Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`Entered: November 18, 2015
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`_______________
`
`Case IPR2015-01871
`Patent 8,129,431
`_______________
`
`
`Before ERICA A. FRANKLIN and GRACE KARAFFA OBERMANN,
`Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`Entered: November 18, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`_______________
`
`Case IPR2015-01871
`Patent 8,129,431
`_______________
`
`
`Before ERICA A. FRANKLIN and GRACE KARAFFA OBERMANN,
`Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`
`IPR2015-01871
`Patent 8,129,431
`
`
`
`By email dated November 12, 2015, counsel for Petitioner (“Lupin”)
`
`requested a conference call with the Board to discuss Petitioner’s “motion seeking
`
`joinder with IPR2015-00903” (“IPR 903”). Appendix (“Email Request”). That
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`Motion for Joinder was filed in this proceeding on September 9, 2015. See Paper 3
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`(“Joinder Mot.”). IPR 903 involves the same patent challenged here, namely, U.S.
`
`Patent No. 8,129,431. IPR 903, Paper 15. The Petition in IPR 903, however, was
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`filed by a different entity (“InnoPharma”). Id. We instituted trial in IPR 903 on
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`August 7, 2015. Id.
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`The Email Request also refers to ten (10) “related IPR proceedings”
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`involving Senju as Patent Owner and Lupin or InnoPharma as Petitioner.
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`Appendix (listing ten (10) IPRs involving five (5) different patents). The Email
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`Request conveys that “[t]he parties have met and conferred, including with regard
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`to a proposed global schedule applicable to all of the related IPR proceedings . . .
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`and all now believe a call with the Board is appropriate.” Appendix.
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`In response to the Email Request, the Board (Judges Franklin and
`
`Obermann) conducted a conference call on November 17, 2015. Petitioner was
`
`represented by Ms. Deborah Yellin. Patent Owner was represented by Mr. Bryan
`
`Diner. InnoPharma was represented by Mr. Jitendra Malik.
`
`A. Proposed Global Schedule Relating to Ten IPRs
`
`The Board and counsel for the respective parties discussed the “proposed
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`global schedule” relating to ten (10) IPRs identified in the Email Request.
`
`Appendix. During the course of the discussion, it became apparent that no
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`agreement has been reached among the parties as to the terms of a “proposed
`
`global schedule,” and that our involvement at this stage, as to such a schedule, is
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`premature. Appendix. For example, InnoPharma represented that it had received
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`information regarding a “proposed global schedule” only last Thursday, and was
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`IPR2015-01871
`Patent 8,129,431
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`unprepared to discuss it. Id. In particular, counsel for InnoPharma argued that
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`more time was needed for InnoPharma and Lupin to confer regarding their
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`respective roles, and the content of the evidence, in any consolidated proceeding
`
`involving all ten (10) IPRs identified in the Email Request.
`
`We determined that it was premature to entertain a request for a global
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`schedule relating to the ten (10) IPRs identified in the Email Request. We
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`encouraged all three parties (Lupin, InnoPharma, and Senju) to continue to meet
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`and confer in an effort to clarify their positions as to any proposed global schedule,
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`prior to seeking the Board’s involvement on that issue. Upon questioning from
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`Senju’s counsel, we explained that the Board is not inclined to extend the schedule
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`set in IPR 903, the earliest-filed of the ten (10) IPRs identified in the Email
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`Request, unless we are directed to compelling reasons for doing so.
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`B. The Motion for Joinder Limited to the Instant Case and IPR 903
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`
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`The Motion for Joinder solely relates to the instant case and IPR 903. In the
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`Motion for Joinder, Lupin acknowledges that it and InnoPharma “have relied upon
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`testimony from separate experts.” Joinder Mot. 6. Lupin avers, however, that, “in
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`order to further simplify the proceeding, Lupin will rely on the same expert as
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`InnoPharma” in a consolidated proceeding, “should InnoPharma permit it.” Id.
`
`at 7.
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`During the course of the telephone conference, Lupin clarified its position
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`regarding the Motion for Joinder. These facts became apparent: InnoPharma and
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`Lupin have reached an agreement, regarding their respective roles and the content
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`of the evidence, should the Board grant the Motion for Joinder. In particular,
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`InnoPharma agrees to permit Lupin to rely on the declaration of InnoPharma’s
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`witness, Dr. Laskar, filed in support of InnoPharma’s Petition in IPR 903. Lupin
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`agrees to accept a back-seat role as an “understudy” in any consolidated
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`IPR2015-01871
`Patent 8,129,431
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`proceeding, without any right to separate briefing or discovery in IPR 903. To the
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`extent that the instant Petition differs from the Petition filed in IPR 903, Lupin
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`agrees to withdraw all additional arguments in its Petition, as well as its supporting
`
`declaration of Dr. Lawrence, and proceed in IPR 903 based on the arguments and
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`evidence provided by InnoPharma in the Petition filed in IPR 903. Lupin agrees to
`
`assume a primary role in IPR 903 only if InnoPharma ceases to participate in
`
`IPR 903. In other words, via the Motion for Joinder, Lupin requests permission to
`
`be added to the case caption as a Petitioner in IPR 903, without any active
`
`participation or involvement that is separate from InnoPharma, unless authorized
`
`by the Board upon a request pertaining to an issue unique to Lupin alone.
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`The Board several times requested counsel for Senju to address what
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`additional burdens Senju would bear, should joinder be granted on the above terms
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`agreed to between InnoPharma and Lupin. Counsel for Senju referred to Lupin’s
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`alleged delay in filing the instant Petition, given that others, including InnoPharma,
`
`had submitted earlier-filed Petitions; advocated that consolidation of all ten (10)
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`IPRs identified in the Email Request would foster consistency and efficiency,
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`while opposing joinder of the first two (2) IPRs identified in that Email Request;
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`averred that extending the statutory due date of a final decision in IPR 903, so that
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`all of the ten (10) IPRs identified in the Email Request can be decided
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`simultaneously, would permit the parties to focus on a trial presently set for
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`April, 2016, in co-pending district court litigation that involves issues similar to
`
`those presented here; and argued that the ability of Lupin to request Board pre-
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`authorization to provide separate argument or evidence in IPR 903, on issues
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`unique to Lupin alone, is vague and presents uncertainties that may burden Senju.
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`IPR2015-01871
`Patent 8,129,431
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`C. Conclusions Reached During the Telephone Conference
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`The parties indicated, and we approved, a plan to continue to “meet and
`
`confer” as to a proposed global schedule that would apply to all ten (10) IPRs
`
`identified in the Email Request. See Appendix (listing ten (10) IPRs involving
`
`five (5) different patents). We reminded Senju that any Preliminary Response filed
`
`in the instant case may be waived or filed early; and that, if filed, the Preliminary
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`Response should address the arguments and evidence raised in the instant Petition.
`
`We shall resolve the Motion for Joinder in due course, when the record is ripe for
`
`decision on whether the instant Petition “warrants the institution of an inter partes
`
`review.” 35 U.S.C. § 315(c) (the Board will reach the merits of a joinder motion
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`only after a determination is made that the petition accompanying the motion
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`warrants institution of review).
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`IPR2015-01871
`Patent 8,129,431
`
`
`
`
`For Petitioner:
`
`Deborah Yellin
`Jonathan Lindsay
`CROWELL & MORING LLP
`dyellin@crowell.com
`JLindsay@crowell.com
`
`
`For Patent Owner:
`
`Brian Diner
`Justin Hasford
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`bryan.diner@finnegan.com
`justin.hasford@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`
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`IPR2015-01871
`Patent 8,129,431
`
`
`APPENDIX (“EMAIL REQUEST”)
`
`
`
`
`From: Yellin, Deborah [mailto:DYellin@crowell.com]
`Sent: Thursday, November 12, 2015 4:51 PM
`To: Trials
`Cc: Skelton, Bryan; Soderstrom, Lance; bryan.diner@finnegan.com; andy.holtman@finnegan.com;
`justin.hasford@finnegan.com; joshua.goldberg@finnegan.com; Lindsay, Jonathan; Malik, Jitty; Lentz,
`Shannon
`Subject: RE: IPR2015-01871 - Request for Conference Call
`
`Your Honors,
`
`Further to the correspondence below, Lupin renews its request for a conference call regarding
`IPR2015-01871 and, in particular, Petitioner Lupin’s motion seeking joinder with IPR2015-
`00903 (IPR2015-01871, Paper No. 3). The parties have met and conferred, including with
`regard to a proposed global schedule applicable to all of the related IPR proceedings listed
`below, and all now believe a call with the Board is appropriate.
`
`In view of the approaching due date for the Patent Owner Response, which is November 23,
`2015, Petitioner Lupin respectfully requests a conference call with the Board early next week, if
`at all possible. To that end, all parties are available for a conference call with the Board on
`Tuesday, November 17, 2015 between 9:30 am and Noon EST, or Wednesday, November 18
`between 9:30 am and Noon or after 3 pm EST.
`
`Respectfully,
`
`Deborah Yellin and Jonathan Lindsay
`
`
`Related IPRs
`
`Patent No. 8,129,431
`IPR2015-00903 (filed by Petitioner InnoPharma)
`IPR2015-01871 (filed by Petitioner Lupin with a motion to join IPR2015-00903)
`
`Patent No. 8,669,290
`IPR2015-00902 (filed by Petitioner InnoPharma)
`IPR2015-01099 (filed by Petitioner Lupin)
`
`Patent No. 8,754,131
`IPR2015-01097 (filed by Petitioner Lupin)
`IPR2016-00089 (filed by Petitioner InnoPharma with a motion to join IPR2015-01097)
`
`
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` 7
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`IPR2015-01871
`Patent 8,129,431
`
`Patent No. 8,927,606
`IPR2015-01100 (filed by Petitioner Lupin)
`IPR2016-00091 (filed by Petitioner InnoPharma with a motion to join IPR2015-01100)
`
`Patent No. 8,871,813
`IPR2015-01105 (filed by Petitioner Lupin)
`IPR2016-00090 (filed by Petitioner InnoPharma with a motion to join IPR2015-01105)
`
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