Depomed Announces Two Favorable Decisions In IPRs Versus Endo Pharma

(RTTNews) - Depomed Inc. (DEPO) announced favorable decisions by the Patent Trial and Appeal Board or PTAB of the United States Patent and Trademark Office that confirmed the patentability of all 23 claims of two Depomed patents -U.S. Patent Nos. 6,340,475 and 6,635,280- subject to inter partes review proceedings or IPRs initiated by Endo Pharmaceuticals. This decision clears the way for Depomed to continue its patent infringement lawsuit against Endo related to OPANA ER.

Depomed's patent infringement lawsuits in New Jersey Federal District Court alleging infringement of U.S. Patent Nos. 6,340,475 and 6,635,280 by Endo's OPANA ER product and Purdue's Oxycontin product have been stayed pending the outcome of the IPRs initiated by Endo and Purdue.

In July 2015, Depomed announced the PTAB had confirmed the patentability of all 25 claims of the same patents in IPR challenges initiated by Purdue. Based on the PTAB's final decisions against the IPR challenges initiated by Endo and Purdue, Depomed will request that the District Court lift the stay. Endo and Purdue will not be able to assert invalidity arguments based on prior art they raised or could have raised in the IPRs.

Last week, Depomed announced that on September 16, 2015 USPTO's PTAB issued its final decision in IPR proceedings initiated by Endo against Depomed's US Patent No. 6,723,340 determining that eight of the nine challenged claims (of 19 total patent claims) are unpatentable. The decision has no impact on the expected market exclusivity of any of Depomed's products or receivable royalties and the company is considering an appeal of the decision to the United States Court of Appeals for the Federal Circuit.