Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc.

Time-Barred IPR Petitioners Have Appellate Standing Following Board’s Discretionary Joinder

Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc., __ F.3d __, 2019 WL ___ (Fed. Cir. Feb. 1, 2019) (LOURIE, Bryson, Wallach) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR decision confirming patentability of RCT’s patent. The patent relates to compounds useful in the treatment of epilepsy and other central nervous system disorders.

Standing: The opinion rejects RCT’s argument that the Appellants lack standing. Although RCT had sued each of them more than a year before each Appellant filed an IPR petition of its own, the petition giving rise to the present appeal had been filed by non-appellant Argentum, and the Board has exercised its discretion to join each Appellant to Argentum’s IPR as per § 315(c). Applying Lexmark, 572 U.S. 118 (2014), the opinion reasons that the Appellants “fall within the zone of interests of § 319 [which confers upon parties the right to appeal] and are not barred from appellate review.” Op. at 13.

Nonobviousness: The record supported the Board’s nonobviousness determination. Analyzing the record, the opinion rejects Appellants’ argument that a person of skill would have been motivated to combine various prior art so as to reach the invention. The Board was within its discretion when it credited RCT’s expert over Appellants’. The opinion also rejects Appellants’ arguments that the Board improperly applied the burden of proof. “Appellants’ arguments are merely an attack on factual findings under the guise of a challenge to the Board’s legal analysis.” Op. at 18.

The Fed Cir rejects Appellants’ request for a SAS-type remand as waived. “Here, Appellants’ request—made over 6 months after the SAS decision—was not prompt.” Id. at 19. The opinion criticizes Appellants’ decision to raise the issue only in rebuttal briefing “when RCT had no meaningful opportunity to respond.” Id.

KEYWORDS: INTER PARTES REVIEW; APPELLATE STANDING; NONOBVIOUSNESS (YES); SAS; REMAND; WAIVER