Case No. IPR2015-01629
`Patent 6,750,237
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`LANNETT HOLDINGS, INC.,
`Petitioner,
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`v.
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`ASTRAZENECA AB,
`Patent Owner.
`____________________________________________
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`Case: IPR2015-01629
`U.S. Patent No. 6,750,237
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`____________________________________________
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`
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`
`
`Patent 6,750,237
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`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
`U.S. Patent No. 6,750,237
`
`____________________________________________
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`I.
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`Case No. IPR2015-01629
`Patent 6,750,237
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`TABLE OF CONTENTS
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`Petitioner Cannot Establish Insufficient Service ............................................. 1
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`A.
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`B.
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`Section 18-105 Does Not Apply ........................................................... 1
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`The July 25, 2014 Service Was Legally Effective ................................ 2
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`1.
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`2.
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`3.
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`Proof of Service Is Prima Facie Evidence of Valid
`Service ......................................................................................... 2
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`Section 321 Does Not Require Service on an Individual ........... 2
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`Petitioner Had Notice of Service ................................................ 3
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`II.
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`Petitioner Cannot Establish a Lack of Standing .............................................. 3
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`A.
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`B.
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`Patent Owner Holds Legal Title to the ’237 Patent .............................. 3
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`The District Court Denied Petitioner’s Motion to Dismiss .................. 5
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`III. Conclusion ....................................................................................................... 5
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`ii
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`Case No. IPR2015-01629
`Patent 6,750,237
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple Inc. v. Rensselaer Polytechnic Inst.,
`IPR2014-00319, Paper 12 (PTAB June 12, 2014) ............................................... 5
`
`Church-El v. Bank of New York,
`No. CIV. 11-877 NLH/KMW, 2013 WL 1190013 (D. Del. Mar.
`21, 2013) ............................................................................................................... 1
`
`eBay, Inc. v. Advanced Auctions LLC,
`IPR2014-00806, Paper 14 (PTAB Sept. 25, 2014) ............................................... 5
`
`Hanna v. Plumer,
`380 U.S. 460 (1965) .............................................................................................. 3
`
`In re Hechinger Inv. Co. of Delaware, Inc.,
`287 B.R. 620 (Bankr. D. Del. 2002) ..................................................................... 2
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`Keith v. Melvin L. Joseph Constr. Co.,
`451 A.2d 842 (Del. Super. Ct. 1982) ................................................................ 2, 3
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`Motorola Mobility LLC v. Arnouse,
`IPR2013-00010, Paper 20 (PTAB Jan 20, 2013) ................................................. 3
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`Pfizer Inc. v. Teva Pharm. USA, Inc.,
`803 F. Supp. 2d 409 (E.D. Va. 2011) ................................................................... 4
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`SiRF Tech., Inc. v. Int’l Trade Comm’n,
`601 F.3d 1319 (Fed. Cir. 2010) ............................................................................ 4
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`Federal Statutes
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`35 U.S.C. § 314(b) ..................................................................................................... 5
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`35 U.S.C. § 315(b) ................................................................................................. 1, 5
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`State Statutes
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`Del. Code Ann. tit. 6, § 18-105 .............................................................................. 1, 2
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`iii
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`Case No. IPR2015-01629
`Patent 6,750,237
`Del. Code Ann. tit. 8, § 132(b)(3) .............................................................................. 2
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`Del. Code Ann. tit. 8, § 321 ............................................................................... 1, 2, 3
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`Rules
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`Fed. R. Civ. P. 4(l)(3)................................................................................................. 3
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`Fed. R. Civ. P. 12(a)(1)(A)(i) .................................................................................... 3
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`iv
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`
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`Case No. IPR2015-01629
`Patent 6,750,237
`Petitioner’s unsupported assertions do not to rebut Patent Owner’s showing
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`that the petition is time-barred under 35 U.S.C. § 315(b).
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`I.
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`Petitioner Cannot Establish Insufficient Service
`A.
`Petitioner’s assertion that the July 25, 2014, service of process did not
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`Section 18-105 Does Not Apply
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`comply with Del. Code Ann. tit. 6, § 18-105 is legally flawed. This statute pertains
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`to service of legal process on a limited liability company (“LLC”). (Ex. 1031.)
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`Petitioner is not a LLC; it is a corporation. (Ex. 2027.) Section 18-105 therefore
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`does not apply. The applicable statute for service of process on a Delaware
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`corporation is Del. Code Ann. tit. 8, § 321, which states that service of process on
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`any Delaware corporation “shall be made by delivering a copy personally to . . .
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`the registered agent of the corporation . . . .” (Ex. 2028); Church-El v. Bank of New
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`York, No. CIV. 11-877 NLH/KMW, 2013 WL 1190013, at *5 (D. Del. Mar. 21,
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`2013) (Ex. 1032). Here, Parcels Inc. delivered the complaint and summons to CSC
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`Entity Services, LLC (“CSC”), Petitioner’s registered agent. (Ex. 2002 at 2; Ex.
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`2027.) Petitioner does not dispute that CSC is its registered agent. Nor does
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`Petitioner dispute that CSC accepted service of process on its behalf on July 25,
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`2014. No more was required for a legally effective service.
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`Although CSC is an LLC, it was not the entity served with legal process and
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`therefore does not control what statute applies. It has never been a party to the
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`1
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`Case No. IPR2015-01629
`Patent 6,750,237
`lawsuit. Instead, CSC accepted service as Petitioner’s registered agent. See Del.
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`Code Ann. tit. 8, § 132(b)(3) (Ex. 2004). Petitioner cites no case applying § 18-105
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`to a registered agent accepting service.
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`B.
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`The July 25, 2014 Service Was Legally Effective
`1.
`Petitioner states that no evidence establishes service. (Reply at 3-4.) This is
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`Proof of Service Is Prima Facie Evidence of Valid Service
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`incorrect. The signed proof of service filed with the court constitutes prima facie
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`evidence of valid service. (Ex. 2002); In re Hechinger Inv. Co. of Delaware, Inc.,
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`287 B.R. 620, 623 (Bankr. D. Del. 2002) (Ex. 2029); see Keith v. Melvin L. Joseph
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`Constr. Co., 451 A.2d 842, 846 (Del. Super. Ct. 1982) (Ex. 2030). Petitioner
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`therefore bears the burden of proving that service of process was insufficient. In re
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`Hechinger, 287 B.R. at 623 (Ex. 2029).
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`Petitioner provides no evidence rebutting Patent Owner’s prima facie
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`evidence of valid service. According to its website, CSC “maintain[s] records of all
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`entity transactions for service of process” in Delaware. (Ex. 2031.) CSC’s records
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`presumably would indicate if it did not accept service on July 25, 2014. Petitioner,
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`however, has provided no records from CSC (its own registered agent), does not
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`dispute that CSC accepted service on this date, and waived any objection to
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`service. (Prelim. Resp. at 4.)
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`Section 321 Does Not Require Service on an Individual
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`2.
`Petitioner asserts that service was insufficient because the proof of service
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`2
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`Case No. IPR2015-01629
`Patent 6,750,237
`did not name an individual. (Reply at 3-4.) But § 321 does not require service on
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`an individual. (Ex. 2028); see Keith, 451 A.2d at 845 (Ex. 2030). Section 321 also
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`does not require the return to identify an individual. (Ex. 2028); see Keith, 451
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`A.2d at 846 (Ex. 2030). Thus, that the proof of service names CSC and not an
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`individual is irrelevant. Because the summons and complaint were delivered to
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`Petitioner’s registered agent, service was proper under § 321. Proof of service is
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`not even needed to establish valid service. See Fed. R. Civ. P. 4(l)(3) (“Failure to
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`prove service does not affect the validity of service.”).
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`Petitioner Had Notice of Service
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`3.
`A service of process statute ensures that a defendant receives notice of an
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`action. Hanna v. Plumer, 380 U.S. 460, 462 n.1 (1965); Keith, 451 A.2d at 845
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`(Ex. 2030). Petitioner received notice of the infringement action. The litigation
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`docket reports service on July 25, 2014, and lists August 15, 2014 (21 days from
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`service) as the answer due date. (Ex. 2032 at D.I. 5); Fed. R. Civ. P. 12(a)(1)(A)(i).
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`A day before that due date, Petitioner stipulated to an extension of time to answer
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`the complaint. (Ex. 2033.) Petitioner never disputed notice of service or having
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`benefit of the one-year period to analyze the patent and file an IPR. Motorola
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`Mobility LLC v. Arnouse, IPR2013-00010, Paper 20 at 4-5 (PTAB Jan 20, 2013).
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`II.
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`Petitioner Cannot Establish a Lack of Standing
`A.
`Petitioner asserts that because an alleged co-owner was not a party to the
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`Patent Owner Holds Legal Title to the ’237 Patent
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`3
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`Case No. IPR2015-01629
`Patent 6,750,237
`first complaint, standing was not established. (Reply at 6.) This is incorrect. Patent
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`Owner AstraZeneca AB holds legal title to the ’237 patent, as it did on July 25,
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`2014, and therefore had standing to sue in its own name. (See Ex. 2010; see also
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`Ex. 2009; Pet. at 1 (listing only AstraZeneca AB as the patent owner)); Pfizer Inc.
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`v. Teva Pharm. USA, Inc., 803 F. Supp. 2d 409, 424 (E.D. Va. 2011) (Ex. 2034).
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`In Pfizer, the court held that Pfizer, Inc., the assignee and legal owner of the
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`patent, had standing to sue in its own name and that Pfizer Ltd., the beneficial
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`owner having the right to grant licenses, had standing to sue in its own name and in
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`concert with the legal owner. Id. at 424-26. Petitioner disregards this precedent
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`(cited in the preliminary response).
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`Patent Owner is the assignee holding legal title to the ’237 patent and
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`therefore had standing to sue in its own name. Id. AstraZeneca UK Ltd.’s interest
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`in the ’237 patent, such that it can grant a license, does not negate this legal title or
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`establish it as a co-owner. The statement in the second complaint that AstraZeneca
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`AB and AstraZeneca UK Ltd. own all rights, title, and interest in the ’237 patent
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`also does not negate AstraZeneca AB’s ownership or sole legal title. (See Ex. 2005
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`at ¶ 25.) Rather, it affirms that AstraZeneca AB owns the ’237 patent, with some
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`interest resting with AstraZeneca UK Ltd.. Petitioner has shown no contrary patent
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`assignment, co-ownership, or any defect in the assignment to AstraZeneca AB. See
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`SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1327-28 (Fed. Cir. 2010)
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`4
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`Case No. IPR2015-01629
`Patent 6,750,237
`(challenger has burden to show invalidity of recorded assignment); see also eBay,
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`Inc. v. Advanced Auctions LLC, IPR2014-00806, Paper 14 at 6 (PTAB Sept. 25,
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`2014). Accordingly, the infringement action was not jurisdictionally defective.
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`The District Court Denied Petitioner’s Motion to Dismiss
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`B.
`Petitioner moved to dismiss the infringement action for lack of jurisdiction.
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`(Exs. 2007; 2008.) The district court denied this motion and consolidated the two
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`infringement actions. (Ex. 2011 at 1, 3.) Thus, the date of service of the first
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`complaint on Petitioner controls. Apple Inc. v. Rensselaer Polytechnic Inst.,
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`IPR2014-00319, Paper 12 at 7 (PTAB June 12, 2014). Petitioner argues that the
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`motion was denied without prejudice to renewal after discovery. (Reply at 7.) But
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`discovery will end well after an institution decision. 35 U.S.C. § 314(b). Therefore,
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`the Board should reject Petitioner’s request to reconsider the same jurisdictional
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`issue that the district court has already decided against Petitioner on a fuller
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`evidentiary record.
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`III. Conclusion
`The petition is time-barred under 35 U.S.C. § 315(b).
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`Dated: December 28, 2015
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`Respectfully submitted,
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`By: /Michael J. Flibbert /
`Michael J. Flibbert, Reg. No. 33,234
`Maureen D. Queler, Reg. No. 61,879
`Counsel for Patent Owner
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`5
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`Case No. IPR2015—0l629
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`Patent 6,750,237
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S
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`SUR—REPLY TO PETITIONER’S REPLY was
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`served
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`electronically Via e—mail on December 28, 2015, in its entirety on the following:
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`Joseph F. Posillico
`Fox Rothschild LLP
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`2000 Market Street, 20th Floor
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`Philadelphia, PA 19103
`ipdocket@foxrothschild.corn
`jposillico@foxrothschild.com
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`Frank T. Carroll
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`Fox Rothschild LLP
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`2000 Market Street, 20th Floor
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`Philadelphia, PA 19103
`ipdocket@foxrothschild.com
`fcarroll@foxrothschild.com
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`Petitioner has agreed to electronic service.
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` Dated: December 28, 2015
`By’ Lauren K. Young
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`FINNEGAN, HE
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`RSON, FARABOW,
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`GARRETT & DUNNER, LLP
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