IP Alerts

IP Alert
IP Alert: No Section 101 Appeal from an IPR

April 26, 2019

Today, in Neptune Generics, LLC v. Eli Lilly & Company, the Federal Circuit held that patent eligibility may not be attacked on appeal by an unsuccessful petitioner who has lost an inter partes review (IPR) proceeding. This decision answers an open question concerning IPR practice and procedure.

Eli Lilly owns a patent directed toward a method for administering a drug compound known as pemetrexed. Two generic drug companies and an entity called Neptune Generics collectively brought nine petitions for inter partes review of the patent, attacking the patent on various grounds of obviousness. The Patent Trial and Appeal Board (PTAB) held in favor of the patent owner in each case, and the petitioners appealed.

On appeal, the court first discussed the petitioners’ obviousness challenges to the patent, and concluded that the PTAB had not erred in holding the claims not to have been proven obvious. The petitioners then argued that the claims were not directed to patent-eligible subject matter, asserting that this issue is “properly raised because eligibility is a question of law and in this appeal, there are no factual issues that must be decided.”

The Federal Circuit disagreed, reasoning that Congress had expressly limited the scope of IPR to certain prior art challenges that arise under sections 102 and 103 of the Patent Act. Patent eligibility is an issue that arises under section 101 of the Patent Act. Because a petitioner cannot attack patent eligibility in an IPR, the court concluded that likewise the petitioner could not raise patent eligibility issues on appeal.

Today’s decision is important for parties concerned with patent eligibility in IPR proceedings. For more information, please contact Fitch Even partner Allen E. Hoover, author of this alert.

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