Parties’ Claims Decimated in PRISTIQ® Interference

Scott Daniels | June 1, 2010

This past Friday the PTO Board entered judgment “in favor of” Wyeth in its interference with Sepracor.  In dispute were claims covering Wyeth’s anti-depression composition, PRISTIQ® having the active ingredient O-desmethylvenafaxine succinate.  The junior party Wyeth owns the two involved patents, U.S. Patent Nos. 6,673,838 and 7,291,347; the senior party Sepracor owns the three involved patent applications.

The Board awarded priority to Sepracor because its constructive reduction to practice predated Wyeth’s earliest asserted dates of conception and reduction to practice.  But despite this award of priority to Sepracor, the Board entered judgment for Wyeth because of a settlement agreement between the parties in which Wyeth becomes the owner of the Sepracor involved applications.

Wyeth’s judgment appears to be a Pyrrhic victory, however, since the Board also ruled that Wyeth’s involved claims – claims 1-3, 23-34 and 46 of the ‘838 patent and claims 1-9 of the ‘347 patent were invalid.  The Board additionally recommended that the examiner closely examine whether the Sepracor application claims are patentable over the prior art references cited in the interference.

Significantly, the Board attached Senior APJ Fred McKelvey’s February decision in which he stated that “it would appear that both party’s [sic] claims corresponding to Counts 5, 6 and 7 are unpatentable under 35 U.S.C. § 102 or 35 U.S.C. § 103.”  The references cited by Judge McKelvey are patents are assigned to Wyeth.  Wyeth also owns a related patent, U.S. Patent No. 7,026,508, which was not involved in the interference.

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