Deerfield
About Deerfield

Launched in 1994, Deerfield Management Company is an investment firm dedicated to advancing healthcare through information, investment, and philanthropy—all toward the end goal of cures for disease, improved quality of life, and reduced cost of care.

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Investment

Supporting companies across the healthcare ecosystem with flexible funding models…

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Information

Delivering market research to the Deerfield team, its portfolio companies and other partners.

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Philanthropy

A New York City-based not-for-profit devoted to advancing innovative health care initiatives.

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Research Collaborations

Deerfield partners with leading academic research centers, providing critical funding and expertise to further sustain and accelerate the commercialization of discoveries toward meaningful societal impact by advancing cures for disease.

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Strategic Partners

As a strategic partner, Deerfield offers capital, scientific expertise, business operating support, and unique access to innovation.

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Deerfield Foundation

The Deerfield Foundation is a New York City-based not-for-profit organization whose mission is to improve health, accelerate innovation and promote human equity.

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Cure Campus

Cure is a 12-story innovations campus in New York City that intends to bring together innovators from academia, government, industry, and the not-for-profit sectors to advance human health and accelerate the fight against disease.

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Cure Programming

Cure has a series of expert lectures intended to advance thought in healthcare, management, innovation, policy, and other relevant subjects. This fosters growth and education for those at Cure and its guests.

Cure Symposium Calendar

Inter Partes Review (IPR) Proceedings

Inter partes review (IPR) proceedings were introduced by the America Invents Act on September 16, 2012.  IPRs were intended to provide a rapid, low-cost alternative to litigation.  They allow any party to challenge the validity of an issued patent based on published prior art. 

In the pharmaceutical and biotech industries alone, there have been 268 IPR requests to date, indicating widespread use.  IPRs make it easier to invalidate patents compared to Federal district court litigation because: (1) the challenged patent is not presumed valid; (2) the burden of proving invalidity is lower in IPRs than in litigation, and (3) the standard for interpreting claim terms is “broadest reasonable interpretation” and thus is more inclusive.  However, rather than making the life science industry more predictable, IPRs have introduced increased uncertainty and strategic gamesmanship:

  • IPRs are relatively new proceedings and the rules are still evolving.
    • To date, very few requests to amend patents during IPR proceedings have been granted, but the USPTO is now encouraging claim amendments.
    • Substantive testimonial evidence, including expert testimony, is no longer prohibited in preliminary responses from patent owners.
  • While the intent of IPRs was to provide an alternative to litigation, practically they provide alleged infringers with an additional chance to invalidate a patent: after nearly a year in litigation, the alleged infringers often file an IPR close to the deadline so that both proceedings run concurrently. 
  • IPRs and litigations sometimes produce inconsistent outcomes.  For example, two patents protecting Novartis’s Exelon® patch survived Federal district court litigation and Federal Circuit appeal, but were invalidated in the IPR proceedings.
  • Second ANDA filers sometimes strategically use IPR proceedings to interfere with the settlement dynamics established by the Hatch-Waxman litigation scheme.
  • Creators of the IPRs did not foresee that financial challengers with no plans to introduce generic drugs would sometimes file for IPRs while shorting the stocks.
  • The rate of IPR institutions varies by judge and suggests personal biases.

In the next quarter, these upcoming IPR decisions may be of interest to people monitoring biotech and pharma industries:

  • Adcirca (Eli Lilly)
  • Copaxone (Teva)
  • Effient (Eli Lilly)
  • Inomax (Ikaria)
  • Prolensa (Bausch + Lomb)
  • Xyrem (Jazz)