Joinder Petitioners Have Standing To Appeal

In Mylan v. Research Corporation Tech (RCT), the Patent Owner, who won at the PTAB, argued that time barred joinder petitioners (Mylan, Breckenridge and Alembic – Appellants) could not appeal if the non-time barred petitioner (Argentum) could not appeal because Appellants were not within the zone of interest under 35 USC 319. The Federal Circuit disagreed, allowed the appeal, and affirmed the Patent Owner’s win at the PTAB.

The Court needed to determine whether Congress authorized appeal for joinder petitioners when the first petitioner (Argentum) had no right to appeal. The Court found Section 315 contemplates joined petitioners as “parties.” The Court then noted Section 319 provides that “[a] party dissatisfied with the final written decision” of the Board “may appeal the decision pursuant to sections 141 through 144. Any party to the inter partes review shall have the right to be a party to the appeal.” And the Court found party should mean the same thing between Sections 315 and 319. Further, the Court found that despite Appellants being subordinate to Argentum during the PTAB trial based on their joinder status, that did not diminish their ability to be full appellants. Finally, Appellants appeal was not an improper end around the time bar rules.

Generic That Ends Activities Ends Standing to Appeal

In Momenta v. Bristol Myers Squibb, the Federal Circuit found no standing. The Court reiterated that although an AIA proceeding does not require case or controversy standing to file agency proceeding, those factors were still required for appeal. Here, Momenta, a generic, has ceased all infringing activity – development of a Orencia® biosimilar -before the end of their IPR trial, although to that point it had spent millions of dollars. And Momenta was subject to all petitioner estoppels for having brought the IPR proceeding. Further, Momenta argued it might receive a royalty from another generic, Mylan. Despite these facts, the Court relied on Consumer Watchdog, RPX v ChanBaond, JTEKT v GKN, DuPont v Synvina, along with several Supreme Court standing decisions (Lujan, Summers v Earth Island, Cuozzo, etc.), to find no standing and mootness of the appeal because there was no actual case or controversy without any real potential for injury or injury in fact to Momenta. The estoppel provisions and weak potential for future royalties failed to supersede the fact that there was no longer a thread of infringement since Momenta ceased all activities directed toward this biosimilar.

This article appeared in the February 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.