Overview
Steptoe secured a win for the Trustees of Dartmouth College (Dartmouth) in an inter partes review (IPR) against petitioner Thorne Research, Inc. (Thorne) before the Patent Trial and Appeal Board (PTAB). The IPR involved Dartmouth’s U.S. Patent No. 8,197,807 (’807 patent), which relates to pharmaceutical compositions of nicotinamide riboside. On August 10, 2022, the PTAB found in favor of Dartmouth on all issues.
This is Steptoe’s second PTAB victory with respect to the ’807 patent, which was also challenged by another petitioner, Elysium Health, Inc., in a previous IPR. In that previous IPR, Steptoe successfully defended the ’807 patent by convincing the PTAB to deny institution.
In the recent IPR, Thorne asserted that the claims in the ’807 patent were unpatentable based on either of two primary alleged prior art references. In its final written decision, the PTAB held that neither of the asserted references qualifies as prior art to the ’807 patent. First, the PTAB agreed with Dartmouth that the ’807 patent is entitled to an earlier priority date than argued by Thorne, thus precluding one of the references from qualifying as prior art under pre-AIA 35 U.S.C.§ 102(b). Second, the PTAB agreed with Dartmouth that the relevant portions of both references were not “by another,” thus precluding the two references from qualifying as prior art under pre-AIA 35 U.S.C.§ 102(a) or (e). In sum, the PTAB found that the challenged claims were not unpatentable.
The Steptoe team that secured this victory for Dartmouth was led by partner John Abramic and included partner Jamie Lucia and associate Benjamin Holt.
About Steptoe
In more than 100 years of practice, Steptoe has earned an international reputation for vigorous representation of clients before governmental agencies, successful advocacy in litigation and arbitration, and creative and practical advice in structuring business transactions. Steptoe has more than 500 lawyers and other professional staff across offices in Beijing, Brussels, Chicago, Hong Kong, London, Los Angeles, New York, San Francisco, and Washington. For more information, visit www.steptoe.com.
