GlaxoSmithKline LLC (GSK) filed six inter partes review (IPR) petitions to challenge the patentability of U.S. Patent Nos. 8,466,172; 8,609,646; 8,614,204; 8,604,013; 8,604,012; and 8,629,131. The patents challenged in the petitions are owned by FibroGen, Inc. The ’172 patent is generally directed to methods for treating a hypoxic or ischemic disorder or condition. The ’646 patent is generally directed to methods for decreasing hepcidin expression. The ’204 patent is generally directed to methods for treating iron deficiency, functional iron deficiency, or anemia of chronic disease. The ’013 patent is generally directed to methods for treating anemia. The ’012 and ’131 patents are generally directed to methods for increasing serum iron and for increasing iron absorption, respectively.
In its IPR petitions, GSK presented anticipation and obviousness challenges against the claims of FibroGen’s patents. Represented by members of Buchanan’s Patent Office Litigation practice group, FibroGen filed preliminary patent owner responses to each of GSK’s petitions explaining why GSK failed to demonstrate that the claims are unpatentable. On January 11, 2017, a panel of the Patent Trial and Appeal Board (PTAB) agreed with FibroGen and denied institution of all six IPR petitions.
The decisions underscore the importance of filing patent owner preliminary responses under appropriate circumstances. In each of these proceedings, the decisions reflected the PTAB panel’s careful review of the arguments presented in the preliminary responses against the challenges presented in the petitions.
FibroGen is represented by Todd Walters, Roger Lee, Mythili Markowski, Chris Cherry, Jonathan Bowser, and David Leibovitch of Buchanan Ingersoll and Rooney PC. The case numbers are IPR2016-01315, IPR2016-01318, IPR2016-01319, IPR2016-01320, IPR2016-01322, and IPR2016-01323.