Paper: 10
`Date: October 30, 2015
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WOCKHARDT BIO AG,
`Petitioner,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01818
`Patent 7,668,730 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)
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`

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`IPR2015-01818
`Patent 7,668,730 B2
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`I.
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`INTRODUCTION
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`Petitioner Wockhardt Bio AG (“Wockhardt”) filed a Petition requesting
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`inter partes review of claims 1–11 of U.S. Patent No. 7,668,730 B2 (“the ’730
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`patent”). Paper 2 (“Petition” or “Pet.”). The Petition was accorded a filing date of
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`August 27, 2015. Paper 5. Wockhardt also filed a Motion for Joinder pursuant to
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`35 U.S.C. § 315(c) requesting joinder of the present proceeding with Amneal
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`Pharms., LLC and Par Pharm., Inc. v. Jazz Pharms., Inc., Case IPR2015-00554.
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`Paper 4 (“Mot.”). IPR2015-00554 also concerns claims 1–11 of the ’730 patent
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`owned by Jazz Pharmaceuticals, Inc. (“Patent Owner”). We instituted trial in
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`IPR2015-00554 on July 28, 2015, on a single ground of obviousness of claims
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`1–11 over the same “Advisory Committee Art” (Exs. 1003–1006) relied upon by
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`Wockhardt in the instant Petition. IPR2015-00554, Paper 20. Wockhardt’s
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`assertion of obviousness of claims 1–11 over the Advisory Committee Art in the
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`Petition is the only ground on which Wockhardt seeks institution of inter partes
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`review. Pet. 11–12. Wockhardt filed the Petition and Motion for Joinder in the
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`present proceeding on August 27, 2015, within one month after we instituted trial
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`in IPR2015-00554. 37 C.F.R. § 42.122(b).
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`II. DISCUSSION
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`Based on authority delegated to us by the Director, we have discretion to
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`join an inter partes review to a previously instituted inter partes review. 35 U.S.C.
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`§ 315. Section 315(c) provides, in relevant part, that “[i]f the Director institutes an
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`inter partes review, the Director, in his or her discretion, may join as a party to that
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`inter partes review any person who properly files a petition under section 311.” Id.
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`When determining whether to grant a motion for joinder we consider factors such
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`as timing and impact of joinder on the trial schedule, cost, discovery, and potential
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`2
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`

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`IPR2015-01818
`Patent 7,668,730 B2
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`simplification of briefing. Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004,
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`slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`We convened a conference call on September 14, 2015, among counsel for
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`Wockhardt, Amneal Pharmaceuticals (“Amneal”), Par Pharmaceutical, Inc.
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`(“Par”), and Patent Owner. The subject of the conference call was a discussion of
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`the conditions proposed by Wockhardt in its Motion for Joinder, requesting that we
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`join the present proceeding with IPR2015-00554. We refer to the transcript of the
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`conference call filed by counsel for Wockhardt for the details of the call and
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`representations and agreements made by the parties. Ex. 1033.
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`Of particular relevance, we note that Wockhardt’s Petition is based only on
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`the identical ground on which we instituted inter partes review in IPR2015-00554.
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`Mot. 5. The Petition is based on “the same arguments, evidence, and ground of
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`unpatentability” and is otherwise “identical to the instituted Amneal/Par IPR
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`Petition.” Id.; Ex. 1033, 7:2–18. We further note that Wockhardt agreed to, inter
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`alia, (i) “adopt any papers submitted by Amneal and Par in the joined IPR
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`proceeding . . . including the testimony from the same expert witness(es) as in the
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`instituted trial;” (ii) “not seek to submit any new expert declarations from those
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`entered by Amneal and Par, except to the extent that . . . Wockhardt is precluded
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`from relying on Amneal and Par’s experts’ declarations, e.g., if Amneal and Par
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`settle with Jazz and contractually bind their experts from continuing in the IPR
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`with Wockhardt;” (iii) “not seek additional time at any deposition and that Amneal
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`and Par will be permitted to ask questions before Wockhardt;” and (iv) “not seek
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`any additional time at any oral argument.” Mot. 8–10. Patent Owner agreed that,
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`if joinder were to be ordered on the conditions set forth in the Motion for Joinder,
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`then Patent Owner would not oppose joinder and would waive filing a preliminary
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`response to the Petition. Ex. 1033, 7:20–9:13. The parties also agreed that the
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`3
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`

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`IPR2015-01818
`Patent 7,668,730 B2
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`schedule in IPR2015-00554 would remain in place without requiring any
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`extensions of time. Id. at 6:11–22, 8:8–12, 28:11–21.
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`At the conclusion of the conference call, we asked counsel for Wockhardt,
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`Amneal, and Par to attempt to reach agreement on any remaining issues among
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`them regarding joinder and to inform the Board no later than Friday September 18,
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`2015, whether agreement was reached, and whether any of the parties intended to
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`file an opposition to Wockhardt’s Motion for Joinder by September 25, 2015. Ex.
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`1033, 34:12–35:14.
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`On September 18, 2015, we received an email from counsel for Wockhardt,
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`on which counsel for Amneal, Par, and Patent Owner were copied, indicating there
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`was agreement among Wockhardt, Amneal, and Par, and that none of the parties
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`would oppose the Motion for Joinder based on the conditions proposed in
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`Wockhardt’s Motion, as clarified and agreed during the conference call. In view of
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`the foregoing, we find that joinder based upon the conditions stated by Wockhardt
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`in its Motion for Joinder will have little or no impact on the timing, cost, or
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`presentation of the trial on the instituted ground. Discovery and briefing will be
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`simplified if the two proceedings are joined. Therefore, there being no opposition
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`to Wockhardt’s Motion for Joinder from any of the parties, the Motion for Joinder
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`is granted.
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`Accordingly, it is
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`III.
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` ORDER
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`ORDERED that trial is instituted in IPR2015-001818 as to the obviousness
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`of claims 1–11 of the ’730 patent over the Advisory Committee Art, the same
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`ground on which we instituted trial in IPR2015-00554;
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`4
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`

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`IPR2015-01818
`Patent 7,668,730 B2
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`FURTHER ORDERED that Wockhardt’s Motion for Joinder with IPR2015-
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`00554 is granted;
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`FURTHER ORDERED that IPR2015-01818 is terminated and joined to
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`IPR2015-00554, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the conditions
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`stated in Wockhardt’s Motion for Joinder (Paper 4) as clarified and agreed during
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`the conference call of September 14, 2015 (Ex. 1033);
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`FURTHER ORDERED that the Scheduling Order in place for IPR2015-
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`00554 shall govern the joined proceedings;
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`FURTHER ORDERED that all future filings in the joined proceeding are to
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`be made only in IPR2015-00554;
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`FURTHER ORDERED that the case caption in IPR2015-00554 for all
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`further submissions shall be changed to add Wockhardt as a named petitioner after
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`Amneal and Par, and to indicate by footnote the joinder of IPR2015-01818 to that
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`proceeding, as indicated in the attached form of caption; and
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`FURTHER ORDERED that a copy of this Decision shall be entered into the
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`record of IPR2015-00554.
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`5
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`IPR2015-01818
`Patent 7,668,730 B2
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`FOR PETITIONER:
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`Laura Vogel
`Patrick Gallagher
`LAVogel@duanemorris.com
`PCGallagher@duanemorris.com
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`FOR PATENT OWNER:
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`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
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`John V. Biernacki
`jvbiernacki@jonesday.com
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`
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`FOR AMNEAL PHARMACEUTICALS, LLC and PAR PHARMACEUTICAL,
`INC. (IPR2015-00554):
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`Aziz Burgy
`Bradford C. Frese
`Aziz.Burgy@arentfox.com
`Bradford.Frese@arentfox.com
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`6
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`IPR2015-00554
`Patent 7,668,730 B2
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`Sample Case Caption
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
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`AMNEAL PHARMACEUTICALS LLC, PAR PHARMACEUTICAL, INC. and
`WOCKHARDT BIO AG,
`Petitioners,
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`v.
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`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
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`Case IPR2015-005541
`Patent 7,668,730 B2
`____________
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`1 Case IPR2015-01818 has been joined with this proceeding.