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A Party Joined to an IPR Has Standing to Appeal to the Federal Circuit
On February 1, 2019, the Federal Circuit issued a decision in Mylan Pharmaceuticals Inc. et al. v. Research Corporation Technologies, Inc. (Federal Circuit docket no. 17-2088). In this case, Research Corporation Technologies (RCT) argued that the appellants (Mylan, Breckenridge, and Alembic), who were joined to the IPR proceeding, lack standing to appeal the final written decision of the PTAB to the Federal Circuit. In contrast to other recent cases in which the issue of standing was raised, RCT did not assert that the appellants lacked Article III standing. Instead, RCT argued that the appellants did not fall into the zone of interests of Section 319 of the Patent Law, which provides for appeals of PTAB final written decisions in inter partes review proceedings.
As a matter of background, Argentum filed a petition for institution of an IPR challenging the validity of patent claims in U.S. Reissue Patent 38,551 (“the ’551 patent”) owned by RCT. After the PTAB instituted the IPR, the appellants each filed their own IPR petitions with motions for joinder, since the appellants had each been sued for infringement of the ‘551 patent more than one year earlier. The appellants’ IPR’s were joined with the Argentum IPR, and the PTAB ultimately issued a final written decision upholding the patentability of the claims of the ‘551 patent. The appellants (but not Argentum) appealed the final written decision to the Federal Circuit.
RCT subsequently took the position that since the appellants’ were time barred from separately bringing their own IPR proceeding, they fell outside of the zone of interests protected by Section 319 invoked to bring the appeal. Essentially, RCT’s argument was that since the appellant’s could not have brought their own IPR proceeding, and since the original petitioner Argentum itself lacked standing to appeal, the appellants could not appeal the IPR decision. Following precedent in Lexmark Int’l, Inc. v. Static Control Components, Inc. (572 U.S. 118, 129 (2014), quoting Allen v. Wright, 468 U.S. 737, 751 (1984)), the Federal Circuit applied traditional principles of statutory interpretation to determine whether the appellants fell within the zone of interests of the law. Specifically, the Federal Circuit noted that Section 315(c) of the Patent Law allows for joinder of parties to an IPR. Thus, under Section 315(c) the appellant’s were parties to the IPR. Further, the Federal Circuit noted that Section 319 of the Patent Law provides any party to the IPR the right to appeal the final written decision. The Federal Circuit found that the word “party” has the same meaning between the two sections, and therefore concluded that a joined party has the right to appeal.
The Federal Circuit also noted that although the appellants’ role was limited in the IPR to an “understudy” role in which the appellants could not introduce their own independent evidence, such limitations did not affect their right to appeal.
A copy of the Mylan decision may be accessed at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2088.Opinion.2-1-2019.pdf.
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