`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`METRICS, INC.
`Petitioner,
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`v.
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`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`_____________________
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`U.S. Patent No. 8,669,290 to Sawa et al.
`Issue Date: March 11, 2014
`Title: Aqueous Liquid Preparation Containing 2-Amino-3-(4-bromobenzoyl)
`Phenylacetic Acid
`_____________________
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`Inter Partes Review No.: IPR2014-01043
`_____________________
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`PETITIONER’S OPPOSITION TO INNOPHARMA’S MOTION FOR
`JOINDER AND PROPOSED SCHEDULING ORDER FILED
`IN IPR2015-00902
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`I.
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`RELIEF REQUESTED
`Pursuant to the Board’s Order of April 17, 2015 (see Paper 31), Petitioner
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`Metrics, Inc. (“Metrics”) submits this Opposition to InnoPharma Licensing Inc.,
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`InnoPharma Licensing LLC, InnoPharma Inc., InnoPharma LLC, Mylan
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`Pharmaceuticals Inc., and Mylan Inc.’s (collectively, “InnoPharma”) Motion for
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`Joinder (see IPR2015-00902, Paper 3) (“Motion for Joinder”) and Proposed
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`Scheduling Order (see IPR2015-00902, Paper 11) (“Proposed Scheduling Order”).
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`InnoPharma requests that the Board grant joinder of IPR2015-00902 with
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`the currently instituted proceeding, and submits its Proposed Scheduling Order
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`extending the current trial schedule. For the reasons set forth below, the Board
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`should reject InnoPharma’s Motion for Joinder because joining the schedules and
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`granting joinder will unduly delay Metrics’ already progressing instant proceeding
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`and unduly prejudice Metrics. To the extent that the Board is inclined to grant
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`InnoPharma’s Motion for Joinder, either in whole or in-part, Metrics requests that
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`that the Board adjust and adopt the schedule proposed below in order to minimize
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`the disruption to the instant proceeding and maintain the scheduled oral hearing in
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`this instituted trial proceeding.
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`II.
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`PROCEDURAL BACKGROUND
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`On June 26, 2014, Metrics filed an Abbreviated New Drug Application
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`(“ANDA”) with the Food and Drug Administration, including a Paragraph IV
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`Certification asserting, inter alia, that the claims of U.S. Patent No. 8,669,290
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`(“the ’290 Patent”) are invalid. The ’290 Patent is currently the subject of a patent
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`infringement suit pending in the U.S. District Court for the District of New Jersey
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`against Metrics which was filed by Patent Owner in response to Metrics’ ANDA
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`filing. (See Senju Pharmaceutical Co., Ltd., et al. v. Metrics, Inc., et al., C.A. No.
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`1:14-cv-03962-JBS-KMW (D.N.J.)). Metrics can receive final approval for its
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`ANDA by showing that the ’290 Patent is invalid. In order to prove invalidity and
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`secure final approval of its ANDA, Metrics filed its Petition for Inter Partes
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`Review challenging each of the claims of the ’290 Patent on June 26, 2014. (See
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`Papers 1, 6, and 9). On November 20, 2014, Patent Owner filed its Preliminary
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`Response. (See Paper 13). The Board instituted trial in its Decision of February
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`19, 2015 (see Paper 19) and issued its Scheduling Order on the same day (see
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`Paper 20) (“Scheduling Order”).
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`On March 19, 2015, InnoPharma filed its Petition for Inter Partes Review of
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`the ’290 Patent in IPR2015-00902 (see IPR2015-00902, Paper 2), which was
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`accompanied by its Motion for Joinder. By Order, Patent Owner’s Preliminary
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`Response in InnoPharma’s proceeding is due May 26, 2015. (See Paper 31, 3). On
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`May 19, 2015, InnoPharma, based on its request for joinder, filed its Proposed
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`Scheduling Order to amend the schedule in the instant proceeding, including
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`delaying the oral hearing date from November 12, 2015 to January 21, 2016. (See
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`2
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`IPR2015-00902, Paper 11, 4). Based on the current trial schedule,1 Patent Owner’s
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`Response (Due Date 1) is due on June 26, 2015. The Parties are currently working
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`on scheduling the deposition of Metrics’ expert in the next three (3) weeks.
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`III. DISCUSSION
`A. Metrics Will Be Prejudiced If The Board Grants Joinder Because
`Additional Expert Discovery Will Be Required
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`The instant proceeding is sufficiently advanced that permitting joinder with
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`IPR2015-00902 proceeding will cause undue delay to Metrics because additional
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`discovery will be required which will result in delaying the current trial schedule
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`by at least two months, as shown in the Proposed Scheduling Order.2 (See
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`IPR2015-00902, Paper 11, 2-4). The additional discovery is necessitated because
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`InnoPharma is relying on a different expert than the expert used by Metrics in the
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`current proceeding. If joinder is granted, Patent Owner will seek to depose
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`InnoPharma’s expert as well as Metric’s expert. The delay caused by this
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`additional expert discovery will delay the ultimate resolution of the invalidity of
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`1 On April 23, 2015, the Parties filed a Notice of Stipulation Adjusting Due Dates
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`1 through 3 in the instant proceeding. (See Paper 33).
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`2 At the hearing held on April 15, 2015, Patent Owner indicated its intention to
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`seek a longer delay of the oral hearing date if the Board was inclined to grant
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`joinder. (See Exhibit 2026, 16:14-21).
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`3
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`the ‘290 Patent and thereby unduly delay the final approval of Metrics’ ANDA and
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`subsequent ability to enter the market. Because joinder of IPR2015-00902 with the
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`current proceeding will not help “secure the just, speedy, and inexpensive
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`resolution” of the issues in the current proceeding, the Board should exercise its
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`discretion and deny InnoPharma’s Motion for Joinder. (See 37 C.F.R. § 42.1(b)).
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`B.
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`Innopharma Filed Its IPR Within One-Year Of Being Sued For
`Infringement And Thus Is Not Time-Barred And Will Therefore
`Not Be Prejudice If Joinder Is Denied. In The Event That The
`Board Grants The Motion For Joinder, The Schedule Should Be
`Modified
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`A request for joinder pursuant to 35 U.S.C. § 315 affects certain deadlines
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`under the AIA. Normally, a petitioner is barred from filing a petition for inter
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`partes review more than one year after the petitioner is served with a complaint
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`alleging infringement of a patent. (35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b)).
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`Here, InnoPharma is not time-barred as its Petition for Inter Partes Review was
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`filed well within the one-year statutory bar date. Accordingly, InnoPharma will
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`not be prejudice if joinder is denied. To the extent that the Board is inclined to
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`grant InnoPharma’s Motion for Joinder, Metrics requests that the Board adjust the
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`current schedule and adopt the schedule below in all four proceedings (IPR2014-
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`01041, IPR2014-01043, IPR2015-00902, and IPR2015-00903). This schedule
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`maintains the current oral argument date of November 26, 2015, avoiding ultimate
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`4
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`prejudice to Metrics, and allows for modest adjustments of Due Dates 1 and 4,
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`accounting for additional expert discovery should joinder be granted.
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`Current Trial Schedule in IPR2014-
`01041, IPR2014-01043
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`DUE DATE 1 – June 26, 2015
`Patent owner’s response to the petition
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`Patent owner’s motion to amend the
`patent
`DUE DATE 2 – September 18, 2015
`Petitioner’s reply to patent owner’s
`response to petition
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`Petitioner’s opposition to motion to
`amend
`DUE DATE 3 – October 8, 2015
`Patent owner’s reply to petitioner’s
`opposition to motion to amend
`DUE DATE 4 – October 8, 2015
`Motion for observation regarding cross-
`examination of reply witness
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`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5 – October 22, 2015
`Response to observation
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`Opposition to motion to exclude
`DUE DATE 6 – October 29 2015
`Reply to opposition to motion to
`exclude
`DUE DATE 7 – November 12, 2015
`Oral argument (if requested)
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`Metrics’ Proposed Consolidated Trial
`Schedule in IPR2014-01041, IPR2014-
`01043, IPR2015-00902, and IPR2015-
`00903
`July 27, 2015 (extending deadline by
`one month from June 26, 2015)
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`September 18, 2015 (unchanged)
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`October 8, 2015 (unchanged)
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`October 15, 2015 (extending deadline
`by one week from October 8, 2015)
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`October 22, 2015 (unchanged)
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`October 29, 2015 (unchanged)
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`November 12, 2015 (unchanged)
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`5
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` RESPECTFULLY SUBMITTED,
`DUANE MORRIS LLP
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`Date: May 26, 2015
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`/Patrick D. McPherson/
`Patrick D. McPherson
`Registration No. 46,255
`Duane Morris LLP
`505 9th Street, Suite 1000
`Washington, DC 2004
`(202) 776-7800
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`Vincent L. Capuano
`Registration No. 42,385
`100 High Street, Suite 2400
`Boston, MA 02110
`(857) 488-4200
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`Attorneys for Petitioner Metrics, Inc.
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`6
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`CERTIFICATION OF SERVICE ON PATENT OWNER
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 26th day
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`of May 2015, a complete copy of the foregoing was served via e-mail on counsel
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`for Patent Owner at:
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`Bryan C. Diner
`Bryan.Diner@finnegan.com
`M. Andrew Holtman
`Andy.Holtman@finnegan.com
`Justin J. Hasford
`Justin.Hasford@finnegan.com
`Jonathan R.K. Stroud
`Jonathan.Stroud@finnegan.com
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
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`A courtesy copy of the foregoing was also served via e-mail on counsel of
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`record for the Petitioner in InnoPharma, Licensing, Inc. et al., v. Senju
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`Pharmaceutical Co., Ltd., et al, Case No. IPR2015-00902, as follows:
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`Jitendra Malik, Ph.D.
`jitty.malik@alston.com
`Bryan Skelton, Ph.D.
`bryan.skelton@alston.com
`Alston & Bird LLP
`4721 Emperor Blvd., Suite 400
`Durham, NC 27703-8580
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`Lance Soderstrom
`lance.soderstrom@alston.com
`Alston & Bird LLP
`90 Park Avenue, 15th Floor
`New York, NY 10016-1387
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`RESPECTFULLY SUBMITTED,
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`DUANE MORRIS LLP
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`By: /Patrick D. McPherson/
`Patrick D. McPherson, Esq.
`Registration No. 46,255
`505 9th Street, Suite 1000
`Washington, DC 2004
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`Lead Counsel for Petitioner Metrics, Inc.
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`2
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