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` Paper No. __
`Filed: May 26, 2015
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`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
`_____________________________
`
`IPR2015-00902
`Patent 8,669,290
`____________________________________________
`
`OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`
`
`I.
`
`II.
`
` IPR2015-00902
`Patent 8,669,290
`
`TABLE OF CONTENTS
`
`PRELIMINARY STATEMENT OF RELIEF REQUESTED ........................................... 1
`
`BACKGROUND ................................................................................................................ 3
`
`III.
`
`THE BOARD SHOULD DENY JOINDER. ...................................................................... 4
`
`A.
`
`B.
`
`1.
`
`2.
`
`Petitioners’ bear the burden of establishing that joinder is appropriate. ................. 4
`
`Joinder is not appropriate here, because it would affect the Board’s ability to
`timely complete its review and would unduly prejudice both Metrics and
`Senju. ...................................................................................................................... 5
`
`Joinder without extension will affect the Board’s ability to timely complete the
`review. ..................................................................................................................... 5
`
`Granting joinder will unduly prejudice both Metrics and Senju, whereas
`Petitioners would not be prejudiced if joinder is denied. ...................................... 11
`
`ALTERNATIVELY, THE BOARD SHOULD ADJUST THE SCHEDULE OF ANY
`JOINED PROCEEDINGS AND SHOULD REJECT PETITIONERS’ PROPOSED
`SCHEDULE. ..................................................................................................................... 12
`
`CONCLUSION ................................................................................................................. 15
`
`RESPONSE TO STATEMENT OF MATERIAL FACTS .............................................. 15
`
`
`
`IV.
`
`V.
`
`VI.
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`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2015-00902
`Patent 8,669,290
`
`
` Page(s)
`
`Cases
`Enzymotech Ltd. v. Neptune Techs.,
`IPR2014-00556, Paper 19 (July 9, 2014) ........................................................... 10
`
`Metrics, Inc. v. Senju Pharm. Co., Ltd.,
`IPR2014-01043, Papers 1, 19 ............................................................................... 1
`
`Metrics, Inc. v. Senju Pharmaceutical Co., Ltd.,
`IPR2014-01041, Paper 19 (Feb. 19, 2015) ........................................................... 8
`
`Microsoft Corp. v. ProxyConn, Inc., IPR2012-00026 &
`IPR2013-00109, (inst. Paper 17, Dec. 21, 2012, & Paper 14, Feb.
`25, 2013) (decision Paper 73 & 16, Feb. 19, 2014). ..................................... 13, 14
`
`NetApp, Inc. v. PersonalWeb Techs., LLC,
`IPR2013-00319, Paper 18 (July 22, 2013) ................................................. 5, 8, 11
`
`Samsung Electronics Co., Ltd. & LG Electronics, Inc. v. Black Hills,
`LLC,IPR2014-00737, -00717, -00735, -00709, -00711, -00723, and
`-00740 joined by IPR2015-00334 to -00340 (Jan. 28, 2015) ......................... 9, 10
`
`SAP Am. Inc. v. Clouding IP, LLC,
`IPR2014-00306, Paper 13 (May 19, 2014) ......................................................... 10
`
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00386, Paper 16 (July 29, 2013) ................................................. 4, 9, 11
`
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00907, Paper 10 (Dec. 1, 2014)........................................................... 11
`
`Statutes
`
`35 U.S.C. § 315(c) ................................................................................................. 1, 4
`
`35 U.S.C. § 316(a)(11) ..................................................................................... 1, 3, 13
`
`ii
`
`
`
`Hatch–Waxman Drug Price Competition and Patent Term Restoration
`Act, Pub. L. No. 98-417, 98 Stat. 1585 (1984) ..................................................... 3
`
`IPR2015-00902
`Patent 8,669,290
`
`
`Regulations
`
`37 C.F.R. § 42.20(c) ................................................................................................... 4
`
`37 C.F.R. §§ 42.22 ..................................................................................................... 1
`
`37 C.F.R. § 42.100(c) ............................................................................................... 13
`
`37 C.F.R. § 42.122 ................................................................................................. 1, 4
`
`Other Authorities
`
`154 CONG. REC. S9987 (daily ed. Sept. 27, 2008) ................................................... 13
`
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) ....................................................... 4
`
`
`
`
`
`
`iii
`
`
`
`
`I.
`
`PRELIMINARY STATEMENT OF RELIEF REQUESTED
`
`Senju Pharmaceutical Co., Ltd., Bausch & Lomb, Inc., and Bausch & Lomb
`
`IPR2015-00902
`Patent 8,669,290
`
`Pharma Holdings Corp. (collectively “Senju” or “Patent Owner”) respectfully
`
`submit this Opposition to the Motion for Joinder filed with the petition for inter
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`partes review (“IPR”) of U.S. Patent No. 8,669,290 (“the ’290 Patent”) under 35
`
`U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) by InnoPharma Licensing,
`
`Inc., InnoPharma Licensing LLC, InnoPharma Inc., and InnoPharma LLC and
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`Mylan Pharmaceuticals Inc., and Mylan Inc. (collectively “Petitioners”). As
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`discussed below, the Board should deny Petitioners’ motion because joinder will
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`incorporate new factual and legal arguments that will require a burdensome
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`amount of additional discovery and expert testimony and will unduly prejudice
`
`Senju and unduly burden the Board. In the alternative, should the Board grant
`
`joinder, the Board should exercise its discretion under 35 U.S.C. § 316(a)(11) and
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`extend the schedule in the joined proceedings to account for the additional
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`complexity in these proceedings.
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`Metrics, Inc. (“Metrics”) initiated IPR2014-01043 challenging the ’290
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`patent (“the Metrics IPR”) by petitioning the Board on June 26, 2014; the Board
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`instituted the Metrics IPR on February 19, 2015. Metrics, Inc. v. Senju Pharm.
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`Co., Ltd., IPR2014-01043, Papers 1, 19. On the last day under the Board’s rules,
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`and despite that concurrent Hatch-Waxman litigation on the ’290 patent had long
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`
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`1
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`
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`been proceeding in district court, Petitioners initiated this IPR challenging the ’290
`
`IPR2015-00902
`Patent 8,669,290
`
`patent (“the InnoPharma IPR”) and requested joinder with the Metrics IPR.
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`Although Petitioners argue that the InnoPharma IPR raises “identical”
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`grounds of unpatentability, the InnoPharma IPR in fact presents new factual and
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`legal arguments, including different arguments about the references and different
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`claim construction positions. Indeed, Petitioners’ counsel admitted that the
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`InnoPharma IPR seeks “supplementations” to broaden the Metrics IPR. (EX2001
`
`at 46.) The InnoPharma IPR also includes a different expert declaration by a
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`different declarant with different opinions that Petitioners’ counsel admitted are
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`“independent” from those of Metrics’ declarant. (Id. at 47.) Petitioners also
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`seek additional participation in depositions and separate oral hearing argument.
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`Short of extending the schedule appropriately, joinder would not efficiently
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`resolve patent validity, will unduly prejudice Senju and Metrics, and will unduly
`
`burden the Board. Unlike many parties who have sought to prevent the undue
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`procedural and substantive prejudice that may be associated with joinder by
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`agreeing to schedule extensions and procedural safeguards, Petitioners do not agree
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`to subordinate themselves, refusing to allow Metrics’ counsel to lead the joined
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`proceedings, even though that is in line with common Board practice. And
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`Metrics does not agree to extend the schedule of the Metrics IPR, which is
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`scheduled for oral hearing on November 12, 2015. Joinder without an extension
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`
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`2
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`
`
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`of time would seriously alter the procedure, substance, and scope of these
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`IPR2015-00902
`Patent 8,669,290
`
`proceedings. Accordingly, and as discussed below, Senju requests that the Board
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`deny joinder or, in the alternative, extend the schedule of both IPRs, as
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`contemplated by 35 U.S.C. § 316(a)(11).
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`II. BACKGROUND
`Senju’s ’290 patent discloses and claims novel aqueous liquid preparations
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`of bromfenac, the active ingredient in the highly successful drug Prolensa, which
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`treats pain and inflammation in patients who have undergone cataract surgery.
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`On September 19, 2014, InnoPharma Licensing, Inc. sent Senju a Paragraph IV
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`Notice Letter notifying Senju that InnoPharma had filed an Abbreviated New Drug
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`Application to market a generic version of Prolensa and alleging that the ’290
`
`patent was invalid as obvious. (EX2006 at 127-148.) As contemplated by the
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`Hatch–Waxman Drug Price Competition and Patent Term Restoration Act, Pub. L.
`
`No. 98-417, 98 Stat. 1585 (1984), Senju sued InnoPharma and four other generic
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`drug manufacturers who had sent Paragraph IV Notice Letters for infringement of
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`the ’290 patent. (Paper 5.) Those proceedings cannot be stayed and are set for
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`trial on March 7, 2016. (EX2011; EX2012.)
`
`
`
`3
`
`
`
`
`III. THE BOARD SHOULD DENY JOINDER.
`A.
`Petitioners’ bear the burden of establishing that joinder is
`appropriate.
`
`IPR2015-00902
`Patent 8,669,290
`
`The America Invents Act permits the Board in its discretion to join multiple
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`IPR proceedings only in certain circumstances. 35 U.S.C. § 315(c); 37 C.F.R.
`
`§ 42.122. A party must request joinder by motion within a month of institution,
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`and the movant bears the burden of establishing that joinder is appropriate. See
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`id.; 37 C.F.R. § 42.20(c). A Motion for Joinder must:
`
`(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 Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00386, Paper 16
`
`at 4 (July 29, 2013).
`
`The Board determines each joinder request individually, in light of the
`
`equities, the facts, and the procedural and substantive issues, including, for
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`example, new claim construction positions. See 157 CONG. REC. S1376 (daily ed.
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`Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether to allow joinder,
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`the Office may consider factors, like “claim-construction rulings”). A petitioner
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`seeking joinder has the burden to “explain adequately the impact of those new
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`
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`4
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`
`
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`substantive issues on the patent owner, other petitioners, and the trial schedule of
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`IPR2015-00902
`Patent 8,669,290
`
`[the earlier IPR].” NetApp, Inc. v. PersonalWeb Techs., LLC, IPR2013-00319,
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`Paper 18 at 6 (July 22, 2013). As discussed below, Petitioners here have not met
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`this burden.
`
`B.
`
`Joinder is not appropriate here, because it would affect the
`Board’s ability to timely complete its review and would unduly
`prejudice both Metrics and Senju.
`1.
`
`Joinder without extension will affect the Board’s ability to
`timely complete the review.
`
`a)
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`Substance
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`The InnoPharma IPR presents significant new substantive issues not raised
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`in the Metrics IPR and seeks to broaden that IPR with new factual and legal
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`arguments, new claim construction positions, and new evidence, including a
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`separate declaration. Petitioners have failed to carry their burden of adequately
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`explaining the impact of these new substantive issues on the trial schedule.
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`Indeed, these significant changes and additions will affect the Board’s ability to
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`timely complete its review, thus warranting denial of joinder.
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`Petitioners have repeatedly argued to the Board that the InnoPharma IPR is
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`allegedly “identical” to the Metrics IPR. EX2001 (transcript of April 15, 2015
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`Board teleconference) at 10 (“The positions, the invalidity bases are identical”);
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`IPR2015-00902, Paper 3, at 5 (“Motion for Joinder”) (“the Petition filed by
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`InnoPharma contains the identical grounds on which the Metrics IPR was
`5
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`
`
`
`
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`instituted.” (emphasis added)). Petitioners now candidly concede, as they must,
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`IPR2015-00902
`Patent 8,669,290
`
`that the InnoPharma IPR is not based on identical grounds, combinations, or
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`reasoning.1 As discussed below and as is plainly evident from a comparison of
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`the InnoPharma IPR with the Metrics IPR, the InnoPharma IPR presents new
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`substantive positions, new claim construction arguments, new evidence, and new
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`and different declarants and exhibits.
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`The InnoPharma IPR indisputably presents new evidence, relying on a
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`different declarant and new declaration that differ from those of the Metrics IPR.
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`This new declarant, Dr. Laskar, acknowledges that he presents new evidence and
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`opinions in his declaration, which Petitioners concede is an “independent
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`analysis.” (EX2001 at 47.) Indeed, Dr. Laskar includes new opinions based on
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`the Board’s institution decision in the Metrics IPR, stating that he read the
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`institution decision and formed opinions based on it. (EX1003 at ¶¶ 3, 10.) Dr.
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`
`
` 1
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` After Senju highlighted some of the substantive differences to the Board,
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`Petitioners backtracked: “But, you know, are they identical word for word? No,
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`Your Honor. That is correct. They are not identical word for word, but in
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`substance we believe that they are similar, if not identical, in most respects. But
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`yes, there are differences.” (EX2001 at 31 (emphasis added).)
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`
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`
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`6
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`
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`Laskar further states that he has adopted “many”; i.e., not all, “of [Dr. Kompella’s]
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`IPR2015-00902
`Patent 8,669,290
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`opinions and characterizations as my own.” Id. at ¶ 3. For example, Dr. Laskar
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`provides new and different opinions discussing the chemical structures of suprofen
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`and flurbiprofen. (EX1003 at ¶ 28.) Dr. Laskar further provides a new
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`discussion of tyloxapol based on U.S. Patent No. 6,274,609 to Yasueda (EX1012)
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`(see, e.g., EX1003 at ¶ 41 n.10 (adding “Tyloxapol also appears to prevent possible
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`turbidity due to interaction of the anionic pranlukast with the cationic BAC at the
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`pH of the formulation.”)).
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`Petitioners also add new positions and substantive arguments in the
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`InnoPharma IPR. For example, Petitioners introduce for the first time an
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`inherency argument concerning alleged “latent properties,” relying on new case
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`law. Compare IPR2015-00902, Paper 2 at 40 with IPR2014-01043, Paper 9;
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`(citing for the first time In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
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`1991) and Santarus v. Par Pharm, 694 F.3d 1344, 1354 (Fed. Cir. 2012)).
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`Petitioners also make different arguments about central references on which they
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`rely,
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`including Ogawa, Sallmann, Yasueda, Desai and Hara.
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` Compare
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`IPR2015-00902, Paper 2 at 24, 28, 37, 42, 44-47 with IPR2014-01043, Paper 9.
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`Petitioners also filed different exhibits, compare, e.g., EX1002 (different
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`translator); EX1003 (different declarant and statements), and removed exhibits.
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`
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`7
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`
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`IPR2015-00903, EX1015 (omitted); IPR2015-00902, EX1015, EX1016, EX1024
`
`IPR2015-00902
`Patent 8,669,290
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`(omitted).
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`Petitioners also have adopted different claim construction positions. In
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`contrast to Metrics’ IPR petition, which raises claim construction issues concerning
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`terms such as “about” and “ophthalmic,” Petitioners here argue that no claim term
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`requires express construction. IPR2015-00903, Paper 2, at 13–16 (deleting 1.5
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`pages argument); (“The Board has recently determined that “[n]o claim term [in
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`the challenged claims] requires express construction” to render a decision to
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`institute review. Metrics, Inc. v. Senju Pharmaceutical Co., Ltd., IPR2014-01041
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`(Paper 19, pg. 10).4”). That Petitioners take different claim construction positions
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`than does Metrics plainly belies Petitioners’ argument that the InnoPharma IPR is
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`somehow “identical” to the Metrics IPR.
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`In short, the InnoPharma IPR’s new factual and legal arguments, new claim
`
`construction positions, and new evidence will impact the Board’s ability to timely
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`complete its review, and Petitioners have not carried their burden to explain
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`otherwise. This alone dictates denial of Petitioners’ motion. See, e.g., NetApp,
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`IPR2013-00319, Paper 18 at 5-6.
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`b)
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`Procedure
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`Nor have Petitioners addressed in their motion for joinder the procedural
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`issues associated with their request. Petitioners could have retained the same
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`
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`8
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`
`
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`declarant and filed an identical declaration as Metrics, as is often done. Cf.
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`IPR2015-00902
`Patent 8,669,290
`
`Samsung Electronics Co., Ltd. & LG Electronics, Inc. v. Black Hills, LLC,
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`IPR2014-00737, -00717, -00735, -00709, -00711, -00723, and -00740 joined by
`
`IPR2015-00334 to -00340 (Jan. 28, 2015). Instead, Petitioners hired a separate
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`declarant, necessitating additional deposition time, and further seek to separately
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`depose any Senju declarant, thus increasing the amount of discovery that would be
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`required if joinder were permitted. See, e.g., Sony, IPR2013-00386, Paper 16, at
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`7 (denied) (“Petitioners also include with their Petition a declaration from [a new
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`expert declarant], which likely would increase the amount of discovery (e.g.,
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`depositions) that would be required if joinder is permitted.”) (citation omitted).
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`Moreover, Senju expects to submit at least four substantive declarations with
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`its Patent Owner’s Response. Petitioners and Metrics likely will respond to these
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`declarations with additional declarations of their own from additional separate
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`declarants.
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` Because Petitioners and Metrics are already using different
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`declarants, it is reasonable to expect that they will similarly use different
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`declarants, leading to, potentially, between ten to fourteen depositions. The
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`procedural complexity of an already substantively complex case will ratchet up
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`considerably if joinder occurs within the confines of the current schedule, unduly
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`prejudicing Senju and taxing the Board’s resources.
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`9
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`
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`Despite this procedural complexity, Petitioners have offered no meaningful
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`IPR2015-00902
`Patent 8,669,290
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`
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`concessions to make joinder work within the current schedule. In the past, other
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`parties seeking joinder have offered to:
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`1) Refrain from filing substantive responses in most cases;
`2) Only file “consolidated” responses, controlled and by the first
`petitioner, where warranted (e.g., an issue asserted by the patent
`owner is unique to the joining party, such as real-party-in-interest);
`3) Refrain from requesting or reserving any additional deposition
`time;
`4) Refrain from requesting or reserving any additional oral hearing
`time; and
`5) Assume a second-chair role as long as the first party remains in the
`proceeding.
`These limitations have previously been agreed upon and imposed where joinder
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`motions have been granted. See, e.g., Samsung, IPR2014-00740, Paper 17,
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`IPR2015-00340, Paper 9 (and six other related petitions) (all limitations noted
`
`above); Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9,
`
`2014) (agreeing to procedural concessions, such as “consolidated” responses); SAP
`
`Am. Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same,
`
`agreeing not to rely on new declarant and to adopt first petitioner’s declarant).
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`Here, by contrast, Petitioners have raised new issues of patentability,
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`retained a new declarant, submitted a declaration that is an “independent” analysis,
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`
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`10
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`
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`and relied on new evidence. Yet Petitioners have not agreed to consolidated
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`IPR2015-00902
`Patent 8,669,290
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`discovery provisions. For these additional reasons, the Board should deny
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`Petitioners’ joinder motion. See, e.g., Sony, IPR2013-00386, Paper 16, at 7.
`
`2. Granting joinder will unduly prejudice both Metrics and
`Senju, whereas Petitioners would not be prejudiced if
`joinder is denied.
`
`Granting joinder will prejudice Metrics and Senju. Petitioners seek to
`
`present new unpatentability arguments and substantive issues not before the Board
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`in the Metrics IPR, and Petitioners seek to respond to the Board’s institution
`
`decision in the Metrics IPR. IPR2014-01043, Paper 19. See also NetApp,
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`IPR2013-000319, Paper 18 (denying joinder) (different declarants) (“Contrary to
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`NetApp’s contentions, NetApp’s petition clearly presents new unpatentability
`
`analysis and substantive issues beyond those in [the instituted IPR].”). These new
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`arguments “will require significant additional analysis and expense on behalf of
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`patent owner” and Metrics, thereby unduly prejudicing Senju and Metrics. Id. at
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`5. That joinder would unduly prejudice both Senju and Metrics favors denial of
`
`Petitioners’ joinder motion. See, e.g., id.; see also Standard Innovation Corp. v.
`
`Lelo, Inc., IPR2014-00907, Paper 10 (Dec. 1, 2014) (denying joinder) (denying
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`IPR) (“Such a petition is sometimes referred to as a ‘second bite at the apple.’
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`Neither the Petition nor the Motion for Joinder presents cogent argument or
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`evidence to explain why the grounds of unpatentability asserted in the Petition
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`
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`11
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`
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`could not have been asserted [in the instituted IPR]. … In sum, joinder could
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`IPR2015-00902
`Patent 8,669,290
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`significantly expand [that IPR].”).
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`In contrast, Petitioners will not be prejudiced if joinder is denied.
`
`Petitioners are also litigating invalidity in the district court concurrently with this
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`proceeding, with a trial date set for March 7, 2016. Petitioners sent a Paragraph
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`IV Notice Letter to Senju regarding the ’290 patent in September of 2014,
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`provoking district court litigation regarding infringement of the ’290 patent, but
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`waited until now to bring a challenge at the Board. Petitioners thus cannot
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`credibly contend that denial of joinder would prejudice them in any way, and they
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`have made no such argument in their motion. Moreover, as Petitioners concede
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`and as the Board notes, there is no § 315(b) bar that would dictate denial of the
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`InnoPharma IPR should joinder be denied. (EX2001 at 8.)
`
`IV. ALTERNATIVELY, THE BOARD SHOULD ADJUST THE
`SCHEDULE OF ANY JOINED PROCEEDINGS AND SHOULD
`REJECT PETITIONERS’ PROPOSED SCHEDULE.
`
`
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`Should the Board grant joinder, Senju requests that the Board adjust the
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`schedule of any joined proceedings to account for the additional complexity of
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`these proceedings. In cases of joinder, the Board may adjust the schedule as
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`needed. The statute makes an exception to the one-year deadline for IPRs by a
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`period for “not more than 6 months” for “good cause shown,” and indicates
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`
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`12
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`
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`separately that the Board “may adjust the time periods in this paragraph in the case
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`IPR2015-00902
`Patent 8,669,290
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`of joinder under section 315(c).” 35 U.S.C. § 316(a)(11). The regulations
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`support the Board’s authority to extend the schedule and deadline in cases of
`
`joinder even without good cause shown. 37 C.F.R. § 42.100(c) indicates “[a]n
`
`inter partes review proceeding shall be administered such that pendency before the
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`Board after institution is normally no more than one year. The time can be
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`extended by up to six months for good cause by the Chief Administrative Patent
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`Judge, or adjusted by the Board in the case of joinder.” Id. (emphasis added);
`
`see 154 CONG. REC. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl)
`
`(discussing extensions for “second-window” joinder). Here, good cause exists to
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`extend the deadlines of any joined proceeding because, as discussed above,
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`Petitioners have introduced new factual and legal arguments including new claim
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`construction positions, and are relying on a new declarant, thereby significantly
`
`increasing the complexity of these matters.
`
`Petitioners suggested that extending the deadline is “unprecedented.”
`
`(EX2001 at 34.) Petitioners are wrong. For example, in Microsoft Corp. v.
`
`ProxyConn, Inc., the Board exercised its discretion to extend the one-year deadline
`
`and schedule to accommodate joinder. In that case, the petitioner filed two IPR
`
`petitions two months apart. The Board instituted and joined both, and extended
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`the case schedule by two months from the first filing. See Microsoft Corp. v.
`
`
`
`13
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`
`
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`ProxyConn, Inc., IPR2012-00026 & IPR2013-00109, (inst. Paper 17, Dec. 21,
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`IPR2015-00902
`Patent 8,669,290
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`2012, & Paper 14, Feb. 25, 2013) (decision Paper 73 & 16, Feb. 19, 2014). As
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`the Board noted, “in the case of joinder, the one-year time requirement for issuing
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`a final determination in an inter partes review may be adjusted.” Microsoft,
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`IPR2013-00109, Paper 15, at 4.
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`Here, Petitioners have filed the InnoPharma IPR nearly nine months after
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`Metrics filed its IPR petition, nearly six months after sending their Paragraph IV
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`Notice Letter to Senju, and on the last possible day to move for joinder under the
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`Board’s rules. Petitioners’ proposed schedule, however, fails to account for the
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`additional complexity that Petitioners wish to inject into these proceedings. Senju
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`accordingly proposes the following adjusted schedule, should the Board grant
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`joinder: Due Date 1: October 19, 2015; Due Date 2: December 18, 2015; Due
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`Date 3: February 17, 2016; Due Date 4: March 8, 2016; Due Date 5: March 22,
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`2016; Due Date 6: March 29, 2016; Due Date 7: April 12, 2016. These deadlines
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`would result in a Final Written Decision significantly sooner than Petitioners could
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`otherwise expect in a newly-filed IPR petition. It also places this proceeding on
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`essentially the same track with the parallel district court case, advantageously
`
`avoiding potentially inconsistent appellate decisions on the same patent. Given
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`the substantive and procedural differences, as well as the undue prejudice that
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`14
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`would result if joinder were granted, this schedule adjustment would be warranted
`
`IPR2015-00902
`Patent 8,669,290
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`if the Board grants Petitioners’ joinder motion.
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`V. CONCLUSION
`As discussed above, joinder here will affect the substance, procedure, and
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`scheduling of the Metrics IPR. Joinder also would unduly complicate the case
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`and the issues and, absent an extension of time, would unduly prejudice Senju.
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`Accordingly, Senju requests denial of IPR joinder with Metrics, Inc. v. Senju
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`Pharm. Co., Ltd., IPR2014-001043, absent extending the schedule. In the
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`alternative, should the Board grant the motion, Senju requests an extension of the
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`schedule of the joined proceedings.
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`VI. RESPONSE TO STATEMENT OF MATERIAL FACTS
`Senju admits InnoPharma’s statement of material facts nos. 1 through 6.
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`Senju denies statement no. 7.
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`Dated: May 26, 2015
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`Respectfully,
`
`
`By: /Bryan C. Diner/
`Bryan Diner, Reg. No. 32,409
`Lead Counsel for Patent Owner
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`15
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`CERTIFICATE OF SERVICE
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`IPR2015-00902
`Patent No. 8,669,290
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`I certify that I served a copy of the foregoing OPPOSITION TO MOTION
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`FOR JOINDER via email, on Tuesday, May 26, 2015 on counsel for Petitioners
`
`at:
`
`Jitendra Malik
`jitty.malik@alston.com
`
`Bryan Skelton
`bryan.skelton@alston.com
`
`Lance Soderstrom
`lance.soderstrom@alston.com
`
`
`Dated: May 26, 2015
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`Respectfully,
`
`
`
`
`
` /Ashley F. Cheung/
`Ashley F. Cheung
` Case Manager
` Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
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`16
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