Amneal Pharmaceuticals v. Endo Pharmaceuticals, IPR2014-00360: Denying Request for Rehearing of Denial of Institution
Tuesday, September 30, 2014

Takeaway: A request for rehearing must address the rejection as a whole.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision on Institution. The Board entered a Decision on July 25, 2014, instituting inter partesreview of claims 1, 2, 6, 12-14, 17, 21-43, 45-51, and 54-71, but not claims 72-82, of the ’216 Patent. Petitioner’s Request for Rehearing was for reconsideration of the decisions not to review claims 72-82.

Petitioner contended that the Board “overlooked the disclosures in the Penwest Statement and Baichwal – and the sections of the Petition that pointed to those disclosures – that render obvious claims 72-82 of the ’216 Patent.” In particular, Petitioner argued that the two references taught certain features of the claims. The Board noted that even if the two references taught the elements contended by Petitioner, Petitioner still failed to explain convincingly how the cited references suggested a composition having the claimed “‘in vitro dissolution test comprising USP Paddle Method’ oxymorphone release results.” Specifically, the Board stated that Petitioner failed to explain “why an ordinary artisan would have had reason to adjust or vary weight ranges of specific gelling agent components to achieve the recited dissolution limitation when making a composition comprising oxymorphone or its salt.”

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., IPR2014-00360
Paper 21: Decision on Petitioner’s Request for Rehearing
Dated: September 16, 2014
Patent 8,329,216 B2
Before: Toni R. Scheiner, Francisco C. Prats, and Jacqueline Wright Bonilla
Written by: Bonilla

 

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