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  • Writer's pictureShelly Albaum

Elysium's Response in PTAB Claim 2 Squabble

As those following the litigation know well, there is a tiff over whether the Patent and Trial and Appeal Board should hear Elysium's challenge to Claim 2 of the ChromaDex/Dartmouth '086 (Pharmaceutical) patent. To recap...

Elysium challenged both of ChromaDex's Nicotinamide Riboside patents -- the Supplement ('807) and Pharmaceutical ('086) patents.

The PTAB construed the term "isolated" in both patents as meaning anything with 25% or more concentration, and thus determined that there was nothing wrong with the Supplement patent (leaving behind an inference that a supplement containing less than 25% NR might not be infringing).

The PTAB construed the term "isolated" in the Pharmaceutical patent the same way, and thus discarded Elysium's challenge to Claim 2 in the Pharmaceutical patent (the other four claims in that patent are being examined).

In the meantime, the Supreme Court ruled that the PTAB may not institute trial on only some challenged claims -- it has to institute trial on all or none of the claims, even if some of the claims are not subject to any reasonable challenge or are completely frivolous.

So in response to that decision, the PTAB ordered the parties to include Claim 2 in the trial on the Pharmaceutical patent.

ChromaDex then (via Steptoe) objected (with a Motion for Rehearing) that regardless of what the SCOTUS said, the PTAB lacks authority to undo its prior decision.

Elysium's response to ChromaDex's Motion for Rehearing was filed yesterday, and you can read it here:

Whereas ChromaDex argued that the PTAB lacks authority to change its mind about Claim 2, Elysium's argument is that the PTAB lacks authority NOT to change its mind about Claim 2.

This is the kind of bamboozling SNAFU of contradictions that lawyers revel in, and that law professors use to torture law students.

But to normal citizens and investors in ChromaDex, you could be forgiven for tuning this one out, because regardless of whether the PTAB is procedurally required or procedurally prohibited from taking a second look at Claim 2, there is no reason to think that the underlying apparent validity of Claim 2, as implicitly noted by the PTAB, is in doubt.

Instead, what we are seeing here is another attempt by ChromaDex to limit is legal spend, and another attempt by Elysium to litigate every possible point regardless of the apparent merits. And once again, ChromaDex loses that battle, because now they have to litigate whether they could have avoided litigating, which is exactly what happened with the mootness controversy last year.

If it's any consolation, we lawyers are doing GREAT, and another batch of starry-eyed first-year law students crack open their Contracts/Torts/and CivPro books in less than three months, certain as ever that there is a Lexus convertible in their future.

For those who have nothing better to do, or who are considering law school, we'll take a brief look at Foley's arguments on behalf of Elysium.

[As a preliminary matter, I find it quite a relief to be reading Foley's dreadpan prose and whiny footnote-number-one, instead of Skadden's wild-eyed rage. If Foley is a pandemic flu, then Skadden is ebola.]

Elysium argues that the PTAB was right to institute trial in the first place, and then right again to expand the scope of the trial in response to the SCOTUS decision, and that these two rights cannot make a wrong -- the only wrong would be the (now) unlawful completion of a partial proceeding.

Points for cleverness, but there are two aspects to Elysium's argument here that are disingenuous. First, the real issue here is retroactivity, and Elysium simply ignores the retroactivity edge case of a trial that was further along than ours -- nearly complete -- and suddenly has to be done over from the start to avoid being an unlawful proceeding. Second, Foley states that ChromaDex's "Argument, if accepted, would wreak havoc on numerous pending proceedings." However, it is Elysium's argument -- requiring a do-over for every pending partial proceeding -- that would wreak the havoc.

It really is shocking to read Elysium's weepy prose for all the parties to pending proceedings that would have "to endure the upheaval that would result from" ChromaDex's position. ChromaDex's position is just the opposite -- all pending proceedings should stay on the same track they were already on. It is Elysium's argument that would create an upheaval with pending proceedings.

Equally disingenuous is Elysium's final section of the brief, titled "Patent Owner Has Suffered No Prejudice," which argues that ChromaDex is responsible for any prejudice that it has suffered and could have avoided any prejudice if only it had looked more closely into its crystal ball.

I wonder if a sharp-eyed non-lawyer will notice that no lawyer -- not even a lawyer from the venerable Boston firm of Foley Hoag -- can prove that someone has "suffered no prejudice" by arguing that the person is personally responsible for the actual prejudice they suffered.

Maybe Foley is more like a tropical illness than I thought.


I don't have a prediction for the outcome of this particular dispute. Even if the PTAB decides to apply the SCOTUS ruling only to trial institution decisions occurring after the date of the SCOTUS decision, as it should, and not unnecessarily scramble every pending matter, some litigious piece of inverse-patent-troll will probably appeal it to the United States Court of Appeals for the Federal Circuit, the learned judges of which can then stew on what would be the most prudent application of a nonsensical precedent interpreting as nonsensical the precise words of Congress. Almost makes me glad I'm not a judge!

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