`Date: October 30, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WOCKHARDT BIO AG,
`Petitioner,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01815
`Patent 7,765,106 B2
`____________
`
`
`
`
`
`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`
`
`
`
`
`MURPHY, 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)
`
`
`
`
`
`IPR2015-01815
`Patent 7,765,106 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Wockhardt Bio AG (“Wockhardt”) filed a Petition requesting
`
`inter partes review of claims 1–8 of U.S. Patent No. 7,765,106 B2 (“the ’106
`
`patent”). Paper 1 (“Petition” or “Pet.”). The Petition was accorded a filing date of
`
`August 27, 2015. Paper 5. Wockhardt also filed a Motion for Joinder pursuant to
`
`35 U.S.C. § 315(c) requesting joinder of the present proceeding with Amneal
`
`Pharms., LLC and Par Pharm., Inc. v. Jazz Pharms., Inc., Case IPR2015-00546.
`
`Paper 4 (“Mot.”). IPR2015-00546 also concerns claims 1–8 of the ’106 patent
`
`owned by Jazz Pharmaceuticals, Inc. (“Patent Owner”). We instituted trial in
`
`IPR2015-00546 on July 28, 2015, on a single ground of obviousness of claims 1–8
`
`over the same “Advisory Committee Art” (Exs. 1003–1006) relied upon by
`
`Wockhardt in the instant Petition. IPR2015-00546, Paper 25. Wockhardt’s
`
`assertion of obviousness of claims 1–8 over the Advisory Committee Art in the
`
`Petition is the only ground on which Wockhardt seeks institution of inter partes
`
`review. Pet. 11. Wockhardt filed the Petition and Motion for Joinder in the
`
`present proceeding on August 27, 2015, within one month after we instituted trial
`
`in IPR2015-00546. 37 C.F.R. § 42.122(b).
`
`II. DISCUSSION
`
`Based on authority delegated to us by the Director, we have discretion to
`
`join an inter partes review to a previously instituted inter partes review. 35 U.S.C.
`
`§ 315. Section 315(c) provides, in relevant part, that “[i]f 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.” Id.
`
`When determining whether to grant a motion for joinder we consider factors such
`
`as timing and impact of joinder on the trial schedule, cost, discovery, and potential
`
`
`
`2
`
`
`
`IPR2015-01815
`Patent 7,765,106 B2
`
`simplification of briefing. Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004,
`
`slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`We convened a conference call on September 14, 2015, among counsel for
`
`Wockhardt, Amneal Pharmaceuticals (“Amneal”), Par Pharmaceutical, Inc.
`
`(“Par”), and Patent Owner. The subject of the conference call was a discussion of
`
`the conditions proposed by Wockhardt in its Motion for Joinder, requesting that we
`
`join the present proceeding with IPR2015-00546. We refer to the transcript of the
`
`conference call filed by counsel for Wockhardt for the details of the call and
`
`representations and agreements made by the parties. Ex. 1033.
`
`Of particular relevance, we note that Wockhardt’s Petition is based only on
`
`the identical ground on which we instituted inter partes review in IPR2015-00546.
`
`Mot. 5. The Petition is based on “the same arguments, evidence, and ground of
`
`unpatentability” and is otherwise “identical to the instituted Amneal/Par IPR
`
`Petition.” Id.; Ex. 1033, 7:2–18. We further note that Wockhardt agreed to, inter
`
`alia, (i) “adopt any papers submitted by Amneal and Par in the joined IPR
`
`proceeding . . . including the testimony from the same expert witness(es) as in the
`
`instituted trial;” (ii) “not seek to submit any new expert declarations from those
`
`entered by Amneal and Par, except to the extent that . . . Wockhardt is precluded
`
`from relying on Amneal and Par’s experts’ declarations, e.g., if Amneal and Par
`
`settle with Jazz and contractually bind their experts from continuing in the IPR
`
`with Wockhardt;” (iii) “not seek additional time at any deposition and that Amneal
`
`and Par will be permitted to ask questions before Wockhardt;” and (iv) “not seek
`
`any additional time at any oral argument.” Mot. 8–10. Patent Owner agreed that,
`
`if joinder were to be ordered on the conditions set forth in the Motion for Joinder,
`
`then Patent Owner would not oppose joinder and would waive filing a preliminary
`
`response to the Petition. Ex. 1033, 7:20–9:13. The parties also agreed that the
`
`
`
`3
`
`
`
`IPR2015-01815
`Patent 7,765,106 B2
`
`schedule in IPR2015-00546 would remain in place without requiring any
`
`extensions of time. Id. at 6:11–22, 8:8–12, 28:11–21.
`
`At the conclusion of the conference call, we asked counsel for Wockhardt,
`
`Amneal, and Par to attempt to reach agreement on any remaining issues among
`
`them regarding joinder and to inform the Board no later than Friday September 18,
`
`2015, whether agreement was reached, and whether any of the parties intended to
`
`file an opposition to Wockhardt’s Motion for Joinder by September 25, 2015. Ex.
`
`1033, 34:12–35:14.
`
`On September 18, 2015, we received an email from counsel for Wockhardt,
`
`on which counsel for Amneal, Par, and Patent Owner were copied, indicating there
`
`was agreement among Wockhardt, Amneal, and Par, and that none of the parties
`
`would oppose the Motion for Joinder based on the conditions proposed in
`
`Wockhardt’s Motion, as clarified and agreed during the conference call. In view of
`
`the foregoing, we find that joinder based upon the conditions stated by Wockhardt
`
`in its Motion for Joinder will have little or no impact on the timing, cost, or
`
`presentation of the trial on the instituted ground. Discovery and briefing will be
`
`simplified if the two proceedings are joined. Therefore, there being no opposition
`
`to Wockhardt’s Motion for Joinder from any of the parties, the Motion for Joinder
`
`is granted.
`
`
`
`Accordingly, it is
`
`III.
`
` ORDER
`
`ORDERED that trial is instituted in IPR2015-001815 as to the obviousness
`
`of claims 1–8 of the ’106 patent over the Advisory Committee Art, the same
`
`ground on which we instituted trial in IPR2015-00546;
`
`
`
`4
`
`
`
`IPR2015-01815
`Patent 7,765,106 B2
`
`
`FURTHER ORDERED that Wockhardt’s Motion for Joinder with IPR2015-
`
`00546 is granted;
`
`FURTHER ORDERED that IPR2015-01815 is terminated and joined to
`
`IPR2015-00546, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the conditions
`
`stated in Wockhardt’s Motion for Joinder (Paper 4) as clarified and agreed during
`
`the conference call of September 14, 2015 (Ex. 1033);
`
`FURTHER ORDERED that the Scheduling Order in place for IPR2015-
`
`00546 shall govern the joined proceedings;
`
`FURTHER ORDERED that all future filings in the joined proceeding are to
`
`be made only in IPR2015-00546;
`
`FURTHER ORDERED that the case caption in IPR2015-00546 for all
`
`further submissions shall be changed to add Wockhardt as a named petitioner after
`
`Amneal and Par, and to indicate by footnote the joinder of IPR2015-01815 to that
`
`proceeding, as indicated in the attached form of caption; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered into the
`
`record of IPR2015-00546.
`
`
`
`
`
`5
`
`
`
`IPR2015-01815
`Patent 7,765,106 B2
`
`FOR PETITIONER:
`
`Laura Vogel
`Patrick Gallagher
`LAVogel@duanemorris.com
`PCGallagher@duanemorris.com
`
`
`
`FOR PATENT OWNER:
`
`F. Dominic Cerrito
`Evangeline Shih
`Frank C. Calvosa
`Eric C. Stops
`nickcerrito@quinnemanuel.comjvbiernacki@jonesday.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`ericstops@quinnemanuel.com
`
`John V. Biernacki
`jvbiernacki@jonesday.com
`
`
`
`FOR AMNEAL PHARMACEUTICALS, LLC and PAR PHARMACEUTICAL,
`INC. (IPR2015-00546):
`Matthew C. Ruedy
`Steven A. Maddox
`mruedy@meiplaw.com
`smaddox@meiplaw.com
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2015-00546
`Patent 7,765,106 B2
`
`
`
`Sample Case Caption
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`AMNEAL PHARMACEUTICALS LLC, PAR PHARMACEUTICAL, INC., and
`WOCKHARDT BIO AG,
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-005461
`Patent 7,765,106 B2
`____________
`
`
`
`
`
`1 Case IPR2015-01815 has been joined with this proceeding.