`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.
`Petitioner,
`
`v .
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.
`Patent Owner.
`
`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
`__________________
`
`Inter Partes Review No.: IPR2015-00902
`__________________
`
`MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`TABLE OF CONTENTS
`
`Page
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`
`
`
`I.
`
`II.
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`
`A.
`
`B.
`
`Joinder will not impact the Board’s ability to complete the
`review in a timely manner ..................................................................... 4
`
`Joinder will promote efficiency by consolidating issues,
`avoiding duplicate efforts, and preventing inconsistencies .................. 6
`
`C.
`
`Joinder will not prejudice Senju or Metrics .......................................... 6
`
`IV. CONCLUSION ................................................................................................ 7
`
`
`
`
`
`
`i
`
`
`
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`TABLE OF AUTHORITIES
`
`
`CASES
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`Case IPR2013-00385 ........................................................................................ 4, 6
`Motorola Mobility LLC v. SoftView LLC, IPR2013- 00256 ...................................... 6
`STATUTES
`
`Page(s)
`
`35 U.S.C. § 103 ...................................................................................................... 2, 3
`
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`
`35 U.S.C. § 316(a)(1) ................................................................................................. 7
`
`35 U.S.C. § 316(a)(11) ............................................................................................... 5
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.22 ....................................................................................................... 1
`
`37 C.F.R. § 42.100(c) ............................................................................................. 5, 7
`
`37 C.F.R. § 42.122(a) ................................................................................................. 3
`
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) .................................................... 5
`
`U.S. Patent No. 4,910,225 .......................................................................................... 2
`
`U.S. Patent No. 6,107,343 .......................................................................................... 2
`
`U.S. Patent No. 8,669,290 .................................................................................passim
`
`ii
`
`
`
`
`
`
`I.
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`InnoPharma Licensing Inc., InnoPharma Licensing LLC, InnoPharma Inc.,
`
`InnoPharma LLC, Mylan Pharmaceuticals Inc., and Mylan Inc. (collectively
`
`“InnoPharma”) respectfully submits this Motion for Joinder, together with a
`Petition for Inter Partes Review of U.S. Patent No. 8,669,290 (the “’290 Patent”)
`
`(“Petition”). Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b),
`InnoPharma requests institution of an inter partes review and joinder with the inter
`partes review concerning the same patent in Metrics, Inc., Mayne Pharma, and
`Johnson Matthey, Inc. v. Senju Pharmaceutical Co., Ltd., Bausch & Lomb, Inc.,
`and Bausch & Lomb Pharma Holdings Corp., Case No. IPR2014-01043 (the
`
`“Metrics IPR”), which was instituted on February 19, 2015.
`
`In accordance with the Board’s Representative Order identifying matters to
`
`be addressed in a motion for joinder (Paper No. 15, IPR2013-00004, April 24,
`
`2013), InnoPharma submits that: (1) joinder is appropriate because it will promote
`
`efficient determination of the validity of the ’290 Patent without prejudice to
`
`Metrics, Inc., Mayne Pharma, and Johnson Matthey, Inc. (collectively, “Metrics”)
`
`or Senju Pharmaceutical Co., Ltd., Bausch & Lomb, Inc., and Bausch & Lomb
`Pharma Holdings Corp. (collectively “Senju”) (See, e.g., Paper No. 10, IPR2013-
`
`00256, June 20, 2013 (granting motion for joinder under similar circumstances));
`
`
`
`1
`
`
`
`
`(2) InnoPharma’s Petition raises the same grounds of unpatentability as Metrics
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`IPR; (3) joinder would not affect the pending schedule in the Metrics IPR nor
`
`increase the complexity of that proceeding, minimizing costs; and (4) InnoPharma
`
`is willing to agree to consolidated filings with Metrics to minimize burden and
`
`schedule impact.
`
`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as it is submitted within one month of February 19, 2015, the date on which the
`
`Metrics IPR was instituted.
`II.
`STATEMENT OF MATERIAL FACTS
`1.
`Senju Pharmaceutical, Co., Ltd., is the owner of the ’290 Patent.
`
`2.
`
`On November 3, 2014, Senju Pharmaceutical, Co., Ltd., et al. filed a
`
`complaint against Innopharma for
`
`infringement of
`
`the ’290 Patent (the
`
`“Underlying Litigation”).
`On June 26, 2014, Metrics filed its petition for inter partes review of
`
`3.
`
`claims 1-30 of the ’290 Patent.
`On February 19, 2015, a decision instituting inter partes review of
`
`4.
`
`claims 1-30 of the ’290 Patent was entered in the Metrics IPR (Paper No. 19, IPR
`
`2014-01043) on the grounds that claims 1-30 were unpatentable over U.S. Patent
`
`No. 4,910,225 (“Ogawa”) and U.S. Patent No. 6,107,343 (“Sallmann”) under 35
`
`U.S.C. § 103 (Paper No. 19, IPR 2014-01043).
`
`
`
`2
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`Oral argument is currently set for November 12, 2015 in the Metrics
`
`
`
`5.
`IPR. (Id.)
`
`6.
`Concurrently with this Motion for Joinder, InnoPharma is filing a
`petition for inter partes review of claims 1-30 of the ’290 Patent.
`
`7.
`
`The Petition includes only the same grounds on which the Metrics
`
`IPR was instituted.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of like
`review proceedings, e.g., an inter partes review (“IPR”) may be joined with
`another inter partes review. 37 C.F.R. § 42.122(a). The statutory provision
`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c), which
`
`reads as follows:
`
`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.
`
`
`
`3
`
`
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`
`
`
`of substantive and procedural issues on the proceedings, as well as other
`
`considerations, while being “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 Dell, Inc. v. Network-1 Security Solutions,
`Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board should
`
`consider “the policy preference for joining a party that does not present new issues
`that might complicate or delay an existing proceeding.” Id. at 10. Under this
`
`framework, joinder of the present Petition with the Metrics IPR is appropriate.
`
`
`
`“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.” Id. at 4. Each of these is addressed fully below.
`A.
`
`Joinder will not impact the Board’s ability to complete the review
`in a timely manner
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R.
`§ 42.100(c) provide that inter partes review proceedings should be completed and
`
`the Board’s final decision issued within one year of institution of the review. In
`
`
`
`4
`
`
`
`
`this case, joinder will not affect the Board’s ability to issue the decision within this
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`required one-year timeframe because the Petition filed by Innopharma contains the
`
`identical grounds on which
`the Metrics IPR was
`instituted. Indeed,
`in
`circumstances such as these, the PTO anticipated that joinder would be granted as
`a matter of right. 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.”) (emphasis added).
`
`In addition, Innopharma respectfully proposes procedures to simplify any
`
`further briefing and discovery, which will minimize any potential impact on the
`
`schedule or the volume of materials to be submitted to the Board. Given that all of
`
`the petitioners—Innopharma and Metrics—will be addressing the identical
`
`grounds for challenging the claims at issue, the Board may adopt procedures
`similar to those adopted in Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385 and Motorola Mobility LLC v. SoftView LLC, IPR2013- 00256. In
`
`those cases, the Board ordered the petitioners to file consolidated filings, for which
`
`the first petitioner was responsible, and allowed the new petitioner to file seven
`
`additional pages with corresponding additional responsive pages allowed to the
`
`Patent Owner. IPR2013-00385, Paper 17 at 8; IPR2013-00256, Paper 10 at 8-9.
`
`
`
`5
`
`
`
`
`This procedure would minimize any complication or delay caused by joinder, as
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`the Board recognized in those cases. As in Cases IPR2013-00385 and IPR2013-
`
`00256, the petitioners in this case can work together to manage the questioning at
`
`depositions and presentations at the hearing to avoid redundancy. IPR2013-00385,
`
`Paper 17 at 9; IPR2013-00256, Paper 10 at 9-10. Additionally, while Innopharma
`
`and Metrics have relied upon testimony from separate experts in their respective
`
`petitions, the conclusions and underlying reasoning of the experts are congruent,
`
`and therefore present no additional burden on the part of the Patent Owners to
`
`address.
`B.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies
`Innopharma would not be time barred from filing the present Petition
`
`without a corresponding motion for joinder. However, determining the same
`
`validity questions concerning the ’290 patent in separate concurrent proceedings
`
`would duplicate efforts, and create a risk of inconsistent results and piecemeal
`review. Proceeding with a consolidated inter partes review would avoid
`
`inefficiency and potential inconsistency and would result in a final written decision
`
`without any delay.
`C.
`Joinder will not prejudice Senju or Metrics
`Permitting joinder will not prejudice Senju or Metrics. As noted above,
`
`InnoPharma raises no issues that are not already before the Board, such that joinder
`
`
`
`6
`
`
`
`
`would not affect the timing of the Metrics IPR or the content of Senju’s Patent
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`Owner response due on May 19, 2015. Moreover, joinder will not affect the
`
`timing of the Metrics IPR, and any extension to the schedule that may be required
`
`is permitted by law and the applicable rules. 35 U.S.C. § 316(a)(1); 37 C.F.R.
`
`§ 42.100(c). In fact, joinder is likely more convenient and efficient for Senju by
`
`providing a single trial on the ’290 patent. By allowing all grounds of invalidity to
`
`be addressed in a single proceeding, the interests of all parties and the Board will
`
`be well served.
`IV. CONCLUSION
`For the foregoing reasons, InnoPharma respectfully requests that its Petition
`for Inter Partes Review of U.S. Patent No. 8,669,290 be granted and that the
`proceedings be joined with Metrics, Inc., Mayne Pharma, and Johnson Matthey,
`Inc. v. Senju Pharmaceutical Co., Ltd., Bausch & Lomb, Inc., and Bausch & Lomb
`Pharma Holdings Corp., Case IPR2014-01043. Joinder will ensure a just, speedy
`
`and inexpensive resolution in both proceedings.
`
`
`
`
`
`
`
`7
`
`
`
`The Patent Trial and Appeal Board is hereby authorized to charge any
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`
`
`additional fees associated with this filing to Deposit Account No. 160605
`
`(Customer ID No. 00826).
`
`
`
`Date: March 19, 2015
`
`
`
`
`
`
`
`
`
`
`
`RESPECTFULLY SUBMITTED,
`
`ALSTON & BIRD LLP
`
`
`/Jitendra Malik/
`
`Jitendra Malik (Reg. No. 55823)
`4721Emperor Boulevard, Suite 400
`Durham, North Carolina 27703
`Telephone: 919-862-2200
`Fax: 919-862-2260
`Jitty.Malik@alston.com
`
`Lead Counsel for Petitioner
`InnoPharma Licensing Inc., InnoPharma
`Licensing LLC, InnoPharma Inc.,
`InnoPharma LLC, Mylan
`Pharmaceuticals Inc., and Mylan Inc.
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 19th day
`
`of March 2015, a complete copy of the foregoing “MOTION FOR JOINDER
`
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)” and all
`
`supporting exhibits were served were served via UPS® to the Patent Owner by
`
`serving the correspondence address of record for the ’290 Patent:
`
`WENDEROTH, LIND & PONACK, L.L.P.
`1030 15th Street, N.W.,
`Suite 400 East
`Washington DC 20005-1503
`
`
`
`Courtesy copies of the foregoing were also served via UPS® on counsel
`of record for the Petitioner and Patent Owner in Metrics, Inc. v. Senju
`Pharmaceutical Co., Ltd., IPR2014-01043 as follows:
`Senju Pharmaceutical Co., Ltd., et al.
`M. Andrew Holtman
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington DC 20001-4413
`
`Jonathan R. Stroud
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington DC 20001-4413
`
`Metrics, Inc., et al.
`Patrick D. McPherson
`Duane Morris LLP
`505 9th Street, N.W., Suite 1000
`Washington DC 20004-2166
`
`
`
`9
`
`
`
`
`
`Vincent L. Capuano
`Duane Morris LLP
`100 High Street, Suite 2400
`Boston, MA 02110
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2014-01043
`
`Respectfully submitted,
`
`Alston & Bird LLP
`
`By: /Jitendra Malik/
`
`Jitendra Malik, Ph.D.
`Reg. No. 55823
`Alston & Bird LLP
`4721 Emperor Blvd., Suite 400
`Durham, NC 27703-8580
`jitty.malik@alston.com
`
`Bryan Skelton, Ph.D.
`Reg. No. 50893
`Alston & Bird LLP
`4721 Emperor Blvd., Suite 400
`Durham, NC 27703-8580
`bryan.skelton@alston.com
`
`Lance Soderstrom
`Reg. No. 65405
`Alston & Bird LLP
`90 Park Avenue
`15th Floor
`New York, NY 10016-1387
`lance.soderstrom@alston.com
`
`Attorneys for Petitioners InnoPharma
`Licensing, Inc., InnoPharma Licensing LLC,
`InnoPharma Inc., InnoPharma LLC, Mylan
`Pharmaceuticals Inc., and Mylan Inc.
`
`
`
`10
`
`
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