Before Lourie, Bryson, and Wallach. Appeal from the Patent Trial and Appeal Board.
Summary: A party joined to an inter partes review has the right to appeal the Board’s final written decision even if the initial petitioner does not appeal.
RCT sued Mylan, Breckenridge, and Alembic (collectively, “Appellants”) for patent infringement in 2013. In 2015, another entity, Argentum, petitioned for Inter Partes Review (IPR) of RCT’s patent. The Board instituted Argentum’s petition on two grounds. Three days after institution, Appellants each filed their own petitions for IPR with concurrent motions for joinder. The Board instituted Appellants’ petitions and joined each proceeding with the Argentum proceeding, relying upon the provision of Section 315(b) which states that the one year time bar for IPRs does not apply to requests for joinder. The Board then concluded that none of the challenged claims had been shown to be unpatentable. Appellants appealed, but Argentum did not.
On appeal to the Federal Circuit, RCT did not challenge the Board’s joinder decision, but did challenge whether Appellants had standing to appeal. The Federal Circuit looked to the plain text of Section 315(c), which provides that the Board may join as a party any person who properly files a petition. Next, the Court looked to Section 319, which provides that “[a]ny party to the inter partes review shall have the right to be a party to the appeal.” Thus, once the Board joined Appellants as parties, they had a statutory right to appeal under 35 U.S.C. § 319.
Additionally, during the rebuttal phase of oral argument, Appellants requested that the Court remand in view of the Supreme Court’s decision in SAS Institute, Inc. v. Iancu. Even though briefing was complete before SAS issued, the Federal Circuit held that Appellants waived the issue by waiting 6 months and presenting it in the rebuttal phase of oral argument.
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