Just because you can appeal doesn’t always mean you should

Legal processes in the United States tend to offer a lot of opportunities to try to reverse a decision if one doesn’t go the way you prefer. Litigating challenges of patents is no exception. However, as we have written about previously, just because the option of an appeal is available doesn’t necessarily mean that it should be taken.

Depending on the circumstances of the case, the appealing party runs a risk of finding that the appeal never gets to the point of being argued. This can happen if the court decides the party has lost the right to pursue the matter any further. This can happen for a variety of reasons. To identify and avoid possible hurdles before deciding to press ahead on a claim, it makes sense to consult with experienced legal counsel.

Mootness in court is not a virtue

This may be something that is on the minds of officials at Momenta Pharmaceuticals, Inc., following a decision to dismiss by the Federal Circuit Court earlier this month. Momenta had sought to appeal an inter partes review (IPR) determination that it lost in a challenge to a patent held by Bristol-Myers Squibb Co. (BMS) for the drug abatacept.

At the time of the initial IPR petition, Momenta was developing a potential drug with another company that was similar to abatacept. Its patent challenge failed in IPR and the Patent Trial and Appeal Board sustained the BMS patent. Momenta appealed. However, over time, Momenta announced it had decided to stop developing its similar drug and ended a collaboration deal it had going with generic drug maker, Mylan. It was that decision that led to the dismissal of the appeal.

Despite Momenta making an argument to the contrary, the Federal Circuit said the company no longer had standing to appeal. It said Momenta had stopped development of its drug and therefore posed no infringement threat to BMS. Effectively, Momenta had rendered its case moot with its decision to drop the drug from its portfolio.

Prosecution of patents and defense against infringement is complicated business. Stakes tend to be high. And, as this case suggests, if you are a patent challenger or defender, success can depend on there being an actual threat of infringement.

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