Friday, September 08, 2006

160 claims of Ariad patent rejected in first Office Action in re-examination

The first, non-final Office Action in re-examination 90/007,503 was not favorable to Ariad, with 160 of the 203 claims rejected by the USPTO. Ariad will have an opportunity to respond to this Office Action.

The Indianapolis Star reported:

Earlier this year, a federal jury in Massachusetts sided with Ariad, saying that Lilly's osteoporosis drug Evista, which accounted for about $1 billion in sales last year, along with a smaller product, sepsis drug Xigris, infringed on Ariad's patent.
The jury socked Lilly with a $65 million judgment and also ordered it to pay 2.3 percent of future sales of both drugs to Ariad and two universities, a potential diversion of tens of millions of additional dollars from Lilly's coffers.

It shall be interesting to see how the journal Science covers the story. With an anti-patent bias showing in the July 28 "news of the week" story on continuations, Science is presented with a "patent on natural processes" issue, wherein the patent application was filed by academic research scientists at Harvard and MIT. The IndyStar noted "The phenomenon was discovered by researchers at Harvard University and Massachusetts Institute of Technology," placing this in the area of a discovery, rather than an invention. [for further discussion on the "discovery" issue, see Liivak's article in 87 JPTOS 261 and for another case involving academics underlying patent battles, note the Merck v. Integra discussion in 87 JPTOS 321.]

In a September 5 post, Derek Lowe noted that the rejection included all of the ones that Ariad used to make its recent case against Eli Lilly (#s 80, 95, 144, and 145). For example, it appears that only six of the first fifty claims are still standing. There is a functional language issue AND there is a prior art issue.

If the USPTO rejections are maintained in a final Office Action, this case could become a poster child for a bad jury verdict. [Note that Ariad will be able to appeal an unfavorable USPTO action, so this will take a long time to become final. However, IF the USPTO holds its position, THEN this is not going to look good for the analysis by the jury, who may have looked more at the credentials of MIT and Harvard profs (including two Nobel laureates) than at the underlying patent law issues. IPBiz predicts that claims will be rejected in a final Office Action.]

MarketWatch reports the following: Ariad in June filed a complaint in federal court in Virginia seeking to block the patent office from continuing the re-examination. Ariad also is seeking a court order that would nullify the "first office action." That request is pending.

MarketWatch also wrote: Also, Ariad has begun legal proceedings intended to nullify the patent office's decision.

IPBiz notes that the USPTO has issued a first (non-final) Office Action in a re-examination procedure carried out in a manner defined by statute and regulations. It's not clear that a court could "nullify" an Office Action at this point in the procedure. After the procedure in the USPTO is completed, Ariad does have a right to appeal to the court system.


Post a Comment

<< Home