Patent Owner Loses Everything At PTAB

• Published date: 04 December 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Paul W. Browning, Brooke M. Wilner, Emma N. Ng, Hira Javed and Stacy Lewis

Holding

In Mati Therapeutics, Inc. v. Ocular Therapeutix, Inc., the Federal Circuit issued a Rule 36 opinion affirming the Patent Trial and Appeal Board's ("PTAB's") Final Written Decision ("FWD") holding all challenged claims unpatentable. Ocular Therapeutix, Inc. v. Mati Therapeutics, Inc., IPR2019-00448, Paper 56 (P.T.A.B. June 18, 2020), aff'd (Fed. Cir. Nov. 8, 2021).

Background

Ocular Therapeutix petitioned for IPR of certain claims of Mati Therapeutics' patent. Independent claim 1 reads:

1. A drug delivery system for insertion into a lacrimal canaliculus of a patient, comprising:

a therapeutic agent, a distinguishing color to show placement of the system in the lacrimal canaliculus of the patient and a body of material to hold the therapeutic agent wherein the body of material comprises hydrogel polymers and wherein the body of material is a cylindrical rod.

Independent claim 11 further requires that the body of material "swells when placed in the lacrimal canaliculus." IPR2019-00448 at *9. Additionally, independent claim 18 requires that the "therapeutic agent [is] selected from an anti-glaucoma agent, a corticosteroid[,] an anti-microbial agent, and anti-allergy agent[,] or a non-steroidal anti-inflammatory agent." Id.

Claim Construction

The PTAB construed several claim limitations under the Phillips standard of "ordinary and customary meaning" to a person of ordinary skill in the art ("POSITA") at the time of the invention. Id. at *25.

Regarding the limitation "distinguishing color to show," the following statement is the only mention of color in the specification:

In many embodiments, the sheath body and/or retention structure may have a distinguishing feature, for example a distinguishing color, to show placement such that the placement of the sheath body and/or retention structure in the canaliculus or other body tissue structure can be readily detected by the patient.

Id. at *9 (emphasis removed). The PTAB agreed with the Patent Owner's proposed construction that "the color must show the system as it sits in the lacrimal canaliculus of the patient." Id. at *29. This construction was based on the specification describing "placement" as "the position of the implant in the eye, not the act of placing it there, as the only viewer described as needing to see the implant placement is a patient, who would not be a person actively implanting the device, but would only view it once it was placed in the eye." Id. at *28?29.

Patent Owner Mati also...