Under 35 U.S.C. § 316(a)(11), the PTAB should issue its final written decision in an inter partes review “not later than 1 year after the date on which the Director notices the institution of a review under this chapter,” except that the one-year period may be extended “by not more than 6 months” for good cause shown, or “adjust[ed]… in the case of joinder under section 315(c).” See also 37 C.F.R. § 42.100(c) (“An inter partes review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder.”).

In IPR2016-00286 (Amerigen Pharms. Ltd. v. Janssen Oncology, Inc.), Amerigen challenged the patentability of U.S. Patent No. 8,822,438, directed to methods of treating prostate cancer. The PTAB issued its notice of institution on 5/31/2016, and joined Argentum to the IPR on 9/19/2016. The PTAB held oral argument on 2/16/2017, and its final written decision issued on 1/17/2018. Thus, the final written decision issued 19 months and 17 days after the notice of institution, and 15 months and 29 days after joinder.

In IPR2016-01332 (Mylan Pharms. Inc. v. Janssen Oncology, Inc.), Mylan also challenged the patentability of U.S. Patent No. 8,822,438. The PTAB declined to join Mylan to the Amerigen IPR but nevertheless instituted trial, and issued its notice of institution on 1/10/2017. Several parties were joined to the IPR on 4/12/2017. The PTAB held oral argument on 5/24/2017, and its final written decision issued on 1/17/2018. Thus, the final written decision issued 12 months and 7 days after the notice of institution, and 9 months and 5 days after joinder.

In IPR2016-01582 (Wockhardt Bio AG v. Janssen Oncology, Inc.), Wockhardt also challenged the patentability of U.S. Patent No. 8,822,438. The PTAB issued its notice of institution on 1/19/2017. The PTAB held oral argument on 5/24/2017, and its final written decision issued on 1/17/2018. Thus, the final written decision issued 11 months and 29 days after the notice of institution.

Thus, in these three related IPRs, the PTAB exceeded the 12-month timeline in two of three situations (each time after joinder), with the largest deviation in the first-filed Amerigen IPR. In the Amerigen IPR, the PTAB also exceeded the six-month good cause extension, but arguably complied with the “adjust[ed]… in the case of joinder” language because there are no limits on the amount of adjustment.