Endo and Grünenthal Successfully Challenge Depomed’s Patent
On September 16, 2015, Fitzpatrick succeeded in obtaining a Final Written Decision of invalidity in an inter partes review of U.S. Patent No. 6,723,340 owned by Depomed, Inc. on behalf of its clients Endo Pharmaceuticals Inc. and Grünenthal GmbH. The challenged patent relates to extended release gastric retentive dosage forms and has been asserted by Depomed against Endo’s successful Opana® ER product in a co-pending federal district court litigation, in which Fitzpatrick is also representing Endo.
Despite previous invalidity challenges of the ’340 and related patents by others, the PTAB found that Endo had shown by a preponderance of the evidence that asserted claims of the ’340 patent are unpatentable under 35 U.S.C. § 103(a) for obviousness. The PTAB also rejected Depomed’s evidence of nonobviousness, finding no nexus between the merits of Depomed’s claimed invention and the evidence alleging secondary considerations.
The Fitzpatrick attorneys representing Endo and Grünenthal are Bruce C. Haas, William E. Solander, Henry J. Renk, Melinda R. Roberts, Lauren B. Zuffante, Christopher P. Hill and Stephen Yam.