Short Summary
Amgen’s request for Director Review of IPR denial is rebuffed by Bristol‑Myers Squibb, which argues the petitioner offers no credible basis and that European prosecution does not affect settled expectations for the U.S. patent.
Detailed Summary
In its authorized response to Amgen’s request for Director Review, Bristol‑Myers Squibb contends that the petitioner has failed to identify any credible grounds to overturn the Board’s discretionary denial of institution for IPR on U.S. Patent No. 9,856,320. The patent owner emphasizes that foreign prosecution does not unsettle settled expectations, that the petitioner’s changed‑circumstances and policy arguments are irrelevant and waived, and that the constitutional challenge is unsupported. Consequently, the patent owner urges the Board to deny the Director Review request, maintaining the validity of the ’320 patent.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before local courts. Understanding the court's reasoning in Amgen Inc. et al. vs Bristol-Myers Squibb Company is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Merck Sharp & Dohme LLCvsHalozyme, Inc. et al.
Merck has filed a petition to invalidate Halozyme’s ’298 patent covering modified PH20 polypeptides, arguing the claims lack written description and enablement. The reply attacks Halozyme’s reliance on functional language and disclaimed dependent claims.
BOE Technology Group Co., Ltd. et al.vsSamsung Display Co., Ltd.
BOE Technology and Samsung Display settled eight related IPRs before trial, resulting in the Board terminating the proceedings on the parties' joint motion.
Samsung Electronics Co. Ltd. et al.vsMobile Data Technologies LLC
Samsung’s petition to institute an IPR against Mobile Data Technologies’ 2015 wireless patent was denied. The patent owner’s response emphasizes strong settled expectations and consistency with prior Director decisions, arguing that the discretionary denial is proper under 35 U.S.C. §314.
HighLevel, Inc.vsEtison LLC d/b/a ClickFunnels
HighLevel, Inc. challenges the PTAB’s denial of institution for its IPR against ClickFunnels, arguing the Board overstepped authority by applying a new §101‑based rule retroactively. The petitioner seeks Director Review to pause the decision pending the Federal Circuit’s appeal.
Amazon.com, Inc. et al.vsSoundClear Technologies LLC et al.
Amazon successfully petitioned to institute IPR proceedings against SoundClear Technologies LLC regarding voice-content control claims. The Board found a reasonable likelihood of success based on anticipation and obviousness grounds over the prior art reference 'Shin.'
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.