When the Delaware district court found an Alcon patent not invalid (Alcon v. Teva Pharms. USA, 664 F. Supp. 2d 443 (D. Del. 2009)), Alcon must have felt pretty good. It had successfully thwarted Teva’s attack and preserved market exclusivity for its ophthalmic product Vigamox®.
But, a surprise awaited Alcon. Under a new procedure in the America Invents Act (AIA), another generic company, Apotex, filed an inter partes review (IPR) petition asking the Patent Trial and Appeal Board (PTAB) to invalidate that same patent (Apotex v. Alcon Pharms., IPR2013-00012). The PTAB concluded that there was a “reasonable likelihood” the patent would be invalidated and initiated the IPR proceeding. Alcon then settled with Apotex. It is unsettling that the PTAB considered the very same prior art references as the district court considered, but came to the opposite conclusion. Brand companies, say hello to IPR petitions and good-bye to any good vibrations.
