Statutory Right to Appeal for Joined Parties
In Mylan Pharmaceuticals Inc. v. Research Corp. Technologies, Inc., (here) the Federal Circuit held that parties joined to an IPR petition have a statutory right of appeal under 35 U.S.C. § 319 as “parties”, even if the original petitioner lacks Article III standing for appeal.
In Mylan, Argentum Pharmaceuticals filed the initial IPR petition challenging one of Research Corporation Technologies’ (“RCT”) epilepsy treatment patents. After the PTAB instituted review, Mylan, Breckenridge, and Alembic filed their own petitions for review, as well as motions for joinder. Each joined party had been sued for infringement of the challenged patent over a year before they filed their petitions. The PTAB instituted the petitions and granted the motions for joinder (in accordance with the joinder exception to the one-year bar), but limited the joined parties to an “understudy” role.
At the close of the IPR, the PTAB found that the petitions had not shown that the challenged patent was unpatentable. Thereafter, only the joined parties appealed (Mylan, Breckenridge, and Alembic).
The parties agreed that Argentum, who did not appeal, lacked Article III standing. RCT argued that Mylan, Breckenridge, and Alembic fell outside the “zone of interest” of 35 U.S.C. § 319, which creates a statutory right of appeal, because they filed their petitions over a year after the infringement actions began. Moreover, RCT argued that the appellants’ limited role (“understudy”) in the IPR further removed them from § 319’s “zone of interest,” which is necessary for a statutory appeal right.
The Federal Circuit disagreed with RCT, relying on a textual interpretation of the relevant statutes. 35 U.SC. § 315(c) provides that “the Director, in his or her discretion, may join as a party” additional petitioners, and § 319 creates a right of appeal to “[a]ny party to the inter partes review.” Thus, the Federal Circuit found that an entity joined under § 315(c) is a “party,” and “any party” may appeal pursuant to § 319. Finally, the Federal Circuit found that neither the limited role of the appellants in the IPR nor the timing of filing of their petitions had any bearing on their standing to appeal.
While the Court made clear that the statutory right to appeal is proper for joined parties, this assessment is independent of Article III standing (irrelevant here as the Appellants had been sued by the Patent Owner).