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Victory: February 2016: Inter Partes Review Victory for Celgene

February 2016

Quinn Emanuel recently won an inter partes review (“IPR”) of a patent covering the active ingredient in firm client Celgene Corporation’s (“Celgene”) blockbuster cancer therapy, Revlimid®, and certain associated methods of use. Revlimid® is a $5 billion per year product. The United States Patent and Trademark Office’s Patent Trial and Appeal Board’s (“PTAB”) decision provides Celgene with patent certainty until at least late 2019.

The case began when hedge fund manager Kyle Bass and patent troll Erich Spangenberg filed an IPR petition against Celgene’s patent in an attempt to drive down Celgene’s stock price and profit on short positions taken in advance of filing. Petitioners argued that Celgene’s patent claimed compounds that were only a slight modification from thalidomide and other thalidomide analogs identified in the prior art, and that the claimed methods of use would have been obvious.

Quinn Emanuel quickly identified that Petitioners' theories were based entirely on hindsight—starting with Celgene’s patent and working backwards to piece together the claimed compounds and methods of use. The firm scoured the prior art and field of knowledge at the time of the patent’s filing and collected several references that would have taught away from the combination of references Petitioners relied upon and also taught away from arriving at the claimed compounds and methods of use. The firm employed an all-out attack strategy in the Preliminary Response, raising PTAB’s awareness of the significant scientific advancement achieved in Celgene’s patent.

PTAB spent several pages summarizing how Quinn Emanuel’s arguments persuaded it that there was no motivation to combine the cited prior art and no reasonable expectation of success in arriving at the claimed inventions. Based on the firm’s arguments, PTAB found Petitioners did not prove a reasonable likelihood of succeeding on its petition and denied the IPR.

This is a significant win for Celgene. It vindicates the merits of a key patent protecting Revlimid®, and provides patent certainty and exclusivity in Celgene’s growing $5-billion per year market until at least late 2019.