RMMS Files Supreme Court Amicus Brief on Behalf of AAM Challenging The Federal Circuit’s Reading Of The IPR Time Bar Under Section 315(b)

February 13, 2019 | Counseling PTAB

02/13/2019 On February 13, 2019, RMMS submitted an amicus brief on behalf of the Association for Accessible Medicines (AAM) in support of the petition for certiorari filed in Dex Media, Inc., v. Click-To-Call Technologies, LP and Iancu, No. 18-916 (U.S.).

The Petitioner in this action, Dex Media, sought review of the Federal Circuit’s en banc decision finding that a voluntary dismissal of a complaint without prejudice nevertheless triggers the inter partes review (IPR) bar date under 35 U.S.C. § 315(b). The AAM amicus brief highlights the importance of post-AIA proceedings to the pharmaceutical industry and identifies some of the potential anticompetitive and unintended consequences of the Federal Circuit decision.

As explained in the AAM brief, IPR proceedings have become an integral tool for the pharmaceutical industry to knock out improperly granted patents that never should have issued in the first place, and which block more affordable competition. Under the Federal Circuit’s decision, patent owners are incentivized to file suit and voluntarily dismiss the complaint after service in order to start the one-year clock, even when the litigation is no longer pending. This forces defending companies to use their IPR rights or forfeit them forever—a difficult decision when, for many pharmaceuticals, patents often cover multiple products. As explained in the AAM amicus brief, unless the Federal Circuit’s decision is overturned, a generic or biosimilar company will be forced to decide whether to file an IPR against voluntarily dismissed patents to avoid losing that option forever—not only with respect to that particular case, but for all future products that might be covered by those same patents.

William A. Rakoczy, Lara E. FitzSimmons, Trang H. Lin and Christopher P. Galligan are listed on the AAM brief.

A full copy of the brief is available here.