Biogen Slips Out of Bass’ Grasp In IPR Play
Sept 4, 2015 (Mimesis Law) — The third time was not a charm for Kyle Bass’ IPR efforts as the PTAB rejected his attack on a key Biogen patent – the ‘514 Patent which protects over a half-decade of potential exclusivity through 2028 for Biogen’s blockbuster MS drug Tecfidera. As we have previously detailed on these pages, this Bass IPR was not the only PTAB proceeding involving the ‘514 Patent, as Forward Pharma and Biogen are locked in an interference before the same judges and trying to prove who invented the subject matter first. Unsurprisingly, the removal of the Bass IPR from a previously complicated set of co-pending proceedings helps streamline matters going forward considerably. It was also not surprising to see analyst commentary highlighting this decision as favorable for Forward Pharma, since it removes a potential result in the Patent Office whereby Forward could have won its interference against Biogen, yet still lose the rights to the ‘514 Patent, and with such a loss, also lose its chance to collect Tecfidera patent royalties.
While the decision to decline institution of the IPR turns the ‘514 Patent spotlight back on the pending interference, it also starts to raise questions about Bass’ early track record with his IPR filings. As with the Acorda petition denials we previously discussed, once again the PTAB decided this IPR on the merits, finding that the prior art that Bass cited did not make out the case for the invalidity of the ‘514 Patent. Once again as well, Bass has no appeal rights from this decision. To be fair, as with Acorda it seems like the PTAB is taking a tough line with Bass when it comes to potentially disputed factual questions about the prior art he has raised. Considering that the three IPR’s decided already were among his earliest-filed ones, there is plenty of opportunity for Bass to right the ship going forward, and we have already noticed a greater level of factual detail in more recent filings.
Because this IPR was decided on the merits, there was no further guidance (other than saying they would be punting) from the PTAB on the “side issues” of whether or not Bass’ IPR filings constitute an abuse of process and should be sanctioned. Interested observers will have to wait on the PTAB’s treatment of those issues in later petitions. For now, both Biogen and Forward investors are happy to have this challenge to “their” patent behind them, and we anticipate continuing to monitor their interference, as well as Bass’ other filings, very closely as those situations develop.
Disclosures and Disclaimers:
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.