- PTAB · Oct 20, 2017 · IPR2017-01582 · APJ Erica A Franklin · IPR · Institution
The Board dismissed the joinder motion as moot and denied institution because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. ANALYSIS A. The Motion for Joinder is Moot Petitioner seeks joinder with the Mylan IPR. Mot. 1. The Mylan IPR has been terminated based on a settlement between the parties. See IPR2017-00200, Paper 23. Thus, there is no longer a pending proceeding for Petitioner to join. Accordingly, we dismiss the Motion for Joinder as moot.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“B. The Petition Is Time-Barred Under 35 U.S.C. § 315(b) Section 315(b) bars institution of inter partes review when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b). The one-year time bar, however, does not apply to a request for joinder. Id. The decision whether to grant joinder is discretionary. Id. at § 315(c).” slip op. at 5
Discretionary denialPatents in suitUS 8,603,514 - Par Pharmaceutical, Inc. / Intelgenx Corp. v. Monosol RX, LLCInstitution deniedPTAB · Oct 20, 2017 · IPR2017-01557 · APJ Erica A Franklin · IPR · Institution
The Board dismissed the joinder motion as moot and denied institution because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. ANALYSIS A. The Motion for Joinder is Moot Petitioner seeks joinder with the Mylan IPR. Mot. 1. The Mylan IPR has been terminated based on a settlement between the parties. See IPR2017-00200, Paper 23. Thus, there is no longer a pending proceeding for Petitioner to join. Accordingly, we dismiss the Motion for Joinder as moot.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b). The one-year time bar, however, does not apply to a request for joinder. Id. The decision whether to grant joinder is discretionary. Id. at § 315(c). Petitioner admits that Patent Owner filed a complaint alleging infringement of the ’514 patent against Petitioner on April 4, 2014. Mot. 2 (explaining that a complaint alleging infringement of the ’514 patent against Par Pharmaceutical, Inc. and Intelgenx Corp., LLC was filed on April 4, 1 R. Ilango et al., In-Vitro studies on Buccal strips of Glibenclamide using Chitosan, 59 INDIAN J. PHARM. SCI. 232–35 (1997). Ex. 1005 (“Ilango”). 2 Patent Application Publication No. WO 00/42992 by Li-Lan Chen et al., published July27, 2000. Ex. 1006 (“Chen”). 2014). Petitioner was served with that complaint on April 7, 2014, more than one year before it filed its Petition. See Ex. 2003 (Par Proof of Service); Ex. 2004 (Intelgenx Proof of Service). Despite the late filing, Petitioner asserts as its grounds for standing that “under 37 C.F.R. § 42.104(a), if the simultaneous motion for joinder is granted, the ’514 patent is available for inter partes review.” Pet. 20. As discussed above, Petitioner’s Motion for Joinder is dismissed as moot because there is no instituted inter partes review for Petitioner to join. Thus, the Petition is statutorily barred, and no inter partes review may be instituted. 35 U.S.C. § 315(b).” slip op. at 5
Discretionary denialPatents in suitUS 8,603,514 - Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLCInstitution deniedPTAB · May 23, 2016 · IPR2016-00281 · APJ Erica A Franklin · IPR · Institution
The Board denied the filing-date motions and denied institution on all challenged claims because the petitions were filed after the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“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 infringement of the patent. As discussed in Section I supra, the parties agree that because Petitioner was served with complaints asserting the patents at issue on December 3, 2014, and that the statutory bar date for IPR281 and IPR282 is December 3, 2015.5 Mot. 1–2, 6; Opp. 1. The petitions in IPR281 and IPR282 each were accorded a filing date of December 4, 2015, one day after the statutory bar date. Paper 3, 1. We have declined to change that date. As Petitioner acknowledges, if the filing dates accorded to the petitions are not changed, each “petition would be barred under 35 U.S.C. § 315(b).” Mot. 6. Accordingly, the petitions are barred under 35 U.S.C. § 315(b). ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Motions are denied; FURTHER ORDERED that institution of an inter partes review of any challenged claim of the ’514 patent in IPR281 is denied; and FURTHER ORDERED that institution of an inter partes review of any challenged claim of the ’150 patent in IPR282 is denied.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“December 3, 2015.5 Mot. 1–2, 6; Opp. 1. The petitions in IPR281 and IPR282 each were accorded a filing date of December 4, 2015, one day after the statutory bar date. Paper 3, 1. We have declined to change that date. As Petitioner acknowledges, if the filing dates accorded to the petitions are not changed, each “petition would be barred under 35 U.S.C. § 315(b).” Mot. 6. Accordingly, the petitions are barred under 35 U.S.C. § 315(b). ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Motions are denied; FURTHER ORDERED that institution of an inter partes review of any challenged claim of the ’514 patent in IPR281 is denied; and FURTHER ORDERED that institution of an inter partes review of any challenged claim of the ’150 patent in IPR282 is denied.” slip op. at 14
Discretionary denialPatents in suitUS 8,603,514 - Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLCInstitution deniedPTAB · May 23, 2016 · IPR2016-00282 · APJ Erica A Franklin · IPR · Institution
The Board denied the motions to change the filing dates and denied institution because both petitions were filed after the § 315(b) deadline.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“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 infringement of the patent. As discussed in Section I supra, the parties agree that because Petitioner was served with complaints asserting the patents at issue on December 3, 2014, and that the statutory bar date for IPR281 and IPR282 is December 3, 2015.5 Mot. 1–2, 6; Opp. 1. The petitions in IPR281 and IPR282 each were accorded a filing date of December 4, 2015, one day after the statutory bar date. Paper 3, 1. We have declined to change that date. As Petitioner acknowledges, if the filing dates accorded to the petitions are not changed, each “petition would be barred under 35 U.S.C. § 315(b).” Mot. 6. Accordingly, the petitions are barred under 35 U.S.C. § 315(b).” slip op. at 13
- BurdenDenied
“IPR281 and IPR282 did not satisfy the latter two requirements by the filing date that it now requests. Petitioner, however, asserts that we should exercise our discretion to waive those regulatory requirements because technical difficulties caused by PRPS prevented Petitioner from satisfying those requirements on December 3, 2015. As the moving party, Petitioner has the burden of proof to establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). Having considered the arguments and evidence, we agree with Patent Owner that Petitioner has not established that it is entitled to a waiver of the regulatory requirements for according a filing date to a petition. In particular, we do not find that Petitioner has established persuasively that a “compromised PRPS system” caused Petitioner’s delay in uploading the petition documents, or prevented Petitioner from paying the petition fees, and serving Patent Owner with the petitions on December 3, 2015. See Mot. 10. Rather, based upon our review, Petitioner has not shown that such delays are attributable to the system rather than to the users.” slip op. at 9
Discretionary denialPatents in suitUS 8,017,150
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.