IPR2015-001624
`Opposition to Joinder Motion
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________
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`SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.,
`Petitioners
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`v.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners
`____________________________________
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`Case IPR2015-01624
`Patent 6,331,415
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`____________________________________
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`PETITIONERS' OPPOSITION TO MOTION FOR JOINDER FILED BY
`MYLAN PHARMACEUTICALS INC. IN IPR2016-00710
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`Opposition to Joinder Motion
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________
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`SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.,
`Petitioners
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`v.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners
`____________________________________
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`Case IPR2015-01624
`Patent 6,331,415
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`____________________________________
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`PETITIONERS' OPPOSITION TO MOTION FOR JOINDER FILED BY
`MYLAN PHARMACEUTICALS INC. IN IPR2016-00710
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`AMECURRENT 720181653.1
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`IPR2015-001624
`Opposition to Joinder Motion
`Petitioners Sanofi-Aventis U.S. LLC and Regeneron Pharmaceuticals, Inc.
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`submit this opposition to the motion for joinder filed by Mylan Pharmaceuticals
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`Inc. in IPR2016-00710 (the "Mylan IPR," Paper No. 3). Mylan's motion requests
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`joinder of the Mylan IPR with the instant inter partes review filed by Sanofi and
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`Regeneron, IPR2015-01624 (the "Sanofi IPR"). Both the Mylan IPR and the
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`Sanofi IPR relate to the same patent, U.S. Patent No. 6,331,415, which is owned by
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`Genentech, Inc. and City of Hope ("Patent Owners"). Sanofi and Regeneron
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`understand that Patent Owners intend to oppose Mylan's joinder motion. Because
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`joinder would also cause prejudice to Sanofi and Regeneron and to their ability to
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`prosecute or settle the Sanofi IPR as they see fit without interference from Mylan
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`or having to seek Mylan's cooperation on so-called "consolidated filings and
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`discovery," Sanofi and Regeneron respectfully request that the Board deny the
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`motion.
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`In its motion, Mylan informs the Board that it will "agree to incorporate its
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`filings with those of Sanofi and Regeneron into a consolidated filing in the Sanofi
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`IPR…. Sanofi, Regeneron, and Mylan will be jointly responsible for the
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`consolidated filings." (Motion for Joinder, at 6.) Moreover, Mylan states that
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`"[c]onsolidated discovery is also appropriate given that Mylan, Sanofi, and
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`Regeneron are using the same expert declaration in the two proceedings. Mylan,
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`Sanofi, and Regeneron will designate an attorney to conduct the cross-examination
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`IPR2015-001624
`Opposition to Joinder Motion
`of any given witness produced by Genentech and City of Hope, and the redirect of
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`any given witness produced by Mylan, Sanofi, and Regeneron…." (Id. at 6-7.)
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`Sanofi and Regeneron oppose Mylan's motion because joinder on these
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`terms would prejudice Sanofi and Regeneron by unilaterally requiring them to
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`cooperate with Mylan—a cooperation that Mylan presumes in its motion without
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`having ever received the concurrence of Sanofi and Regeneron. Sanofi and
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`Regeneron should not be forced to accommodate the interests of a third party in
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`determining the prosecution strategy of their own inter partes review and the
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`potential for settlement. However, Mylan's "conditions" for joining the Sanofi IPR
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`require exactly that: Mylan has proposed "consolidated" (not unilateral) filings,
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`which would require that Sanofi, Regeneron and Mylan be "jointly responsible" for
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`any filings. Similarly, Mylan inserts itself without agreement from Sanofi and
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`Regeneron into decision making regarding discovery: Mylan, Sanofi, and
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`Regeneron "will designate an attorney to conduct the cross-examination of any
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`given witness produced by Genentech and City of Hope, and the redirect of any
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`given witness produced by Mylan, Sanofi, and Regeneron…."
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`But Sanofi and Regeneron alone will determine the content of their
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`remaining filings in the Sanofi IPR. Likewise, Sanofi and Regeneron will choose
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`who conducts the cross-examination of the witnesses offered by Patent Owners in
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`the Sanofi IPR. And Sanofi and Regeneron—not Mylan—will designate the
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`IPR2015-001624
`Opposition to Joinder Motion
`attorney who will take the redirect testimony of their own expert witness (Dr.
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`Jefferson Foote). To be clear, Sanofi and Regeneron will not cede to Mylan any
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`control over the conduct or strategy of the Sanofi IPR, Mylan's stated conditions
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`for joinder notwithstanding. Under similar facts, the Board has denied a second-
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`filer's joinder motion premised on assumed (but not actual) consent from the
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`original petitioner on cooperative filings and discovery. See Teva Pharmaceuticals
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`USA Inc. v. ViiV Healthcare Co., IPR2015-00550, Paper No. 11, at 5-6; Samsung
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`Electronics Co. v. Arendi S.A.R.L., IPR2014-01142, Paper No. 11, at 4-5.
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`Finally, consideration of joinder will necessarily slow the proceedings in the
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`Sanofi IPR as the Board assesses Mylan's request for joinder and the oppositions to
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`it. The Sanofi IPR is now in the Patent Owners' discovery period, with the
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`deposition of Dr. Foote already scheduled for April 21, 2016—before Mylan's reply
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`papers would be due and before the Board will likely rule on the joinder motion.
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`For these reasons, Sanofi and Regeneron request that the Board deny Mylan's
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`motion for joinder.
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`Respectfully submitted,
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`Date: April 4, 2016
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`Richard J. McCormick
`Reg. No. 55,902
`Lisa M. Ferri
`Admitted Pro hac vice
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`IPR2015-001624
`Opposition to Joinder Motion
`Brian W. Nolan
`Reg. No. 45,821
`MAYER BROWN LLP
`1221 Avenue of the Americas
`New York, NY 10020-1001
`Telephone: (212) 506-2382
`Fax: (212) 849 5682
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`Counsel for Petitioners Sanofi-Aventis
`U.S. LLC and Regeneron
`Pharmaceuticals, Inc.
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`IPR2015-001624
`Opposition to Joinder Motion
`CERTIFICATE OF SERVICE
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` I
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` hereby certify that, on April 4, 2016, I caused a true and correct copy
`of the foregoing Petitioners' Opposition to Motion for Joinder Filed by
`Mylan Pharmaceuticals Inc. in IPR2016-00710 to be served via electronic
`mail on the following:
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`Attorneys of Record for Mylan
`Pharmaceuticals Inc.
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`Deanne M. Mazzochi
`dmazzochi@rmmslegal.com
` Paul J. Molino
`paul@rmmslegal.com
`William A. Rakoczy
`wrakoczy@rmmslegal.com
`Eric R. Hunt
`ehunt@rmmslegal.com
`Rakoczy Molino Mazzochi Siwik LLP
`6 West Hubbard Street, Suite 500
`Chicago, IL 60654
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`Attorneys of Record for Patent Owners
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`David L. Cavanaugh
`David.Cavanaugh@wilmerhale.com
`Wilmer Cutler Pickering Hale and Dorr
`LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`Jeffrey P. Kushan
`jkushan@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`Adam R. Brausa
`ABrausa@durietangri.com
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
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`Richard J. McCormick, (No. 55,902)
`rmccormick@mayerbrown.com
`MAYER BROWN LLP
`1221 Avenue of the Americas
`New York, NY 10020-1001
`Telephone: (212) 506-2382
`Fax: (212) 849 5682
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