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Prugo Quoted in Law360 on PTAB RulingApril 30, 2016 O’Melveny’s Filko Prugo was quoted in the April 7, 2016, Law360 article, “PTAB Ruling Used New Arguments, Genzyme Tells Federal Circuit.” The piece details the Patent Trial and Appeal Board’s February 2015 ruling--the first issued in an inter partes review involving competing biopharmaceutical companies and marketed biologic medicines--in favor of challenger BioMarin Pharmaceutical that certain claims are unpatentable as obvious. According to Genzyme, a Sanofi Company, different prior art references were used in the final decisions than those in the board's decisions to institute review, and as a result, the company was denied its administrative due process right to fully rebut those new grounds.
“There’s been a clear change in the theory,” Prugo argued. “There's been a clear change in the thrust of the rejection.” That change violates the Administrative Procedure Act since the company never had time to respond, he explained. “It is clearly mandated by the APA that [the grounds for invalidity] should be set forth in the institution decision,” Prugo said. “That just makes sense. The patent owner shouldn’t be left to guess.”
Prugo is co-founder of O’Melveny’s Hatch-Waxman practice and is a USPTO registered patent attorney who focuses exclusively on contested patent matters in the pharmaceutical and biologics space. He resides in O’Melveny’s New York office. Also on the briefs was Anton Metlitsky, a partner in the New York office whose practice focuses specifically on appellate and complex litigation matters.