Complaint and Petitions for Inter Partes Review filed by Ocular Therapeutix against Mati Therapeutics

On December 14, 2018, Ocular Therapeutix, Inc. (“Plaintiff”) filed a complaint against Mati Therapeutics, Inc. (“Defendant”) for declaratory judgment of non-infringement of U.S. Patent No. 7,922,702 (“the ‘702 Patent”). The ‘702 Patent is owned by the Defendant and is drawn to drug delivery devices, particularly devices known as “punctal plugs” or “canalicular inserts,” that block tear drainage or deliver therapeutic agents to the eye. The Plaintiff is requesting declaratory judgment that its Dextenza® inserts do not infringe the ‘702 Patent. The case remains pending and is captioned 1:18-cv-01991 (D. Del.).

On December 14, 2018, Ocular Therapeutix, Inc. (“Petitioner”) also filed two Petitions to the USPTO’s Patent Trial and Appeal Board (“Board”): IPR2019-00442 for inter partes review of claims 1, 3, 5-8, 10, 12-14 of U.S. Patent No. 9,463,114 (“the ‘114 Patent”), and IPR2019-00448 for inter partes review of claims 1-23 of U.S. Patent No. 9,849,082 (“the ‘082 Patent”). The ‘114 and ‘082 Patents are owned by Mati Therapeutics, Inc. and are drawn to methods and drug delivery systems for ocular pain and other ophthalmic conditions. In IPR2019-00442, Petitioner alleges that claims 1, 3, 6-8, 10 and 13 are anticipated under 35 U.S.C. § 102, and claims 1, 3, 5-8, 10, and 12-14 are obvious under 35 U.S.C. § 103 over various patent and non-patent literature documents. In IPR2019-00448, Petitioner alleges that claims 1-7, 9-16, 18-20, and 22-23 are anticipated under 35 U.S.C. § 102, and claims 1-23 are obvious under 35 U.S.C. § 103 over various patent and non-patent literature documents. The inter partes reviews remain pending at the Board.

By:  April Breyer Menon

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