Cyrus Morton Achieves Institution of Post-Grant Review, Becomes First Attorney to Litigate All Four PTAB Proceedings

Cyrus Morton, chair of the firm’s Patent Office Trials Group, recently achieved institution of a petition for Post-Grant Review before the Patent Trial and Appeals Board (PTAB) on behalf of the firm’s client, Collegium Pharmaceutical. In doing so, Morton became the first attorney in the nation to have a PTAB trial in each of the four possible AIA patent challenges before the PTAB: inter-partes review (IPR), covered business method (CBM), post-grant review (PGR), and derivation.

“I’m not surprised that Cy is the first to scale all four summits of the PTAB,” said Jake Holdreith, leader of the firm’s Health and Life Sciences Industry Group, “Cy is one of the most active PTAB attorneys in the country, and he knows how to achieve results for his clients in the PTAB.”

That skill was apparent in Morton’s recent PGR filing on behalf of Collegium. The case concerns a patent for a “pharmaceutical formulation containing gelling agent.” In this matter, Morton’s team was able to persuade the PTAB to take the unusual step of instituting PGR of a patent that was not reviewed under the America Invents Act (AIA). The patent at issue was filed in 2001. Under normal circumstances, this would render it ineligible for PGR, which is available only for patents filed in 2013 or later. Morton’s team, however, was able to show that the original 2001 provisional patent application lacked an adequate written description, meaning that the patent could not claim priority to this or any other application in the priority chain. As a result, the actual filing date of the patent became February 4, 2016 – the date of filing of the application that ultimately matured into the patent-in-question. As a result, the patent was eligible for PGR.

In addition to being the first to reach the trial phase in all four types of patent office actions, Morton was also the first attorney to achieve a derivation proceeding, which was instituted on behalf of client Andersen Corporation in March 2018. He remains the only attorney to have done so.

As the chair of Robins Kaplan’s Patent Office Trials Group, Morton is also deeply familiar with IPR and CBM claims. In 2017, Docket Navigator identified him as one of the top 10 most prolific attorneys at the PTAB.