Paper No. 14
`Entered: January 27, 2016
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LANNETT HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`ASTRAZENECA AB,
`Patent Owner.
`____________
`
`Case IPR2015-01629
`Patent 6,750,237 B1
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`Entered: January 27, 2016
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LANNETT HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`ASTRAZENECA AB,
`Patent Owner.
`____________
`
`Case IPR2015-01629
`Patent 6,750,237 B1
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-01629
`Patent 6,750,237 B1
`
`
`INTRODUCTION
`On July 28, 2015, Lannett Holdings, Inc. (“Petitioner”) filed a Petition
`for an inter partes review of claims 1–16 of U.S. Patent No. 6,750,237 B1
`(“the ’237 patent,” Ex. 1001). Paper 2 (“Pet.”). AstraZeneca AB (“Patent
`Owner”) timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Thereafter, with our authorization (Paper 9), Petitioner filed a Reply (Paper
`10), and Patent Owner filed a Sur-reply (Paper 12), both addressing the issue
`of whether the Petition is time-barred under 35 U.S.C. § 315(b).
`For the reasons provided below, we determine that the Petition is
`barred under 35 U.S.C. § 315(b). We, therefore, deny the Petition.
`
`
`RELATED PROCEEDINGS
`According to the parties, Patent Owner has previously asserted the
`’237 patent against Petitioner in Impax Laboratories, Inc. v. Lannett
`Holdings, Inc., Case No. 1:14-cv-00984 (D. Del. filed July 25, 2014), and
`Impax Laboratories, Inc. v. Lannett Holdings, Inc., case No. 1:14-cv-00999
`(D. Del. Filed July 30, 2014). Pet. 7; Paper 6, 2. The two cases have been
`consolidated. Pet. 7; Paper 6, 2.
`Petitioner also concurrently filed a petition in IPR2015-01630,
`seeking an inter partes review of U.S. Patent No. 7,220,767 B2, a patent in
`the same family as the ’237 patent. Pet. 7.
`
`
`ANALYSIS
`Under 35 U.S.C. § 315(b), an inter partes review may not be
`instituted “if the petition requesting the proceeding is filed more than 1 year
`2
`
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`IPR2015-01629
`Patent 6,750,237 B1
`
`after the date on which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging infringement of the patent.”
`Patent Owner asserts that the Petition is barred under 35 U.S.C. § 315(b)
`because it was filed more than one year after Petitioner was served with an
`infringement complaint. Prelim. Resp. 1–7. Petitioner contends that (1) the
`complaint Patent Owner refers to was not properly served; and (2) the
`district court lacked subject matter jurisdiction over that action. Reply 3–7.
`As a result, Petitioner argues, the § 315(b) time bar is inapplicable. Id. at 1.
`Based on the record before us, we are not persuaded by Petitioner’s
`argument.
`The following facts are undisputed. On July 25, 2014, AstraZeneca
`AB, Patent Owner in the instant proceeding, together with the exclusive
`licensee of the ’237 patent, filed a complaint in district court against
`Petitioner, alleging infringement of the ’237 patent (“the First Action”).
`Prelim. Resp. 1–2; Reply 1; Ex. 2001. The complaint states that
`“AstraZeneca AB is the owner by assignment of the ’237 patent and has the
`right to sue for infringement thereof.” Ex. 2001 ¶ 24.
`On July 30, 2014, the co-plaintiffs in the First Action, joined by
`AstraZeneca UK Limited, filed another complaint in the same district court
`against Petitioner, again alleging infringement of the ’237 patent (“the
`Second Action”). Prelim. Resp. 5; Reply 2; Ex. 2005. This second
`complaint states that “AstraZeneca AB and AstraZeneca UK Limited own
`all rights, title, and interest in the ’237 patent and have the right to sue for
`infringement thereof.” Ex. 2005 ¶ 25. Petitioner was served in the Second
`Action on July 31, 2014. Ex. 1030.
`
`3
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`IPR2015-01629
`Patent 6,750,237 B1
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`On September 24, 2014, Petitioner filed a motion to dismiss the First
`Action for lack of subject matter jurisdiction. Exs. 2007, 2008. In the
`motion, Petitioner argued that the statement in the Second Action that
`“AstraZeneca AB and AstraZeneca UK Limited own all rights, title, and
`interest in the ’237 patent” “constitutes a judicial admission that at least one
`co-owner of . . . the [’237] patent[] is not a party to the First Action.”
`Ex. 2008, 5. According to the district court, based on the record evidence in
`that proceeding, it “cannot tell” whether AstraZeneca UK should have been
`joined in the First Action. Ex. 2011, 3. As a result, the district court denied
`Petitioner’s motion to dismiss “without prejudice to its renewal after
`discovery is complete, should [Petitioner] believe that there then is a point to
`the motion.” Id. In the same Order, the district court consolidated the two
`actions “FOR ALL PURPOSES.” Id. at 1.
`The parties dispute whether there was an effective service in the First
`Action and whether the district court has subject matter jurisdiction over the
`First Action. Patent Owner argues that on July 25, 2014, the complaint and
`summons were properly served on CSC Entity Services, LLC, a registered
`agent authorized to accept service of process on behalf of Petitioner. Prelim.
`Resp. 3–4 (citing Ex. 2002). Because this service was effected more than
`one year before the instant Petition was filed on July 28, 2015,1 Patent
`Owner asserts, the Petition is barred under § 315(b). Id.
`
`
`1 Because July 25, 2015 was a Saturday, the one-year date extended to the
`next business day, on July 27, 2015. See 37 C.F.R. § 1.7.
`4
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`IPR2015-01629
`Patent 6,750,237 B1
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`
`Petitioner does not dispute that CSC is its registered agent in
`Delaware and that CSC accepted service of the first complaint on July 25,
`2014. Reply 3. Petitioner nevertheless contends that the service in the First
`Action does not comply with Delaware law. Id. Specifically, relying on
`Delaware Title 6, § 18-105, Petitioner argues, because CSC is a limited
`liability company, service must be made by delivery “personally to any
`manager” of CSC. Id. The Proof of Service, however, shows CSC, instead
`of an individual, as having accepted service. Id. at 3–4 (citing Ex. 2002).
`As a result, Petitioner asserts, “there was no service of the first complaint,
`the time bar of § 315(b) was not triggered.” Id. at 4.
`Petitioner is the defendant in the First Action. Thus, it is the entity
`status of Petitioner, and not its registered agent for accepting service, that
`dictates the proper procedure for service of process. Petitioner is a
`corporation. Ex. 2027. Delaware Title 6, § 18-105, the statute Petitioner
`relies on, addresses “Service of process on domestic limited liability
`companies.” Thus, on its face, it does not apply to service on Petitioner,
`which is not a limited liability company. Petitioner also does not cite any
`authority under Delaware law applying this statute to a limited-liability-
`company agent receiving service on behalf of a corporation. We, therefore,
`are not persuaded by Petitioner’s argument, which is based on this
`inapplicable statute.
`In Delaware, service of process on a corporation “shall be made by
`delivering a copy personally to . . . the registered agent of the
`corporation . . . .” 8 Del. C. § 321. Petitioner does not argue that the July
`25, 2014 service fails to comply with this applicable statute. Thus, the mere
`5
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`IPR2015-01629
`Patent 6,750,237 B1
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`fact that the Proof of Service shows CSC, and not an individual, as having
`accepted the service, does not persuade us that service on July 25, 2014 was
`ineffective.
`Petitioner next contends that because the district court lacks subject
`matter jurisdiction over the First Action, “the complaint in that action,
`regardless of when served, cannot constitute a basis for barring this Petition
`under § 315(b).” Reply 5. In doing so, Petitioner presents the same
`arguments as those it did in its motion to dismiss before the district court.
`Id. at 5–7.
`Petitioner is correct that a jurisdictionally-deficient action generally
`would not trigger the § 315(b) time bar. The failure to name the co-owner of
`a patent, who has not otherwise transferred all substantial rights in the
`patent, constitutes a jurisdictional deficiency in an infringement action. See
`Israel Bio–Eng’g Project v. Amgen Inc., 475 F.3d 1256, 1264–65 (Fed. Cir.
`2007) (“Absent the voluntary joinder of all co-owners of a patent, a co-
`owner acting alone will lack standing.”). In this case, however, Petitioner
`does not present persuasive evidence to show that the First Action is indeed
`jurisdictionally deficient by failing to name AstraZeneca UK as a co-
`plaintiff.
`First, the assignment records for the ’237 patent show only
`AstraZeneca AB as the assignee for the patent. Exs. 2009, 2010. The
`recording of an assignment with the PTO “creates a presumption of validity
`as to the assignment and places the burden to rebut such a showing on one
`challenging the assignment.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
`F.3d 1319, 1328 (Fed. Cir. 2010).
`
`6
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`IPR2015-01629
`Patent 6,750,237 B1
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`Moreover, as of now, the First Action is consolidated with the Second
`Action, and has not been dismissed. Ex. 2011. Petitioner emphasizes that
`the district court denied the motion to dismiss “without prejudice to its
`renewal after discovery is complete.” Reply 7 (citing Ex. 2011, 3).
`Petitioner, however, fails to appreciate that we do not have any more
`evidence than the district court had when it issued the order more than a year
`ago. The district court “cannot tell” whether there is proper subject matter
`jurisdiction in the First Action, and neither can we based on the present
`record. Ex. 2011, 3.
`The only evidence Petitioner relies on is the statement in the
`complaint for the Section Action that “AstraZeneca AB and AstraZeneca
`UK Limited own all rights, title, and interest in the ’237 patent and have the
`right to sue for infringement thereof.” Ex. 2005 ¶ 25. That statement,
`however, does not necessarily contradict Patent Owner’s assertion in the
`First Action that “AstraZeneca AB is the owner by assignment of the ’237
`patent and has the right to sue for infringement thereof.” Ex. 2001 ¶ 24.
`Apparently, as the district court acknowledged, Patent Owner argued that
`AstraZeneca AB owns the ’237 patent, with “some interest” resting with
`AstraZeneca UK. Ex. 2011, 2.
`The district court allowed Petitioner an opportunity for discovery to
`address the issue. See id. at 3 (denied the motion to dismiss “without
`prejudice to its renewal after discovery is complete”). Over a year has since
`passed, and only a little over a month is left for discovery. See Reply 2 n.2
`(stating the discovery cutoff date is March 18, 2016). Yet, Petitioner has not
`presented any evidence to show the level or type of interest that AstraZeneca
`7
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`IPR2015-01629
`Patent 6,750,237 B1
`
`UK retains in the ’237 patent; nor has Petitioner demonstrated that it sought
`but was unable to obtain such evidence through discovery. As a result, like
`the district court, based on the record evidence, we do not find the statement
`in paragraph 25 of the second complaint, in and of itself, is sufficient to
`show that AstraZeneca UK is a co-owner of the ’237 patent or otherwise has
`substantial rights in the patent such that it should have been named as an
`indispensable party in the First Action.
`In sum, based on evidence of the record, Petitioner has not made
`sufficient showing that it is not barred from requesting an inter partes
`review, as required by 37 C.F.R. § 42.104(a).
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s request for an inter partes review of
`claims 1–16 of the ’237 patent is denied.
`
`
`
`8
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`IPR2015-01629
`Patent 6,750,237 B1
`
`PETITIONER:
`
`Joseph F. Posillico
`Frank T. Carroll
`FOX ROTHSCHILD LLP
`jposillico@foxrothschild.com
`fcarroll@foxrothschild.com
`
`
`
`PATENT OWNER:
`
`Michael Flibbert
`Maureen Queler
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`michael.flibbert@finnegan.com
`maureen.queler@finnegan.com
`
`9
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