the ‘090 Patent, Imbruvica, earlier this year. Imbruvica’s $10bn revenue potential is protected by a host of patents, but the ‘090 could be a particularly signficant one, as it extends the potential patent monopoly out until 2031, even as most of the other patents expire in 2026.
Even though Abbvie and its fellow drug companies are heartened whenever a Bass IPR is dismissed, the method that the PTAB has been relying on is not ideal from their perspective. For one, the PTAB has refused to endorse their theory that Bass is abusing the IPR process, and this particular IPR decision was no exception on that front. Second, there is nothing stopping Bass (other than cost and timing considerations) from garnering additional evidence to “prove up” the prior art date and filing again. He has already done so with other “rejected” IPR’s. In short, this may be a temporary respite for Abbvie, and investors will need to continue monitoring Bass and Co.’s efforts closely. They know that Imbruvica is in his sights, and perhaps the PTAB will not be as protective next time around.
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Nothing in this material is intended to constitute legal or investment advice of any kind, nor is any of this material based on any non-public information of any kind. In addition to my work at Markman Advisors, I am also a name partner at a NYC-based intellectual property litigation boutique firm, Kroub Silbersher & Kolmykov PLLC (www.kskiplaw.com). Markman Advisors is affiliated with a Houston-based investment management firm, Perdix Capital Management, which may have existing or potential positions relating to situations discussed in this material. Markman Advisors also provides consulting services to buy-side investors, including hedge funds and family offices, that may also have or enter into positions relating to situations discussed in this material. Questions or comments can be directed to me at email@example.com. All suggestions are welcome.