Since our last posting on April 23, Kyle Bass has filed three additional IPR petitions, bringing his grand total to fifteen (none of which have yet to be instituted). On May 1, 2015 Bass filed an IPR against Biogen’s US Patent No. 8,399,514 covering their multiple sclerosis drug TECFIDERA. The IPR challenged all 20 claims of the patent. According to the Orange Book, the drug however is covered by six additional patents, five of which have not yet been targeted by Bass. One week later on May 7, 2015 Bass filed its fifth IPR against Celgene- the company most targeted by Bass to date. This IPR challenges all ten claims of US Patent No. 5,635,517 covering POMALYST and REVLIMID. Yesterday, Bass filed its fifteenth IPR petition, this time against Pozen’s US Patent No. 6,926,907 covering VIMOVO, an NSAID drug. This IPR requests review of claims 1-23 of the 55 claims in the patent.
To date, Bass has only filed one IPR challenging a patent covering a drug product that is covered by no additional Orange Book patents- specifically Cosmo Technologies/Shire’s LIALDA product.
If you are one of the other seven companies previously targeted by Bass, you may likely face additional IPR filings by Bass in the near future.
In cases where Bass has challenged some, but not all, of the claims in a patent, Bass may file a subsequent IPR directed at the remaining claims. This was the case for NPS Pharmaceuticals where Bass’s first IPR requested review of claims 46-52 and 61-75 of US Patent No. 7,056,886, and his second IPR targeted claims 1-45. Notably, a few claims in the ‘886 patent have yet to be the subject of a Bass IPR petition.
Additional IPRs may also be coming in cases where Bass has targeted one of the patents covering a given product but not all. For example, Bass filed its first IPR petition against Acorda’s US Patent No. 8,663,685 covering AMPYRA. Five patents are listed in the Orange Book covering AMPYRA. Bass subsequently filed a second IPR petition aimed at one of those additional patents- specifically US Patent No. 8,007,826. The remaining three patents covering AMPYRA have yet to be the subject of a Bass IPR petition.
Patent owners anticipating future Bass IPR petitions should re-evaluate their patent portfolios covering drugs previously identified by Bass. In addition, in-house counsel should continue to familiarize themselves with the IPR process because Bass’s activities may be far from over.