`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`_____________________
`
`Case IPR: IPR2015-01818
`_____________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`WOCKHARDT BIO AG
`Petitioner
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`Patent Owner
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`TABLE OF CONTENTS
`
`I.
`Statement of precise relief requested ............................................................... 1
`Governing law, rules and precedent ................................................................ 2
`II.
`Statement of material facts .............................................................................. 4
`III.
`IV. Argument ......................................................................................................... 5
`A. No new grounds of unpatentability are asserted in this Petition ............ 5
`B.
`Joinder is appropriate under the governing law, rules, and
`precedent ................................................................................................ 6
`Joinder will have at most a minimal impact on the trial schedule
`and costs for the existing IPR ................................................................. 8
`Procedures to simplify briefing and discovery....................................... 9
`D.
`Conclusion ..................................................................................................... 11
`
`
`V.
`
`C.
`
`ii
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`Wockhardt Bio AG (“Wockhardt”) moves for joinder of the accompanying
`
`Inter Partes Review (“IPR”) Petition filed today, Wockhardt Bio AG v. Jazz
`
`Pharms., Inc., Case No. IPR2015-01818, with Amneal Pharms., LLC, et al. v. Jazz
`
`Pharms., Inc., Case No. IPR2015-00554, for at least the following reasons: (1)
`
`joinder is appropriate under the governing law, rules, and precedent of this Board;
`
`(2) this Motion for Joinder is timely filed; (3) the two proceedings concern the
`
`same parties, same patent, and same prior art; (4) Wockhardt relies in whole on the
`
`same evidence and same declaration testimony in both proceedings; (5) joinder
`
`would neither complicate the issues nor unduly delay the existing schedule of
`
`IPR2015-00554; (6) joinder would significantly simplify briefing and discovery in
`
`the two IPRs, and will have no impact on the existing schedule; and (7) joinder
`
`will not prejudice any party. Finally, joinder here will secure a just, speedy, and
`
`inexpensive resolution in both proceedings, more so than in the absence of joinder,
`
`by avoiding having the Board preside over two separate proceedings involving
`
`identical and duplicative filings and reviews of the same issues.
`
`I.
`
`Statement of precise relief requested
`
`Wockhardt requests joinder under 35 U.S.C. § 315(c) and 37 C.F.R. §§
`
`42.22 and 42.122(b) of the concurrently-filed petition for IPR of claims 1-11 of
`
`U.S. Patent No. 7,668,730 (“the ’730 patent”) with the related and instituted IPR,
`
`Amneal Pharms., LLC, et al. v. Jazz Pharms., Inc., Case No. IPR2015-00547 (“the
`
`1
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`
`Amneal/Par IPR”).1
`
`Wockhardt notified counsel for each of Petitioners Amneal Pharmaceuticals,
`
`LLC (“Amneal”) and Par Pharmaceutical, Inc. (“Par”) and Patent Owner Jazz
`
`Pharmaceuticals, Inc. (“Jazz”) in the earlier Amneal/Par IPR of this Motion,
`
`requesting their consent for Joinder, but to date all three parties have refused
`
`consent and did not provide any reasons for their refusal.
`
`II. Governing law, rules and precedent
`
`Title 35 U.S.C. § 315(c) states:
`
`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.
`
`1 Wockhardt is concurrently filing similar motions for joinder along with
`
`five other petitions for IPR of U.S. Patent Nos. 7,765,106; 7,765,107; 7,895,059;
`
`8,457,988; and 8,589,182, which are related to the ’730 patent and for which IPR
`
`was instituted based on the same prior art presented in the Amneal/Par IPR
`
`Petition. As such, granting joinder will simplify the issues across multiple
`
`proceedings.
`
`2
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`Title 37 C.F.R. § 42.122(b) states:
`
`
`
`Joinder may be requested by a patent owner or petitioner. Any
`request for joinder must be filed, as a motion under §42.22, no
`later than one month after the institution date of any inter partes
`review for which joinder is requested. The time period set forth
`in §42.101(b) shall not apply when the petition is accompanied
`by a request for joinder.
`
`
`
`The Board has repeatedly allowed joinder of IPR proceedings when a second
`
`petition raises the same ground(s) of unpatentability as those instituted in a first
`
`proceeding. See, e.g., Mylan Pharms. Inc. v. Novartis AG, et al., IPR2015-00268,
`
`Paper 17 (PTAB Apr. 10, 2015); Apple, Inc. v. Smartflash LLC, CBM2015-00119,
`
`Paper 11 (PTAB Aug. 6, 2015); LG Elec., Inc. v. Innovative Display Techs. LLC,
`
`IPR2015-00493, Paper 10 (July 15, 2015); Cisco Sys., Inc., et al. v. Straight Path
`
`IP Grp., Inc., IPR2015-01006, Paper 12 (PTAB June 5, 2015).
`
`Indeed, there is a “policy preference for joining a party that does not present
`
`new issues that might complicate or delay an existing proceeding.” See Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 at 10 (PTAB July 29,
`
`2013) (citing 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
`
`3
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`own briefs and make its own arguments.”) (emphasis added)).
`
`
`
`That is precisely the situation here. In accordance with the Board’s
`
`governing law and rules, each of the factors supporting joinder are present in this
`
`Motion for Joinder: (1) reasons why joinder is appropriate; (2) the lack of any new
`
`grounds of unpatentability being raised in the subsequent petition; (3) what impact
`
`(if any) there will be on the trial schedule for the existing review; and (4) how
`
`briefing and/or discovery may be simplified to minimize schedule impact. Kyocera
`
`Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013); see
`
`also Samsung Elecs. Co. Ltd. v. Unifi Sci. Batteries, LLC, IPR2013-00236, Paper
`
`22 at 3 (PTAB Oct. 17, 2013).
`
`Each of these factors is addressed below.
`
`III. Statement of material facts
`
` On January 8, 2015, Amneal and Par requested IPR of claims 1-11 of
`
`the ’730 patent under two grounds of unpatentability. See IPR2015-
`
`00554, Paper 1;
`
` On July 17, 2015, Jazz sued Wockhardt Bio AG, Wockhardt Limited,
`
`and Wockhardt USA LLC for infringement of the ’730 patent and
`
`related patents in the United States District Court for the District of
`
`New Jersey;
`
` On July 28, 2015, the Board instituted the Amneal/Par IPR on one of
`
`4
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`the two requested grounds that claims 1-11 of the ’730 patent would
`
`have been obvious over the Advisory Committee Art pursuant to 35
`
`U.S.C. § 103. See id., Paper 20;
`
` The Wockhardt Petition that accompanies the present Motion for
`
`Joinder was filed within one month of the decision noted above in the
`
`Amneal/Par
`
`IPR, and
`
`includes only
`
`the same ground of
`
`unpatentability that was instituted in the Amneal/Par IPR; and
`
` The Wockhardt Petition that accompanies the present Motion for
`
`Joinder and accompanying evidence are identical to the instituted
`
`Amneal/Par IPR Petition, aside from procedural sections that, for
`
`example, identify Wockhardt, any real parties in interest, and its
`
`standing, etc.
`
`IV. Argument
`This Motion for Joinder addresses the criteria identified by the Board in
`
`Kyocera Corp., IPR2013-00004, Paper 15. Each factor is addressed below and all
`
`compel granting the instant motion.
`
`A. No new grounds of unpatentability are asserted in this Petition
`The Wockhardt Petition does not assert any new grounds of unpatentability.
`
`It challenges the same ’730 patent claims based on the same arguments, evidence,
`
`and ground of unpatentability on which the Board instituted review in the
`
`5
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`
`Amneal/Par IPR.
`
`B.
`
`Joinder is appropriate under the governing law, rules, and
`precedent
`
`The Board has authority to join a properly-filed IPR petition to an instituted
`
`IPR proceeding. See 35 U.S.C. § 315(c). Wockhardt’s Petition is properly filed
`
`under 35 U.S.C. § 311 and timely under 37 C.F.R. § 42.122(b), that is, within one
`
`month of the Board’s July 28, 2015 decision to institute the Amneal/Par IPR. See
`
`IPR2015-00554, Paper 20.
`
`Further, joinder is appropriate according to the Board’s rationale applied in
`
`previous cases. As discussed above, the Board has granted numerous requests for
`
`joinder of IPR proceedings under circumstances similar to the instant proceeding.
`
`For example, in LG Elec., the Board granted joinder of a second petition
`
`challenging the same claims on the same Grounds as that instituted in the first
`
`proceeding. See LG Elec., IPR2015-00493, Paper 10. This rationale has been
`
`applied by the Board in other cases. See, e.g., ION Geophysical, et al. v.
`
`WesternGeco LLC, IPR2015-00565, Paper 14 at 4-5 (PTAB Apr. 23, 2015)
`
`(granting joinder when both patent owner and previous petitioner opposed because
`
`it “facilitates scheduling of the joined actions and minimizes delay”); Mylan
`
`Pharms., IPR2015-00268, Paper 17; Apple, Inc., CBM2015-00119, Paper 11;
`
`Cisco Sys., IPR2015-01006, Paper 12.
`
`And
`
`the Board’s consistent reasoning
`
`is equally applicable here:
`
`6
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`Wockhardt’s Petition challenges the same claims at issue in the existing trial; relies
`
`on the same prior art as the existing trial; and relies on the same testimony from the
`
`same expert witness(es) as in the existing trial. Thus, in accordance with the
`
`Board’s previously applied rationale, joinder of these proceedings is appropriate
`
`and will “secure the just, speedy, and inexpensive resolution in every proceeding.”
`
`37 C.F.R. § 42.1(b).
`
`Further, Jazz has recently asserted the ’730 patent and related patents against
`
`Wockhardt in concurrent district court litigation, and in the same court and before
`
`the same Judge that Jazz has similar pending suits against Amneal and Par (Jazz
`
`Pharms., Inc., et al. v. Wockhardt Bio AG, et al., 2:15-cv-05619 (D.N.J. July 17,
`
`2015)). As such, allowing Wockhardt to participate in the Amneal/Par IPR will
`
`allow Wockhardt and Jazz to resolve the underlying litigation between the parties
`
`in a cost effective, expeditious manner should Amneal and Par seek to terminate
`
`their participation in the Amneal/Par IPR based on settlement or other factors.
`
`Moreover, any opposition by Jazz, Amneal, and/or Par, to the extent they
`
`file any, cannot dispute the overwhelming efficiencies that will be promoted by
`
`joinder. In fact, other than stating that they do not consent to joinder, these parties
`
`have not to date articulated any reason why joinder is not appropriate or would
`
`otherwise present any undue burden. Indeed, without joinder, it will be the Board
`
`that will be burdened by having needlessly to adjudicate and preside over two
`
`7
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`proceedings involving the same patent, same issues, same patent owner, same
`
`evidence, and same expert declarations. Therefore, granting joinder will avoid
`
`wasteful duplicative filings and reviews of the same issues across multiple
`
`proceedings.
`
`C.
`
`Joinder will have at most a minimal impact on the trial schedule
`and costs for the existing IPR
`
`Joinder will have minimal—indeed, likely no—impact on the trial schedule
`
`and costs for the existing Amneal/Par IPR because of the substantial overlap
`
`between the two petitions. Based on Wockhardt’s review of the papers Amneal and
`
`Par have submitted to date in the instant IPR, and submitted in related portions of
`
`the previously-filed CBM petition involving the ’730 patent, Wockhardt’s
`
`substantive interests completely align with Amneal and Par’s, and Wockhardt
`
`foresees no substantive issues or arguments on which it would depart from Amneal
`
`and Par’s submissions going forward.
`
`Accordingly, Wockhardt is prepared to adopt any papers submitted by
`
`Amneal and Par in the joined IPR proceeding. Thus, even though Amneal and Par
`
`have not yet agreed to coordinate with Wockhardt on joint submissions, their
`
`agreement is not necessary because any filing will be public and Wockhardt is
`
`willing to agree to adopt them, including the testimony from the same expert
`
`witness(es) as in the instituted trial. See ION Geophysical, IPR2015-00565, Paper
`
`14 at 4-5.
`
`8
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`To the extent that a modest adjustment might be required—and Wockhardt
`
`foresees no such need—Title 35 U.S.C. § 316(a)(11) allows the Director to “adjust
`
`the time periods … in the case of joinder.” See also, 37 C.F.R. § 42.100(c).
`
`Accordingly, the Board has granted extensions in other trial schedules to
`
`accommodate joinder. See Ariosa Diagnostics v. Isis Innovation Ltd., IPR2013-
`
`00250, Paper 24 at 5 (PTAB Sept. 3, 2013) (“while some adjustments to the
`
`schedule have been necessary, there is not undue delay.”); see also Microsoft Corp.
`
`v. Proxyconn, Inc., IPR2013-00109, Paper 15 at 4-5 (PTAB Feb. 25, 2013);
`
`Samsung Elec. Co., Ltd. v. Virginia Innovation Sci., Inc., IPR2014-00557, Paper 10
`
`at 18 (PTAB June 13, 2014).
`
`And any “alleged” prejudice or burden to Jazz, Amneal, and Par—if not
`
`entirely nonexistent—is outweighed by the public interest in obtaining a speedy
`
`and efficient resolution of all the patentability issues of the ’730 patent in a single
`
`proceeding, with minimal burden on this Board.
`
`Procedures to simplify briefing and discovery
`
`D.
`Briefing and discovery in the joined proceeding can be simplified to
`
`minimize any impact to the schedule or the volume of materials submitted to the
`
`Board. Given that Wockhardt, Amneal, and Par will rely upon the same prior art
`
`and the same bases for rejection of the same claims using the same expert(s),
`
`Wockhardt envisions few, if any, differences in position.
`
`9
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 7,668,730
`In the unlikely event that there might be a procedural issue or statement by
`
`Amneal or Par in the joined IPR with which Wockhardt disagrees—and to be sure
`
`Wockhardt foresees none at this time—Wockhardt will request a conference call to
`
`seek permission and explain its reasons to submit a short separate filing, if needed,
`
`of no more than 3-5 pages directed to points of procedural disagreement with the
`
`other petitioners, at the Board’s discretion. Cf. Apple, Inc., CBM2015-00119,
`
`Paper 11 at 5-6. And Wockhardt accepts that it will not be permitted any separate
`
`arguments in furtherance of those advanced in Amneal and Par’s filings. See, e.g.,
`
`Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 9 (PTAB
`
`June 20, 2013). The Board can also allow the patent owner a corresponding
`
`number of pages to respond to any separate filings. See Dell Inc., IPR2013-00385,
`
`Paper 17 at 8; Motorola Mobility, IPR2013-00256, Paper 10 at 8-9.
`
`Additionally, Wockhardt will not seek to submit any new expert declarations
`
`from those entered by Amneal and Par, except to the extent that for some unlikely
`
`reason 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. Further, Wockhardt agrees
`
`that it will not seek additional time at any deposition and that Amneal and Par will
`
`be permitted to ask questions before Wockhardt. And Wockhardt agrees that it will
`
`not seek any additional time at any oral argument. Indeed, Wockhardt intends to
`
`10
`
`
`
`maintain a secondary role in the joined proceeding. Wockhardt will assume a
`
`Motion for Joinder
`Inter Partes Review of US. Patent No. 7,668, 730
`
`primary role only if Amneal and Par cease to participate in the IPR, or to the extent
`
`Amneal and Par willingly seek more prominent participation from Wockhardt’s
`
`counsel. These concessions by Wockhardt remove any alleged “complication or
`
`delay” caused by joinder, While providing the parties an opportunity to address all
`
`issues that may arise and avoiding any undue burden on Jazz, Amneal, Par, and the
`
`Board. See, e. g., IPR20l3—00256, Paper 10 at 9.
`
`Conclusion
`
`For the foregoing reasons, Wockhardt requests that its Petition for IPR of the
`
`’730 patent be granted, and that
`
`the Board grant
`
`this Motion and join this
`
`proceeding with the Amneal/Par IPR. Joinder Will ensure a just, speedy, and
`
`inexpensive resolution in both proceedings, and it will promote efficiency by
`
`avoiding duplicative filings and reviews of the same issues.
`
`Date: August27, 2015
`
`100 High Street, Suite 2400
`Boston, MA 021 10
`(857) 488-4200
`
`Respectfully submitted,
`DUANE MORRIS LLP
`
`K1,;g [9
`
`Laura A. Vogel
`Registration No. 55,702
`Attorney for Petitioner
`
`
`
`Motion for Joinder
`Inter Partes Review of US. Patent No. 7,668, 730
`
`CERTIFICATION OF SERVICE 137 C.F.R. §§ 42.616”
`
`The undersigned hereby certifies that
`
`the aboVe—captioned “Motion for
`
`Joinder Under 35 U.S.C. § 3l5(c) and 37 C.F.R. §§ 42.22 and 42.122(b)” was
`
`served in its entirety on August 27, 2015, upon the following parties Via Express
`
`mail:
`
`Schwegman Lundberg &
`Woessner/Jazz Pharmaceutical
`
`F. Dominic Cerrito
`Eric C. Stops
`Gabriel P. Brier
`
`P.O. Box 2938
`Minneapolis, MN 55402
`
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`
`Patent owner ’s correspondence
`address ofrecordfor US. Patent No.
`7, 668, 730
`
`51 Madison Avenue
`22nd Floor
`New York, NY 10010
`
`Additional address known to
`
`Petitioner as likely to eflect service
`
`Respectfully submitted,
`DUANE MORRIS LLP
`
`Date: August27, 2015
`
`100 High Street, Suite 2400
`Boston, MA 02110
`(857) 488-4200
`
`(
`
`5 QAQ
`
`&[O3»g.@
`
`Laura A. Vogel
`Registration No. 55,702
`Attorney for Petitioner
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
