Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 8
` Entered: February 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APOTEX, INC. and MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG AND MITSUBISHI PHARMA CORP.,
`Patent Owners.
`_______________
`
`Case IPR2015-00518
`Patent 8,324,283 B2
`_______________
`
`
`Before LORA M. GREEN, MICHELLE R. OSINSKI, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`OSINSKI, Administrative Patent Judge.
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 8
` Entered: February 17, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APOTEX, INC. and MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG AND MITSUBISHI PHARMA CORP.,
`Patent Owners.
`_______________
`
`Case IPR2015-00518
`Patent 8,324,283 B2
`_______________
`
`
`Before LORA M. GREEN, MICHELLE R. OSINSKI, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`OSINSKI, Administrative Patent Judge.
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2015-00518
`Patent 8,324,283 B2
`
`
`I.
`
`INTRODUCTION
`
`Apotex, Inc. and Mylan Pharmaceuticals Inc. (collectively, “Apotex-
`
`Mylan”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review
`
`of claims 1–32 (“the challenged claims”) of U.S. Patent No. 8,324,283 B2
`
`(Ex. 1001, “the ’283 patent”) and concurrently filed a Motion for Joinder
`
`(Paper 2, “Mot.”). The Motion for Joinder seeks to join this proceeding with
`
`Torrent Pharmaceuticals Limited v. Novartis AG and Mitsubishi Pharma
`
`Corp., Case IPR2014-00784 (“the Torrent IPR” or “the ’784 IPR”). Mot. 1.
`
`In a teleconference on February 3, 2015, Patent Owner and Torrent
`
`Pharmaceuticals Limited (“Torrent”) indicated they did not oppose Apotex-
`
`Mylan’s Motion for Joinder, and Patent Owner waived the Preliminary
`
`Response to the Petition.
`
`For the reasons described below, we institute an inter partes review of
`
`all the challenged claims and grant Apotex-Mylan’s Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds as those on
`
`which we instituted review in the Torrent IPR. On December 1, 2014, we
`
`instituted a trial in the Torrent IPR on the following ground: Claims 1–32 of
`
`the ’283 patent as unpatentable under 35 U.S.C. § 103(a) over U.S. Patent
`
`No. 6,004,565, issued Dec. 21, 1999 (“Chiba”), and PHARMACEUTICS: THE
`
`SCIENCE OF DOSAGE FORM DESIGN 223–321 (M.E. Aulton ed., 1988)
`
`(“Aulton”).
`
`In view of the identity of the challenge in the instant Petition and in
`
`the petition in the Torrent IPR, we institute an inter partes review in this
`
`
`
`2
`
`
`
`IPR2015-00518
`Patent 8,324,283 B2
`
`
`proceeding on the same ground as that on which we instituted the Torrent
`
`IPR. We do not institute inter partes review on any other grounds.
`
`III. GRANT OF MOTION FOR JOINDER
`
`The Petition in this proceeding has been accorded a filing date of
`
`December 31, 2014, and therefore, satisfies the joinder requirement of being
`
`filed within one month of our instituting a trial in the Torrent IPR.
`
`37 C.F.R. § 42.122(b); Paper 7 (Notice of Filing Date Accorded to Petition),
`
`1.
`
`In the teleconference on February 3, 2015, counsel for (i) Apotex-
`
`Mylan, (ii) Torrent, and (iii) Patent Owner, indicated that the parties had
`
`conferred regarding joinder and had a proposal in which this proceeding
`
`could be joined with the Torrent IPR with minimal impact on the current
`
`schedule for the Torrent IPR.
`
`Apotex-Mylan represents that the only ground Apotex-Mylan seeks to
`
`pursue in this proceeding is that on which we instituted the Torrent IPR.
`
`Mot. 2, 4. Apotex-Mylan acknowledges that it relies upon testimony from a
`
`different expert than Torrent, but indicates that the analysis and rationale of
`
`its expert is similar to that of Torrent’s expert and would have minimal
`
`impact on the proceeding. See id. at 5. Apotex-Mylan represents that it and
`
`Torrent “can work together to manage the questioning at depositions and
`
`presentations at the hearing to avoid redundancy.” Id. Apotex-Mylan
`
`further represents that it would not be time-barred from filing the instant
`
`Petition without joinder, but that joinder “would avoid inefficiency and
`
`potential inconsistency and would result in a final written decision without
`
`delay.” Id. at 5–6.
`
`
`
`3
`
`
`
`IPR2015-00518
`Patent 8,324,283 B2
`
`
`The parties agreed that Torrent and Apotex-Mylan would file papers
`
`as consolidated filings. See Mot. 5. The parties also agreed that the page
`
`limit for the Patent Owner Response would be extended by up to seven (7)
`
`pages, with the page limit for Petitioner’s Reply to the Patent Owner
`
`Response to be extended by a corresponding number of additional
`
`responsive pages.
`
`The parties agreed that joinder of this proceeding with the Torrent IPR
`
`would not unduly delay the resolution of either proceeding and proposed that
`
`each current due date in the Torrent IPR be extended by one month, with the
`
`oral argument to be heard on or around August 3, 2015 (subject to the
`
`availability of Hearing Room A due to the number of Petitioners involved in
`
`the joined proceedings). In that regard, a revised Scheduling Order for the
`
`joined proceedings is being entered concurrently with this decision. The
`
`parties agreed that there is no prejudice to Patent Owner, Torrent, or Apotex-
`
`Mylan from joining this proceeding with the Torrent IPR.
`
`In consideration of the above, we institute an inter partes review in
`
`IPR2015-00518 and grant Apotex-Mylan’s motion to join this proceeding to
`
`IPR2014-00784.
`
`IV. ORDER
`
`In view of the foregoing, it is
`
`ORDERED that IPR2015-00518 is instituted and joined with
`
`IPR2014-00784;
`
`FURTHER ORDERED that the ground on which IPR2014-00784 was
`
`instituted is unchanged and no other grounds are instituted in the joined
`
`proceeding;
`
`
`
`4
`
`
`
`IPR2015-00518
`Patent 8,324,283 B2
`
`
`FURTHER ORDERED that the Revised Scheduling Order entered
`
`concurrently with this Decision shall hereafter govern the schedule of the
`
`joined proceedings;
`
`FURTHER ORDERED that, throughout the joined proceeding,
`
`Torrent and Apotex-Mylan will file papers, except for motions that do not
`
`involve the other party, as a single, consolidated filing on behalf of
`
`Petitioner; that the filing party (either Torrent or Apotex-Mylan) will
`
`identify each such filing as a Consolidated Filing;
`
`FURTHER ORDERED that the page limit for the Patent Owner
`
`Response is extended by seven (7) pages;
`
`FURTHER ORDERED that if the Patent Owner Response is extended
`
`by any number of pages (not to exceed seven (7) pages), the page limit for
`
`Petitioner’s Reply to the Patent Owner Response may also be extended by
`
`the same number of pages (not to exceed seven (7) pages);
`
`FURTHER ORDERED that IPR2015-00518 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`
`made in IPR2014-00784;
`
`FURTHER ORDERED that a copy of this Decision, as well as the
`
`revised Scheduling Order, will be entered into the record of IPR2014-00784;
`
`and
`
`FURTHER ORDERED that the case caption in IPR2014-00784 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`
`
`5
`
`
`
`IPR2015-00518
`Patent 8,324,283 B2
`
`
`FOR PETITIONER APOTEX, INC.:
`
`Jonathan M. Lindsay
`Deborah Yellin
`CROWELL & MORING LLP
`JLindsay@Crowell.com
`DYellin@Crowell.com
`
`FOR PETITIONER MYLAN PHARMACEUTICALS INC.:
`
`Brandon M. White
`PERKINS COIE LLP
`BMWhite@perkinscoie.com
`
`
`
`
`
`FOR PATENT OWNER:
`
`Jane M. Love, Ph.D.
`Robert W. Trenchard
`WILMER CUTLER PICKERING HALE AND DORR LLP
`Jane.Love@wilmerhale.com
`Robert.Trenchard@wilmerhale.com
`
`
`
`
`
`
`
`6
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`TORRENT PHARMACEUTICALS LIMITED
`and
`APOTEX, INC. AND MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG AND MITSUBISHI PHARMA CORP.,
`Patent Owners.
`_______________
`
`Case IPR2014-00784
`Case IPR2015-00518
`Patent 8,324,283 B2
`_______________
`
`
`
`
`
`
`
`7
`
`
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