PTAB Upholds Alcon Patent For Glaucoma Treatment

As reported by Law360 at URL:

The Final Written Decision itself is included below, and can be downloaded by clicking this link:


The patent may be viewed at the USPTO website at

PTAB Upholds Alcon Patent For Glaucoma Treatment

Law360 (September 21, 2018, 8:52 PM EDT) — The Patent Trial and Appeal Board on Thursday upheld the validity of an Alcon patent covering the glaucoma treatment Travatan Z, rejecting arguments by generics maker Argentum that the invention was obvious.

The board held that Argentum Pharmaceuticals LLC failed to establish that a combination of publications and patents that preceded Alcon Research Ltd.’s patent would have made the challenged patent claims obvious for an ordinarily skilled artisan, according to the final written decision.

The patent covers eye drops that are used in multiple doses and do not require an antimicrobial preservative, according to the decision.

While Argentum contended that an ordinarily skilled artisan would have used a composition identified in a patent issued several years before Alcon’s patent as a starting point for developing the patent at issue, Alcon noted that the artisan would have needed to make at least six modifications to the original formulation, according to the decision.

“During the trial, patent owner came forward with information that casts serious doubt on petitioner’s evidence,” the board said. “The sheer number and nature of the modifications necessary to convert Formulation A into a composition that meets Claim 1 speak against a conclusion of obviousness.”

The board proceeded in its decision through each of the modifications outlined by Argentum, growing increasingly convinced that the generic company’s argument was based more on “hindsight” rather than a combination that was actually “obvious.”

“With this fourth modification, we discern that petitioner is picking and choosing ingredients in Xia’s formulation to include those required, and remove those precluded, by the terms of Claim 1,” the PTAB said, referring to the name for a 2005 publication. “Petitioner’s rationale appears to be ‘entirely hindsight-driven.’”

Travatan Z is used to reduce pressure in the eyes of individuals diagnosed with either hypertension or glaucoma, according to its description.

Counsel for the parties could not be reached for comment Friday.

The patent in suit is U.S. Patent Number 8,268,299.

Argentum is represented by Michael R. Houston, Joseph P. Meara and James P. McParland of Foley & Lardner LLP, and in-house by Tyler C. Liu.

Alcon is represented by David Krinsky and Christopher Suarez of Williams & Connolly LLP.

The case is Argentum Pharmaceuticals LLC v. Alcon Research Ltd., case number IPR2017-01053, before the Patent Trial and Appeal Board.

–Editing by Aaron Pelc.