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29 January 2016Americas

You’re out of time: PTAB rules IPR petition is time-barred

The Patent Trial and Appeal Board (PTAB) has rejected generics company Lannett Holdings’s petition for an inter partes review (IPR) because it was filed one day too late.

The generics company had sought revocation of AstraZeneca’s patent covering its Zomig (zolmitriptan) nasal spray, used to treat migraines.

On July 25, 2014, Impax Laboratories sued Lannett at the US District Court for the District of Delaware. It alleged infringement of US patent number 6,750,237. AstraZeneca, which was not named as a plaintiff, licenses the patent to Impax.

But in a second action, filed on July 31, 2014, AstraZeneca was also named as a plaintiff. The complaints were then consolidated.

In response, Lannett requested that the PTAB review the validity of the patent. It filed its IPR on July 28, 2015. Because July 25, 2015 fell on a Saturday, Lannett had until the following Monday (July 27) to file the IPR but failed to do so.

Under US law, a party has to file an IPR petition within a year of being sued.

Lannett had argued that it was not properly served with the first complaint.

The complaint was filed on the Corportation Service Company’s Entity Services program, a case tracking system, but Lannett said the complaint had not been sent “personally to any manager”.

But the PTAB rejected the claim and said that records proved that an individual at Lannett had received the complaint.

Lannett also argued that the failure to identify AstraZeneca as an interested party in the first complaint meant the claim was not valid.

Although the three-judge PTAB panel agreed that an invalid complaint would ensure that time restrictions would not be enacted, it said that Lannett had failed to “present persuasive evidence” that the first action was deficient.

Firstly, the PTAB said, the infringement claim in the lawsuit would have identified AstraZeneca as the patent owner because the information is publicly available on the US Patent and Trademark Office database.

Secondly, the first action was not dismissed by the court but consolidated.

“In sum, based on evidence of the record, petitioner has not made sufficient showing that it is not barred from requesting an IPR,” the PTAB concluded.


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2 July 2018   The US Court of Appeals for the Federal Circuit has ruled that a passing mention in the prior art of a formulation that references the claimed ingredient and administration may not be enough to invalidate a patent claim.

More on this story

Americas
2 July 2018   The US Court of Appeals for the Federal Circuit has ruled that a passing mention in the prior art of a formulation that references the claimed ingredient and administration may not be enough to invalidate a patent claim.