PTAB decision denying a patent owner's motion for discovery
concerning privity illustrates what may be a carefully-structured
business transaction that permitted a petitioner to avoid the
effect of the one-year time-bar for filing a petition under 35
U.S.C. § 315(b).
As we have
previously discussed, generic drug company Teva Pharmaceuticals
USA, Inc.'s IPR petitions challenging patents covering Suboxone
® Film were denied by the PTAB because they were filed minutes
after expiration of the one-year time limit of 35 U.S.C. §
315(b) for filing a petition after being sued for infringement. The
exclusive licensee of patent owner Monosol RX had sued Teva for
infringement based on Teva's filing of ANDAs with the FDA to
market generic versions of Suboxone® Film. Only a few weeks
after the PTAB decisions denying Teva's IPR petitions, another
generic drug company, Dr. Reddy's Laboratories, Ltd., filed
virtually identical IPR petitions challenging the same patents.
The patent owner filed a motion for discovery to obtain
documents that it alleged would demonstrate that Dr. Reddy's
was in privity with Teva at the time the petitions were filed, and
thus time-barred under § 315(b). In particular, the patent
owner sought discovery of documents relating to communications
between Teva and Dr. Reddy's concerning Dr. Reddy's
acquisition from Teva of ANDAs for Suboxone®. To show that the
five Garmin factors for discovery were satisfied and that
additional discovery would be in the interests of justice, the
patent owner submitted evidence demonstrating that: (a) Teva filed
two ANDAs concerning Suboxone®; (b) after Teva's IPR
petitions were denied, Dr. Reddy's filed petitions that were
virtually identical to Teva's denied petitions; (c) shortly
after its petitions were filed, Dr. Reddy's issued a press
release announcing that it had entered into an agreement to acquire
a number of ANDAs from Teva; and (d) the patent owner was informed
that Dr. Reddy's will likely be moving to substitute itself for
Teva in the related district court patent litigation.
Dr. Reddy's opposed the motion for discovery, arguing that
the patent owner's evidence in support of the motion
established only that it acquired ANDAs from Teva after
the petitions were filed, and that the patent owner's argument
that there was privity at the time the petitions were filed was
"pure speculation." The PTAB, applying its
"conservative approach to granting additional discovery,"
determined that the patent owner had not proffered persuasive
evidence that privity existed prior to Dr. Reddy's filing of
the IPR petitions, and therefore denied the motion for additional
After denying the motion for discovery, if the PTAB proceeds to
institute IPRs over the patent owner's objections that the
petitions are time-barred, according to the Federal Circuit such
decisions would be
unreviewable on appeal. Accordingly, the PTAB's
conservative approach to discovery motions may permit Dr.
Reddy's to avoid the consequences of the one-year time bar for
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