Paul Hastings Achieves First Ever Win in New Form of IP Proceeding for Pharmaceutical Company

December 11, 2014

Successfully defended Supernus in patent defense in an Inter Partes Review

New York - Paul Hastings LLP, a leading global law firm, announced today that it won a complete victory for Supernus Pharmaceuticals and Galderma Laboratories in the first-ever successful defense of a pharmaceutical patent in an inter partes review (IPR), a relatively new process for challenging the validity of a patent through a trial before the Patent Office’s Patent Trial and Appeal Board (PTAB) rather than through Federal courts.

In an August 2014 IPR proceeding generic drug company Amneal Pharmaceuticals petitioned the patent office to invalidate three key patents held by Supernus Pharmaceuticals for the blockbuster rosecea drug – Oracea, claiming that each was unpatentable because they were obvious variations of earlier research. On December 9, the PTAB determined that all three Oracea patents were valid, agreeing with Paul Hastings' argument that the Supernus’ claims were indeed patentable.

The decision effectively protects the patents for Oracea against generic incursion through 2027, when the patent in question expires.

Galderma and Supernus have been litigating a concurrent infringement suit against Amneal over the same Oracea patents since 2011. Following a District court decision to throw out Amneal’s central arguments for invalidating these same three patents, Amneal opted to take its case to the Patent Office where the burden of proof for a patent being invalidated is considered lower and where no other pharmaceutical patent holder had ever won a case.

Paul Hastings Intellectual Property partner Gerald Flattmann led the Paul Hastings team, joined by Gregory Morris, Vanessa Yen and Evan Diamond.

Paul Hastings is a leading global law firm with a strong presence throughout Asia, Europe, Latin America, and the United States. Through a collaborative approach, entrepreneurial spirit, and commitment to client service, the professionals of Paul Hastings deliver innovative solutions to many of the world’s top financial institutions and Fortune 500 companies.