The wins keep coming for client Shanghai Hongene Biotech Corp. at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB)! For the second and third time, our legal team led by Washington, D.C.-based Life Sciences Intellectual Property Litigation Partner Jeremy Edwards succeeded in securing invalidation of all challenged claims in each of two patents held by ChemGenes Corp., namely 8,309,707 B2 (“707”) and 8,541,569 B2 (“569”).

These two inter partes review (IPR) victories come on the heels of a related IPR victory a few months ago, in which the PTAB invalidated all claims of U.S. Patent No. 9,884,885 (“885”). ChemGenes did not appeal or otherwise challenge that result.

The briefing and deposition work by the Procopio team were so strong that ChemGenes withdrew its motions to amend the claims and agreed to forgo oral hearing. Jeremy was supported in the IPRs by partners Xiaofan “Frank” Yang and Steve Maddox, and by Senior Counsel Brett Garrison.

The dispute arose initially when ChemGenes sued Hongene, claiming that alleged sales of certain compounds used to make oligonucleotides (i.e., short strands of DNA and RNA) infringed the three ChemGenes patents. ChemGenes dropped that suit after our team pointed out various deficiencies with the case. Hongene then went on the offensive, challenging the validity of all three patents at PTAB.

Read the PTAB final written decisions determining all challenged claims unpatentable in the “569” and “707” patents.