Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 19
`Entered: July 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ENZYMOTEC LTD. and ENZYMOTEC USA, INC.
`Petitioner
`
`v.
`
`NEPTUNE TECHNOLOGIES & BIORESROUCES, INC.
`Patent Owner
`____________
`
`Case IPR2014-00556
`Patent 8,278,351
`____________
`
`Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`DECISION
`Enzymotec’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`

`

`
`
`I. INTRODUCTION
`
`Petitioners Enzymotec Ltd. and Enzymotec USA, Inc. (collectively,
`
`“Enzymotec”) filed a Petition (Paper 1) (“Pet.”) to institute an inter partes review
`
`of claims 1-6, 9, 12, 13, 19-29, 32, 35, 36, and 42-46 of Patent 8,278,351 (the
`
`“’351 patent”) pursuant to 35 U.S.C. § 311319, as well as a Motion for Joinder
`
`with Case IPR2014-00003 (Paper 4) (“Mot.”). Patent Owner Neptune
`
`Technologies & Bioresrouces, Inc. (“Neptune”) filed an Opposition to
`
`Enzymotec’s Motion. IPR2014-00003, Paper 45 (“Opp.”). Aker Biomarine AS
`
`(“Aker”), Petitioner in IPR2014-00003, did not file an opposition. Aker and
`
`Enzymotec jointly filed a stipulation as how the two Petitioners would cooperate in
`
`the joined proceeding, if joinder was granted. Paper 14. For the reasons that
`
`follow, Enzymotec’s motion for joinder is granted.
`
`II. DISCUSSION
`
`A. Related Case IPR2014-00003
`
`On October 1, 2013,Aker, which is a different Petitioner than the Petitioner
`
`in the instant proceeding (Enzymotec), filed a Petition to institute an inter partes
`
`review of claims 1-94 of the ’351 patent, the same patent at issue in this case.
`
`IPR2014-00003, Paper 6. The parties in IPR2014-00003 filed a Joint Motion to
`
`Limit Petition to limit the petition to claims 1-6, 9, 12, 13, 19-29, 32, 35, 36, and
`
`42-46 of the ’351 patent. IPR2014-00003, Paper 18. Thereafter, this panel granted
`
`the Joint Motion to Limit Petition. IPR2014-00003, Paper 21. On March 24,
`
`2014, we instituted inter partes review of claims 1-6, 9, 12, 13, 19-29, 32, 35, 36,
`
`and 42-46 of the ’351 patent on two grounds—an anticipation and an obviousness
`
`ground. IPR2014-00003, Paper 22. In the previous case, we did not institute
`
`review of claims 2, 3, 25 and 26 based on an anticipation ground. IPR2014-00003,
`
`
`
`
`
`
`
`

`

`
`
`Papers 22 and 45. In a Decision instituting inter partes review in the current case,
`
`decided concurrently with this Motion for Joinder, we grant the Petition with
`
`respect to Enzymotec’s anticipation challenge of claims 2, 3, 25, and 26. All other
`
`grounds on which we institute trial in the instant proceeding are identical to those
`
`in which we instituted trial in IPR2014-00003.
`
`In the current case, Enzymotec filed a Request for Joinder on April 4, 2014,
`
`within one-month of institution in IPR2014-00003, as set forth in 37 C.F.R.
`
`§ 42.122(b). As Enzymotec concedes, absent joinder with the other proceeding,
`
`Enzymotec’s Petition for inter partes review is barred under 35 U.S.C. § 315(b).
`
`Mot. 4.
`
`B. Legal Framework
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`
`(2011) (“AIA”) permits the joinder of like proceedings. 35 U.S.C. § 315. The
`
`Board, acting on behalf of the Director, has the discretion to join an inter partes
`
`review with another inter partes review. Specifically, § 315(c) provides (emphasis
`
`added):
`
`JOINDER. – If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
`
`35 U.S.C. § 315(b) also establishes a one-year bar from the date of service
`
`of a complaint alleging infringement for requesting inter partes review, but
`
`specifies that the bar does not apply to a request for joinder under § 315(c).
`
`Section 315(b) reads (emphasis added):
`
`
`
`
`
`
`
`

`

`
`
`PATENT OWNER’S ACTION. – An inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 1
`year after the date on which the petitioner, real party in interest, or
`privy of
`the petitioner
`is served with a complaint alleging
`infringement of the patent. The time limitation set forth in the
`preceding sentence shall not apply to a request for joinder under
`subsection (c).
`
`The Board will determine whether to grant joinder on a case-by-case basis,
`
`taking into account the particular facts of each case, substantive and procedural
`
`issues, and other considerations. See 157 CONG. REC. S1376 (daily ed. Mar. 8,
`
`2011) (statement of Sen. Kyl) (when determining whether and when to allow
`
`joinder, the Office may consider factors including “the breadth or unusualness of
`
`the claim scope” and claim construction issues). When considering whether to
`
`grant a motion for joinder, the Board is mindful that patent trial regulations,
`
`including the rules for joinder, must be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R.
`
`§ 42.1(b). As such, any motion for joinder must be filed “no later than one month
`
`after the institution date of any inter partes review for which joinder is requested.”
`
`37 C.F.R. § 42.122(b).
`
`As the moving party, Enzymotec has the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
`
`joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify
`
`any new grounds of unpatentability asserted in the petition; (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing review;
`
`and (4) address specifically how briefing and discovery may be simplified. See
`
`Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15, 4 (Apr. 24, 2013);
`
`Frequently Asked Question H5 on the Board’s website at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`
`
`
`
`
`

`

`
`
`C. Analysis
`
`Enzymotec asserts that joinder is appropriate because it will be unduly
`
`prejudiced if joinder is denied because its Petition is otherwise barred under
`
`§ 315(b). Mot. 4-5. Enzymotec also contends neither Aker (petitioner in
`
`IPR2014-00003) nor Neptune (patent owner in both cases) will suffer prejudice if
`
`joinder is granted. Id. Enzymotec further asserts that its Petition presents the
`
`identical anticipation and obviousness grounds involving the same subset of claims
`
`of the ’351 patent at issue in IPR2014-00003. Id. at 5. Enzymotec contends that,
`
`while its Petition additionally asserts that claims 2 and 25 are anticipated, this
`
`argument is based on the same evidence already of record in IPR2014-00003. Id.
`
`Enzymotec asserts further that joinder would have little impact on the trial
`
`schedule in IPR2014-00003 because both Aker and Enzymotec will address the
`
`same prior art and using the same experts. Id. at 6, see also Paper 14 (stipulating
`
`how Petitioners Enzymotec and Aker will cooperate in the event of joinder).
`
`Enzymotec agrees to cooperate with Aker to simplify briefing and discovery, and
`
`will allow Aker to “take lead at depositions.” Id. Thus, no additional depositions
`
`will be needed. According to Enzymotec, given the fact that joinder will require
`
`no change to the existing trial schedule and the fact that Enzymotec agrees to using
`
`the same experts and following Aker’s lead in any depositions of those experts, the
`
`procedural impact of joinder on the existing proceeding will be minimal. Id.
`
`Enzymotec contends that this weighs in favor of joinder. Id.
`
`Neptune opposes joinder on the basis that the Petition asserts an anticipation
`
`ground concerning claims 2, 3, 25, and 26 that would effectively allow Enzymotec
`
`to broaden the scope of IPR2014-00003, despite its filing of the Petition in the
`
`current case after the one-year limit under 35 U.S.C. § 315(b). Opp. 8-9.
`
`As an initial matter, we note that § 315(b) expressly states that the one-year
`
`
`
`
`
`
`
`

`

`
`
`bar “shall not apply to a request for joinder under [§ 315(c)].” Moreover, on this
`
`record, we are not persuaded that the possibility of broadening the scope of issues
`
`in IPR2014-00003 is an adequate reason for denying joinder. Section 315(c)
`
`permits joinder of “any person who properly files a petition under section 311.”
`
`There is no language in either § 311 or § 315(c) requiring us to limit Enzymotec’s
`
`Petition to identical issues in IPR2014-00003. While we are mindful of a policy
`
`preference for joining a party that does not present new issues that might
`
`complicate or delay an existing proceeding,1 Enzymotec’s assertion that claims 2
`
`and 25, as well as claims 3 and 26, are unpatentable as anticipated is based on the
`
`prior art already of record in IPR2014-00003. Thus, we are persuaded that the
`
`impact of joinder on the previous proceeding will be minimal from both a
`
`procedural and substantive view point.
`
`Neptune further asserts that institution on the anticipation ground of claims
`
`2, 3, 25, and 26 would be facially inconsistent with previous action of the Board in
`
`IPR2014-00003, and would result in the inefficient use of the Board’s time and
`
`resources. That rationale, however, does not persuade us against exercising our
`
`discretion to allow joinder. We are mindful that, when exercising our discretion,
`
`patent trial regulations, including the rules for joinder, must be construed to secure
`
`the just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
`
`§ 316(b); 37 C.F.R. § 42.1(b). As discussed above, however, we have already
`
`determined that the impact of joinder on the existing proceeding would be
`
`minimal.
`
`
`1 See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
`(“The Office anticipates that joinder will be allowed as of right – if an inter partes
`review is instituted on the basis of a petition, for example, a party that files an
`identical petition will be joined to that proceeding, and thus allowed to file its own
`briefs and make its own arguments.”)
`
`
`
`
`
`
`
`

`

`
`
`We are also not persuaded by Neptune’s argument that joinder is
`
`inappropriate as such action would allow Enzymotec to evade its obligation under
`
`an existing contract between the parties to limit any inter partes review to the
`
`grounds of unpatentability instituted in IPR2014-00003. Mot. 10. That argument
`
`does not explain, however, why joinder is inappropriate under the statutory and
`
`regulatory framework set forth by the AIA, which permits joinder as a party to that
`
`inter partes review any person who properly files a petition under § 311.
`
`III. CHANGES TO SCHEDULING ORDER
`
`The Scheduling Order entered in IPR2013-00003 (Paper 23), along with any
`
`agreed-upon stipulations by the parties to that Scheduling Order, shall govern the
`
`schedule of the joined proceedings with the following exceptions. The due date for
`
`Neptune to file a Response to the Petition (DUE DATE 1) in this proceeding is
`
`August 11, 2014. Neptune’s Response to the Petition in IPR2014-00556 shall only
`
`address Enzymotec’s anticipation challenge of claims 2, 3, 25, and 26 of U.S.
`
`Patent No. 8,278,351, and is limited to 15 pages. The parties may stipulate to a
`
`different date for DUE DATE 1 (earlier or later, but no later than DUE DATE 4).
`
`In IPR2014-00003, we rescheduled the oral hearing date (DUE DATE 7)
`
`from October 21, 2014 to October 17, 2014 in a previous order. IPR2014-00003,
`
`Paper 65. Counsel for Enzymotec has notified the Board of a conflict for this date.
`
`All parties have indicated their availability on the morning of October 31, 2014.
`
`Accordingly, DUE DATE 7 in the Scheduling Order for IPR2014-00003
`
`(IPR2014-00003, Paper 20) is changed from October 17, 2014, to October 31,
`
`2014.
`
`In consideration of the foregoing, it is hereby:
`
`IV. ORDER
`
`ORDERED that Enzymotec’s Motion for Joinder with IPR2014-00003 is
`
`
`
`
`
`
`
`

`

`
`
`granted;
`
`FURTHER ORDERED that this proceeding is joined with IPR2014-00003;
`
`FURTHER ORDERD that the Scheduling Order entered in CASE IPR2013-
`
`00003, along with any stipulations that have been made to that Scheduling Order,
`
`shall govern the schedule of the joined proceedings with the exception that DUE
`
`DATE 1 is August 11, 2014;
`
`FURTHER ORDERED that Neptune’s Response to the Petition in IPR2014-
`
`00556 shall only address Enzymotec’s anticipation challenge of claims 2, 3, 25,
`
`and 26 of U.S. Patent No. 8,278,351, and is limited to 15 pages;
`
`FURTHER ORDERED that throughout Case IPR2014-00003, Aker and
`
`Enzymotec will file papers, except for motions that do not involve the other party,
`
`as consolidated filings. Aker will identify each such filing as a consolidated filing
`
`and will be responsible for completing all consolidated filings. Enzymotec may
`
`file an additional paper, not to exceed seven pages, which may address only points
`
`of disagreement with contentions in Aker’s consolidated filing. Any such filing by
`
`Enzymotec must identify specifically and explain each point of disagreement.
`
`Enzymotec may not file separate arguments in support of points made in Aker’s
`
`consolidated filing;
`
`FURTHER ORDERED that, in addition to responding to any consolidated
`
`filing, Neptune may respond separately to any separate Enzymotec filing. Any
`
`such response by Neptune to an Enzymotec filing may not exceed the number of
`
`pages in the Enzymotec filing and is limited to issues raised in the Enzymotec
`
`filing;
`
`
`
`
`
`
`
`

`

`
`
`FURTHER ORDERED that Aker and Enzymotec will designate attorneys to
`
`conduct cross-examination of any witnesses produced by Neptune and redirect of
`
`any witnesses produced by Aker and Enzymotec within the timeframe normally
`
`allotted by the rules for one party. Aker and Enzymotec will not receive any
`
`separate cross-examination or redirect time. Aker is permitted to ask questions
`
`before Enzymotec at depositions if it so chooses;
`
`FURTHER ORDERED that any requests by a party for additional deposition
`
`time must be brought before the Board;
`
`FURTHER ORDERED that Aker is permitted to present argument before
`
`Enzymotec at any oral argument if it so chooses;
`
`FURTHER ORDERED that the case caption in Case IPR2014-00003 shall
`
`be changed to reflect the joinder with this proceeding in accordance with the
`
`attached example;
`
`FURTHER ORDERED that DUE DATE 7 in IPR2014-00003 is moved
`
`from October 17, 2014 to October 31, 2014; and
`
`FURTHER ORDERED that a copy of this Decision be entered into the file
`
`of Case IPR2014-00003.
`
`
`
`PETITIONER:
`
`Elizabeth Holland
`eholland@kenyon.com
`
`Cynthia Hardman
`chardman@kenyon.com
`
`
`PATENT OWNER:
`
`Dean Farmer
`dfarmer@cooley.com
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AKER BIOMARINE AS and
`ENZYMOTEC LTD. and ENZYMOTEC USA, INC.
`Petitioners
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.
`Patent Owner
`_______________
`
`Case IPR2014-000032
`Patent 8,278,351 B2
`_______________
`
`
`
`
`2 Case IPR2013-00556 has been joined with this proceeding.
`
`
`
`
`
`
`
`