`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 1, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ACCORD HEALTHCARE, INC., USA
`Petitioner
`
`v.
`
`ELI LILLY & COMPANY
`Patent Owner
`____________
`
`Case IPR2013-00356
`Patent 7,772,209
`____________
`
`
`Before MICHAEL J. FITZPATRICK, RAMA G. ELLURU, and
`SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2013-00356
`Patent 7,772,209
`
`I.
`
`INTRODUCTION
`
`
`
`
`
`Accord Healthcare, Inc., USA (“Accord”) filed a petition (Paper 4) on
`
`June 14, 2013 to institute an inter partes review of claims 1-22 of U.S.
`
`Patent 7,772,209 (“the ’209 patent”). Accord later filed a corrected petition (Paper
`
`6, “Pet.”). Patent Owner Eli Lilly & Company (“Eli Lilly”) filed a preliminary
`
`response (Paper 10, “Prelim. Resp.”). The Board, acting on behalf of the Director,
`
`has jurisdiction under 35 U.S.C. § 314.
`
`The ’209 patent is involved in several civil actions for patent infringement,
`
`including Eli Lilly & Co. v. Accord Healthcare, Inc., USA et al., 1:12-cv-00086-
`
`TWP-DKL (S.D. Ind.) (“the ʼ086 action”), filed January 20, 2012 and served
`
`January 23, 2012, and Eli Lilly & Co. v. Accord Healthcare, Inc., USA, 1:13-cv-
`
`00335-TWP-DKL (S.D. Ind.) (“the ʼ335 action”), filed February 28, 2013 and
`
`served March 7, 2013. Pet. 1; Prelim. Resp. 5-6.* The ’335 action has been
`
`consolidated into the ’086 action. Prelim. Resp. 6-7.
`
`We deny the petition because it is time-barred under 35 U.S.C. § 315(b).
`
`II. ANALYSIS
`
`Eli Lilly served Accord with a complaint alleging infringement of the ’209
`
`patent on at least two occasions: the ’086 action, on January 23, 2012, and the
`
`’355 action, on March 7, 2013. Ex. 2004 (return of service for the ’086 action);
`
`Prelim. Resp. 5-6; see also Pet. 1. The earlier complaint was served more than one
`
`year before Accord filed the present petition; the latter, less than one year.
`
`
`
`
`
`
`* The parties disagree as to whether the complaint in the ’355 action was served on
`February 28, 2013 or March 7, 2013. For purposes of this decision, we accept Eli
`Lilly’s representation that the complaint was served on March 7, 2013.
`
`2
`
`
`
`
`IPR2013-00356
`Patent 7,772,209
`
`
`
`Section 315(b) of Title 35 of the United States Code provides:
`
`
`
`(b) PATENT OWNER’S ACTION.—An inter partes
`review may not be instituted if the petition requesting the
`proceeding is filed more than 1 year after the date on
`which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging infringe-
`ment of the patent. The time limitation set forth in the
`preceding sentence shall not apply to a request for joinder
`under subsection (c).
`
`Accord argues that its petition is timely because it was filed less than one
`
`year after the date on which it was served with a complaint in the ’355 action.
`
`Pet. 2-3. Accord acknowledges service on January 23, 2012 of a complaint in the
`
`’086 action, but argues that the two infringement actions concern distinct products
`
`and are based on different sets of facts. Id. at 3 n.1.
`
`We reject Accord’s implicit argument that the one-year period set forth in
`
`§ 315(b) should not be measured from the date of service of the complaint in the
`
`’086 action. The plain language of the statute does not indicate or suggest that the
`
`filing of a later lawsuit renders the service of a complaint in an earlier lawsuit a
`
`nullity. Moreover, as the legislative history of 35 U.S.C. § 315(b) indicates,
`
`Congress intended that inter partes reviews should not be used as “tools for
`
`harassment” by “repeated litigation and administrative attacks.” H.R.Rep. No.
`
`112-98 at 48 (2011). Allowing such attacks “would frustrate the purpose of the
`
`section as providing quick and cost effective alternatives to litigation.” Id.
`
`Accord was “served with a complaint alleging infringement of the patent” on
`
`January 23, 2012. Ex. 2004. The petition was filed more than one year after that
`
`date and is, therefore, barred. See Universal Remote Control, Inc. v. Universal
`
`Elec., Inc., IPR2013-00168, Paper 9 at 4 (PTAB Aug. 26, 2013).
`
`3
`
`
`
`
`IPR2013-00356
`Patent 7,772,209
`
`III. CONCLUSION
`
`
`
`
`
`The Board denies the petition because it was not filed within the time limit
`
`imposed by 35 U.S.C. § 315(b).
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that the petition challenging the patentability of claims 1-22 of
`
`U.S. Patent 7,772,209 is denied.
`
`
`
`4
`
`
`
`
`
`
`
`
`IPR2013-00356
`Patent 7,772,209
`
`For Petitioner:
`
`Chidambaram S. Iyer
`Chandran B. Iyer
`Sughrue Mion PLLC
`
`
`For Patent Owner:
`
`Andrew V. Trask
`Williams & Connolly LLP
`
`Mark J. Stewart
`Eli Lilly & Company
`
`5
`
`
`
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