Research Corporation Technologies, Inc. (RCT) sued Mylan Pharmaceuticals, Inc. (Mylan), Breckenridge Pharmaceutical, Inc. (Breckinridge), and Alembic Pharmaceuticals Ltd. (Alembic), in federal district court, accusing them of infringing United States Reissued Patent No. RE38,551. The patent claims pharmaceutical compositions useful in the treatment of epilepsy and other central nervous system disorders. Within one year of being served with the infringement complaint, Breckenridge alone petitioned the PTAB to institute inter partes review of the patent, but the PTAB denied the petition on its merits. Argentum Pharmaceuticals LLC (Argentum), which has never been accused of infringing the patent, subsequently and successfully petitioned for IPR. Mylan, Breckenridge, and Alembic then timely moved the PTAB to join Argentum’s IPR under 35 U.S.C. § 315(c). The PTAB granted the movants’ request, but their participation was subject to Argentum’s acquiescence and the PTAB prohibited them from filing papers or exhibits apart from Argentum. The PTAB ultimately issued a final written decision that rejected the challenges to the validity of the instituted claims. Mylan, Breckenridge and Alembic, but not Argentum, appealed the final written decision to the Federal Circuit.
RCT moved to dismiss the appeal, arguing (1) none of the appellants can be considered “a party” because each was restricted at the PTAB to only a subordinate, non-independent joinder role, and (2) the appellants were barred from filing a petition for review under 35 U.S.C. § 315(b) because they had been served more than a year earlier with a complaint alleging infringement of the patent. The appellants contended that they were each joined as a “party” to the IPR proceeding and also noted that section 315(b) expressly provides that the one-year time limitation does “not apply to a request for joinder under subsection (c).”
The court denied RCT’s motion without prejudice. The court’s decision on the merits is pending. But this is an interesting case because it shows how a litigation defendant, unsuccessful at initiating an IPR, can join another party’s IPR more than a year after being served with an infringement complaint. Moreover, it shows that the defendant (joined party) may have standing to appeal an adverse final written decision even if the IPR petitioner is not a party to the appeal.