PTAB Confirms Patentability of Paragon's Claims in Post-Grant Review

On November 14, 2016, Wilson Sonsini Goodrich & Rosati secured a final written decision from the Patent Trial and Appeal Board (PTAB) in a post-grant review (PGR) confirming the patentability of all claims of client Paragon BioTeck's U.S. Patent No. 8,859,623. This is the first final written decision in a PGR determining that the challenged claims are patentable.

The '623 patent is directed to ophthalmic preparations of phenylephrine and, in particular, to a method for ensuring that patients receive phenylephrine solutions that are both chirally pure and free of phenylephrine degradation products. Paragon submitted a New Drug Application to the U.S. Food and Drug Administration for these previously grandfathered preparations, which included the claimed method and was approved, leading to an Orange Book listing for the '623 patent. Altaire Pharmaceuticals had petitioned for PGR of all claims of the '623 patent, alleging that they are unpatentable as obvious.

The WSGR team representing Paragon in the matter included partner Mike Rosato; Of Counsel Steve Parmelee; and associates Andy Brown and Sonja Gerrard. WSGR also represents Paragon in related district court proceedings against the petitioner, Altaire.