GE Healthcare Ltd. v. The Johns Hopkins University

GE Healthcare Ltd. initiated an Inter Partes Review (IPR) proceeding, IPR2025-00808, against The Johns Hopkins University concerning U.S. Patent No. 11,938,201. The Petitioner, GE Healthcare Ltd., is a global medical technology, pharmaceutical diagnostics, and digital solutions company that spun off from General Electric in 2023, offering a broad portfolio of products in imaging, ultrasound, patient care, and pharmaceutical diagnostics. The Patent Owner, The Johns Hopkins University, is a prominent private research university, actively involved in medical research and technology development. The patent at issue, U.S. Patent No. 11,938,201, is titled "Radiopharmaceuticals for Targeting Fibroblast Activation Protein (FAP)" and describes low molecular weight compounds with a modular three-component structure for radiopharmaceutical and optical imaging, designed to selectively bind to Fibroblast Activation Protein-alpha (FAP-α), a protein linked to various cancers.

This IPR was filed on March 27, 2025, at the Patent Trial and Appeal Board (PTAB) and was terminated-settled on July 22, 2025, before a final decision on the merits. The termination was based on a joint motion from the parties and was specifically "without prejudice" to GE Healthcare Ltd. filing a subsequent petition concerning the '201 patent after the resolution of co-pending PGR2025-00012, another challenge against the same patent for which the Board had already instituted review. The case was overseen by Administrative Patent Judges Jeffrey N. Fredman, James A. Worth, and Debra L. Dennett. The strategic termination of this IPR, alongside a parallel Post-Grant Review (PGR) for the same patent and the subsequent filing of IPR2026-00069 by GE Healthcare against the same patent owner on October 21, 2025, highlights a complex and persistent challenge to the patent's validity.

The case is notable for its procedural intricacy involving multiple PTAB challenges to the same patent within a short timeframe, suggesting a concerted effort by GE Healthcare to invalidate the '201 patent. Given GE Healthcare's significant presence in medical imaging and pharmaceutical diagnostics, and Johns Hopkins' role as an innovator in medical science, the outcome of these challenges to a patent covering cancer-related radiopharmaceuticals could have implications for the development and commercialization of new diagnostic agents in the competitive healthcare market.

Key Legal Developments and Outcome for IPR2025-00808

This Inter Partes Review (IPR) proceeding, IPR2025-00808, was initiated by GE Healthcare Ltd. against The Johns Hopkins University, challenging U.S. Patent No. 11,938,201. The case ultimately resulted in a procedural termination due to settlement.

Chronological Summary of Legal Developments:

• 2025-03-27: IPR Petition Filed. GE Healthcare Ltd. filed a petition for Inter Partes Review, challenging the patentability of U.S. Patent No. 11,938,201, owned by The Johns Hopkins University.
• 2025-07-13: Parallel PGR Proceeding Filed. GE Healthcare Ltd. also filed a Post-Grant Review (PGR) proceeding, PGR2025-00059, against The Johns Hopkins University for the same patent, U.S. Patent No. 11,938,201.
• 2025-07-16: Institution of Parallel PGR Proceeding. The Board instituted review for the co-pending PGR2025-00012 (likely a typo in source, referring to PGR2025-00059 as it's for the same patent and parties).
• 2025-07-22: Termination-Settled. The IPR proceeding IPR2025-00808 was terminated based on a pre-institution settlement between the parties, GE Healthcare Ltd. and The Johns Hopkins University.
• 2025-07-23: Joint Motion to Terminate Granted. The Patent Trial and Appeal Board (PTAB) issued an order granting a Joint Motion to Terminate filed by both GE Healthcare Ltd. (Petitioner) and The Johns Hopkins University (Patent Owner). The termination was without prejudice to GE Healthcare filing another petition concerning U.S. Patent No. 11,938,201 at a later date, subsequent to the termination of the co-pending PGR2025-00012 (likely PGR2025-00059).
• 2025-10-23: Petitioner's Request for Refund of Post-Institution Fees. Following the termination, GE Healthcare Ltd. submitted a request for a refund of post-institution fees.
• 2025-10-26: Refund Approved. The Board approved the refund request.
• 2025-10-21: Subsequent IPR Proceeding Filed (IPR2026-00069). GE Healthcare Ltd. filed another IPR petition, IPR2026-00069, challenging claims 1-3 of the same patent, 11,938,201, against The Johns Hopkins University. This later petition asserted unpatentability grounds based on obviousness over prior art including US-633, Meletta, and Jansen.

Outcome:

IPR2025-00808 was terminated due to a settlement between GE Healthcare Ltd. and The Johns Hopkins University prior to the Board's decision on institution. This termination was procedural and without prejudice, allowing for future challenges to the patent. Indeed, GE Healthcare Ltd. subsequently filed another IPR challenging the same patent (IPR2026-00069).

Based on available information for IPR2025-00808 and related proceedings involving GE Healthcare Ltd. and The Johns Hopkins University, the following counsel are identified as representing the plaintiff, GE Healthcare Ltd.:

• Jeffrey P. Kushan

  • Role: Lead Counsel
  • Firm: Sidley Austin LLP, Washington, D.C.
  • Experience Note: Serves as a global coordinator of Sidley's national IP Litigation practice, focusing on patent litigation, appeals, and over 225 contested proceedings before the PTAB, including cases involving cancer biologics and Hatch-Waxman Act disputes.

• Lauren Katzeff

  • Role: Backup Counsel
  • Firm: Sidley Austin LLP, Washington, D.C.
  • Experience Note: A trial litigator with significant experience in intellectual property proceedings before U.S. district courts, the PTAB, and the Federal Circuit, particularly in the life sciences industry, including patent litigation involving biologics and diagnostic agents.

• Amit Bhatla

  • Role: Backup Counsel (pro hac vice, pending at the time of the related filing)
  • Firm: Sidley Austin LLP, Washington, D.C.
  • Experience Note: Focuses his practice on high-stakes patent litigation and PTAB proceedings, with a background in chemical engineering.

The Johns Hopkins University, as the Patent Owner in IPR2025-00808, is represented by both external and in-house counsel.

External Counsel:

• Name: Eldora L. Ellison, Ph.D.
• Role: Counsel for Patent Owner (Director and Co-chair of PTAB Trials practice)
• Firm: Sterne, Kessler, Goldstein & Fox P.L.L.C.
• Office Location: Washington, D.C.
• Relevant Experience: Dr. Ellison is a director in Sterne Kessler's Biotechnology & Chemical and Trial & Appellate Practice Groups and co-chairs the firm's PTAB Trials practice. She possesses extensive experience in inter partes patent matters, including representing clients in over 80 inter partes review and post-grant review proceedings. She served as lead counsel for ImmunoGen in Phigenix v. ImmunoGen, 845 F.3d 1168 (Fed. Cir. 2017), a case that established the legal standard for demonstrating standing in IPR appeals. She has also served as lead patent strategist for the University of California on its CRISPR technology.

In-house Counsel (likely involved in oversight and strategy):

• Name: Nicholas Tymoczko
• Role: Associate General Counsel, Intellectual Property
• Firm: The Johns Hopkins University Office of the Vice President and General Counsel
• Office Location: Baltimore, Maryland
• Relevant Experience: Mr. Tymoczko joined Johns Hopkins University in January 2022. His practice focuses on intellectual property matters, including patents, copyrights, trademarks, and trade secrets. Before joining Johns Hopkins, he was an associate at Paul Hastings LLP, focusing on complex patent litigation and related intellectual property disputes.