Jeff Vockrodt

The Federal Circuit last week upheld a PTAB final written decision invalidating Mayne Pharma’s U.S. Patent 6,881,745 over its objection that the petition for inter partes review (IPR) filed by Merck Sharpe & Dohme (MSD) was fatally defective for having omitted parent corporation Merck & Co., Inc. as a real-party-in-interest. Mayne Pharma Int’l v. Merck Sharp & Dohme, Case No. 2018-1593 (Fed. Cir. June 21, 2019). Because Merck would have had to add its parent as an RPI in the proceeding after the one-year time bar had lapsed, Mayne argued the error was not correctable. The Federal Circuit rejected this view, holding that the Board has authority to make corrections to a petition that are “in the interest of justice.” This decision suggests that form will not be elevated over substance in addressing the one-year IPR time bar of Section 315(b).