PTAB Denies Institution Of Kyle Bass's Ampyra Patent Challenge

The USPTO Patent Trial and Appeal Board (PTAB) has put an end to Kyle Bass's Ampyra patent challenge, by denying institution of Inter Partes Review (IPR) proceedings. While many were hoping the PTAB would render a decision based on the "improper purpose" of the challenge, the PTAB decisions are based on one of the more substantive reasons the patent owner raised in its Preliminary Responses.

The Ampyra Patents At Issue

Kyle Bass and his Coalition for Affordable Drugs filed IPR petitions against two Orange Book-listed patents for Ampyra®: 8,663,685 and 8,007,826. (I reviewed the challenged claims in this article.) The petition against the '685 patent was accorded a filing date of February 26, 2015, so the PTAB's decision on institution was due by August 26, 2015. The petition against the '826 patent was accorded a filing date of March 19, 2015, so the PTAB's decision on institution was not due until September 19, 2015, but the PTAB denied institution in both proceedings on August 24, 2015.

Five Reasons To Deny Institution

The Patent Owner, Acorda Therapeutics, Inc., filed Preliminary Responses against both IPR petitions, raising at least five reasons why institution should be denied. According to Acorda:

1. The IPRs were filed for an improper purpose.

   "The much-publicized filing at issue here has been widely described as part of a strategy devised by Mr. Bass to profit by using the IPR process to drive down the price of Patent Owner's stock in which he or his investment funds held short positions. .... There can be no dispute that allowing hedge funds to use the IPR process to manipulate financial markets is inconsistent with Congressional intent and the directives given to the Office discussed above. Instituting inter partes review here will only encourage more such filings, which will burden additional patent owners, their industries and the Office."

2. The IPR petitions do not disclose the real-party-in-interest.

   "The funding of an IPR is an important factor that the Board must consider in determining whether a party is an RPI. .... Yet Petitioner, a hedge fund, does not name the investors funding the Petition."

3. The petitions fail to establish that cited information qualifies as prior art.

   The petition against the '685 patent cites two "posters" that allegedly were displayed at a conference prior to the critical date. As Acorda points out, the petition did not allege facts that would qualify either of the posters as a "printed...