UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`AMNEAL PHARMACEUTICALS, LLC
`Petitioner
`v.
`ENDO PHARMACEUTICALS INC.
`Patent Owner
`
`_____________________
`
`CASE IPR2014-00361
`Patent 8,309,122
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`
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`PETITIONER’S REPLY BRIEF ON 35 U.S.C. § 315(b)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`AMNEAL PHARMACEUTICALS, LLC
`Petitioner
`v.
`ENDO PHARMACEUTICALS INC.
`Patent Owner
`
`_____________________
`
`CASE IPR2014-00361
`Patent 8,309,122
`
`
`
`
`PETITIONER’S REPLY BRIEF ON 35 U.S.C. § 315(b)
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`
`
`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`IPR2014-00361
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`The one-year time period for Petitioner to seek inter partes review began on
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`January 17, 2013, the date that Patent Owner (“PO”) filed and served the Second
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`Amended Complaint (“SAC”), alleging infringement of U.S. Patent 8,309,122
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`(“the ‘122 patent”). Prior to service of the SAC, the parties agreed no further action
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`with respect to the first Amended Complaint was required if the Court granted the
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`PO’s motion to further amend the complaint – which the Court did on January 14,
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`2013. Despite this agreement and the extensive case law holding that filing of an
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`amended complaint renders the prior complaint a legal nullity, PO nevertheless
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`argues the service date of the legally defunct Amended Complaint - rather than the
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`governing SAC - controls for purposes of 315(b). Given the parties’ agreement
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`and the law, Petitioner timely filed IPR2014-00361.
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`Factual Background
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`On November 7, 2012, PO filed a complaint that was never served. On
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`November 14, 2012, PO filed an Amended Complaint that alleged infringement of
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`the ‘122 patent and was served on November 20, 2012. EX2002, EX2003.
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`PO’s Patent Owner's Preliminary Response omitted the parties’ agreement
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`regarding Petitioner’s Answer to the Amended Complaint. The parties agreed to
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`extend the time to answer, move, or otherwise respond to the Amended Complaint
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`to January 10, 2013. On January 2, 2013, PO’s litigation counsel contacted
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`Petitioner’s litigation counsel by telephone and advised that U.S. Patent No.
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`- 1 -
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`IPR2014-00361
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`8,329,216 had issued, and that PO sought to again amend its complaint to add the
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`new patent. Petitioner’s litigation counsel advised that Petitioner would not oppose
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`a motion for leave to amend the complaint if PO: (1) agreed that Petitioner did not
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`have to respond to the Amended Complaint and (2) provided that Petitioner would
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`have 30 days to answer the SAC (should the Court grant PO’s Motion for Leave).1
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`The parties confirmed their oral agreement with an exchange of email
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`correspondence on January 7, 2013. EX1026. Thus, the parties agreed that no
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`further action would be taken with respect to the Amended Complaint pending the
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`Court’s decision on PO’s request to file the SAC.
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`On January 9, 2013, PO filed an Unopposed Motion to Amend the
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`Complaint Under Rule 15(a). Ex. 2004. On January 10, 2013, Petitioner submitted
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`a letter to the Court seeking to “extend the deadline for Amneal to answer, move or
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`otherwise to respond to whichever of Plaintiffs’ complaints remains of record
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`following the Court’s decision on that motion.” EX1027, at (emphasis added). On
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`January 14, 2013, the Court granted PO’s motion and ordered it to file the SAC
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`“promptly.” EX2006. PO electronically filed and served the SAC asserting the
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`‘122 patent on January 17, 2013. No further action has ever been taken with
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`respect to the Amended Complaint.
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`1 If permitted, Petitioner will provide testimony about the January 2013 agreement.
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`- 2 -
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`IPR2014-00361
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`Argument
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`Petitioner timely filed the instant petition because the relevant time period
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`under § 315(b) began on January 17, 2013, the date PO served and filed its SAC.2
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`The parties’ agreement to take no action with respect to the Amended Complaint in
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`favor of the SAC demonstrates that the Amended Complaint should have no effect.
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`Had the parties not so agreed, Petitioner would have been obligated to answer on
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`January 10, 2013, or face the risk of default judgment. But the parties agreed that
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`Petitioner would only have to answer the SAC, absolving Petitioner of any
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`obligation to respond to the Amended Complaint. In fact, neither party has ever
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`taken any further action with respect to the Amended Complaint because it ceased
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`to have legal effect after the Court authorized the filing and serving of the SAC.
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`This agreement is consistent with the extensive body of case law that has
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`long established that the filing of an amended complaint supersedes an original
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`complaint, rendering the original complaint without legal effect. See Washer v.
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`Bullitt County, 110 U.S. 558, 562 (1884); see also Synder v. Pascack Valley
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`Hospital, 303 F.3d 271 (3rd Cir. 2002); Rhodes v. Robinson, 621 F.3d 1002 (9th Cir.
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`2010); In re: Atlas Van Lines, Inc. v. Popular Bluff Transfer, 209 F.3d 1064, 1067
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`(8th Cir. 2000); Massey v. Helman, 196 F.3d 727 (7th Cir. 1999); Friz v. Standard
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`2 The relevant time period starts after filing and service of the SAC. See Motorola
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`v. Arouse, IPR2013-00010, paper 20; see also IPR2014-00360, May 15, paper.
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`- 3 -
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`IPR2014-00361
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`Sec. Life Ins. Co. of New York, 676 F.2d 1356 (11th Cir. 1987). Because the SAC
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`superseded the Amended Complaint, the Amended Complaint is legally defunct.
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`The parties’ agreement to dispense with the Amended Complaint is similar
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`to other cases where the Board has found the § 315(b) time-bar to be inapplicable
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`even though a complaint alleging infringement was served more than one year
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`before the filing of a petition. For example, the Board has held that a complaint
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`dismissed without prejudice under Fed. R. Civ. P. 41(a) does not trigger the §
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`315(b) statutory bar because “the dismissal of the earlier action … nullifies the
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`effect of the alleged service of the complaint on Petitioner.” Macauto USA v. BOS
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`Gmbh & KG, IPR2012-00004, Paper 18, at 15-16. Here, the parties' agreement
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`and order allowing PO to file the SAC confirmed the nullity of the earlier pleading.
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`PO relies on Apple v. Virnetx, Inc. IPR2013-00348 to support its assertion
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`that § 315(b) applies, but it is distinguishable. In Apple v. Virnetx, Inc., the
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`patentee commenced two separate actions, in 2010 and 2012. Paper 14, 2. The first
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`case proceeded to trial, resulting in a judgment. The petitioner argued that the
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`second complaint nullified the earlier complaint. The Board rejected this argument
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`based on the plain language of the statute. Id. at 4. Here, however, it is well-settled
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`that the SAC nullified PO’s Amended Complaint.3
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`PO did not cite Loral Space & Communications, Inc. v. Visat, Inc.,
`3
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`IPR2014-00236 et al, which is also distinguishable. First, the Loral Space
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`- 4 -
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`IPR2014-00361
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`In any event, any factual disputes should be resolved during the IPR trial.
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`Petitioner seeks the opportunity to present testimony regarding the January 2013
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`agreement. To the extent that PO seeks to introduce inconsistent or contradictory
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`testimony, Petitioner requests the right to cross examine any such witness(es).
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`Thus, any factual disputes regarding the existence, terms, and implications of the
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`January 2013 Agreement should be resolved at trial. EX1025 (Tr. at 14:13-15 “To
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`the extent we need to start getting into that, maybe that’s an issue better left for
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`trial itself”).
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`Respectfully submitted,
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`
`
`
`
`
`
`
`
`Date: May 15, 2014
`Sterne, Kessler, Goldstein & Fox
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
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`
`
`/Eldora L. Ellison/
`Eldora L. Ellison (Registration No. 39,967)
`Lead Attorney for Petitioner Amneal
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`petitioner did not present any support for its argument regarding the effect of the
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`
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`amended complaint in that case. Id. at 7. Second, there is no evidence in Loral
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`Space the parties had agreed that the petitioner need not answer the earlier
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`pleading. To the contrary, significant litigation transpired regarding the merits of
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`the earlier complaint, including a motion to dismiss, answer, and discovery. Here,
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`no such activity had occurred by the filing of the SAC. EX2008.
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`- 5 -
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`
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`IPR2014-00361
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
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`
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`The undersigned hereby certifies that the above-captioned Amneal
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`Pharmaceuticals’ Petitioner’s Reply Brief on 35 USC §315(b) was served in its
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`entirety on May 15, 2014, upon the following parties by email:
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`Joseph A. Mahoney jmahoney@mayerbrown.com
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`Erick J. Palmer ejpalmer@mayerbrown.com
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` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`
`
`/Eldora L. Ellison/
`Eldora L. Ellison
`Lead Attorney for Petitioner Amneal
`Registration No. 39,967
`
`
`
`Date: May 15, 2014
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005 - 3934
` (202) 371-2600
`
`1852686_1.DOC
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