PTAB Finds Service of Complaint Was Proper, Denies IPR Petitions Filed One Day Too Late

The PTAB denied Lannett Holdings’ petitions for IPR of AstraZeneca’s U.S. Patent Nos. 6,750,237 and 7,220,767 because the petitions were filed one day after the one-year bar date. Lannett Holdings, Inc. v. AstraZeneca AB, IPR2015‑01629, Paper 14 at 8 (Jan. 27, 2016); IPR2015-01630, Paper 13 at 10 (Feb. 2, 2016). In its decisions, the PTAB rejected Lannett’s argument that AstraZeneca’s service of complaints for infringement of the ’237 and ’767 patents was ineffective and did not trigger the one-year period for filing an IPR petition.

Lannett argued that AstraZeneca did not follow proper procedures under Delaware law for service on a domestic limited liability company when it served the two complaints on Lannett’s registered agent, CSC Entity Services, LLC, rather than personally delivering the complaints to a manager of CSC. But the PTAB found that it is “the entity status of the petitioner, and not [of] its registered agent for accepting service, that dictates the proper procedure for service of process.” IPR2015-01629, Paper 14 at 5; IPR2015-01630, Paper 16 at 3. Because Lannett was a corporation, the PTAB found that AstraZeneca complied with Delaware law for service of process on a corporation (8 Del. C. § 321) by serving the complaints on CSC.

Lannett also argued that AstraZeneca’s service of the two complaints did not trigger the one-year bar because AstraZeneca allegedly did not name a co-owner of the patents as co-plaintiff in its complaints, and the district court lacked subject matter jurisdiction. The PTAB disagreed because the assignment records indicated AstraZeneca AB as the sole assignee of the patents, “creat[ing] a presumption of validity as to the assignment and plac[ing] the burden to rebut such a showing on one challenging the assignment.” IPR2015-01630, Paper No. 13 at 8 (citation omitted). Lannett failed to rebut that presumption. Id.

The PTAB also determined that the district court had allowed Petitioner an opportunity for discovery to address the issue, but that Petitioner had presented no evidence to show the level or type of interest of the alleged co-owner. Id. at 9. Nor had Lannett demonstrated that it sought but was unable to obtain such evidence through discovery. Id. Thus, like the district court, the PTAB was not persuaded that the district court lacked subject matter jurisdiction over the action.

These decisions serve as a reminder to petitioners to carefully note the date of service of a complaint for infringement in determining the one-year bar date for an IPR petition. Even if the petitioner believes that service was defective, petitioners would be well-advised to assume that the PTAB will view the service as presumptively triggering the one-year time bar.