Accord Healthcare v. Eli Lilly and Co., IPR2013-00356 (PTAB)
On October 1, 2013, the Patent Trial and Appeal Board issued a decision denying the petition for inter partes review filed by Accord Healthcare targeting Eli Lilly's U.S. Patent No. 7,772,209. The '209 patent is listed in the Orange Book for Alimta (pemetrexed disodium).
The Board denied Accord's petition because it was filed more than one year after the filing date of the complaint in the first of two ANDA lawsuits between the parties (Lilly v. Accord, 1:12-cv-00086-TWP-DKL (S.D. Ind.) ("the '086 action"), filed January 20, 2012 and served January 23, 2012). Accord had argued that its petition was timely because it was filed within one year of the filing of the complaint in the second of the two lawsuits (Lilly v. Accord, 1:13-cv-00335-TWP-DKL (S.D. Ind.) ("the '335 action"), filed February 28, 2013 and served March 7, 2013). The first lawsuit concerns Accord's 100 mg/vial and 500 mg/vial pemetrexed products and the second concerns its 1000 mg/vial product.
Specifically, the Board found that the filing of the second complaint did not reset the time for filing a petition for inter partes review:
We reject Accord's implicit argument that the one-year period set forth in § 315(b) should not be measured from the date of service of the complaint in the '086 action. The plain language of the statute does not indicate or suggest that the filing of a later lawsuit renders the service of a complaint in an earlier lawsuit a nullity.
Of the eleven petitions for inter partes review so far filed by generic drug companies, six (including Accord's) were filed against patents already in litigation, and five were filed by just two petitioners. Three trials have been instituted, while no institution decision has been issued in response to the remaining seven petitions. There have as yet been no final decisions in any inter partes review trials.