Claim 2 of the '087 Patent Subject to IPR
The PTAB ruled yesterday that all five claims in the '087 Patent, not just claims 1 and 3-5, will be considered by the PTAB. You can read the Board's decision here:
Order Denying Motion for Rehearing
The PTAB originally had denied review on Claim 2 on the grounds that there was no reasonable likelihood of Elysium's prevailing as to that claim.
Subsequently, the SCOTUS in their SAS decision ruled that the PTAB in an IPR proceeding must hear all claims or no claims, but cannot pick-and-choose. In other words, the PTAB must hear claims even when there is no reasonable likelihood of success, or even if there is not a snowball's chance in hell of success.
As a result, the PTAB went back and modified its ruling in our case to include the previously omitted Claim 2 in its review.
In response to the modification, Dartmouth/ChromaDex through Steptoe moved for reconsideration, raising a number of perfectly plausible legal arguments that even if the PTAB would in the future have to hear all five claims, it could not go back and change a prior decision.
The PTAB's ruling yesterday did not involve the merits of the claims at all, but only the procedural question of whether it was entitled to change a prior decision over whether to hear a claim.
The PTAB determined that it could.
There is still "no reasonable likelihood" that Elysium will be able to invalidate Claim 2. I would say there isn't even a snowball's chance in hell of Elysium's being able to invalidate Claim 2.
But the SCOTUS says that the PTAB has to hear the claim anyway, and so the parties have to pay the lawyers to present their sides anyway, which means once again that all is not lost -- at least the lawyers do well.
What REALLY Matters
From an investor's standpoint, the important PTAB development isn't the relatively small amount of time that will be spent pointlessly litigating claim 2, but the diminishing likelihood that Elysium will prevail on ANY of the claims.
We noted in June with some amusement that Steptoe's attorneys had "had their way" with Elysium's sole expert, Dr. Joe Baur, and gotten him to endorse ChromaDex's primary defense of the '086 Patent, which is that the pharmaceutical composition in question requires that NR be an active agent, and does not include any substance in the world that just happens to have NR in it, like, say, buttermilk.
Now Elysium is frantically trying to walk that back, as you can see in last month's Reply brief, which refers to an active "agent" 39 times.
In addition to their handwaving, Elysium's attorneys complained that Dr. Baur had been tricked into conceding the key element of ChromaDex's case. Specifically, Elysium's attorneys said,
"While counsel for Patent Owner slipped the phrase “active agent” into a few questions to develop misleading testimony about Dr. Baur’s opinions, counsel never sought to directly challenge Dr. Baur’s opinion that claim 1 merely requires the composition to contain nicotinamide riboside." (emphasis added)
Those sneaky Steptoe attorneys!
Let's go to the scene of the alleged crime, the Baur deposition, and watch Steptoe "slip the phrase 'active agent'" into a few question to develop misleading testimony:
Q· · The molecule being administered would be the active agent of the pharmaceutical composition, correct?
A· · Yes
Q· · And in this case, that active agent would be nicotinamide riboside, correct?
A· · Yes.
Q· · And the formulation that you're referring to there, in paragraph 30, is the pharmaceutical composition of claim 1, where nicotinamide riboside is the active agent, correct?
A· · Yes
Q· · You're referring to the nicotinamide riboside because that's the active agent in the '086 patent, correct?
A· · That's correct.
That doesn't sound misleading to me -- it sounds perfectly clear, direct, and straightforward.
In fact, I don't know how much more clear and direct you can get than,
"You're referring to nicotinamide riboside because that's the active agent in the '086 patent, correct?"
That question directly addresses a single specific point, and Dr. Baur responded to that point. In what universe is that "misleading?"
Elysium is complaining because that concession fatally undermines their challenge to all five claims in the '086 Patent, which are now on track to survive just like every claim in the '807 Patent already did.
But Elysium still has a couple months and an oral argument on October 2nd to try to figure out how to disclaim their own expert's testimony. Just because they haven't figure out a way yet doesn't mean they won't think of something.