IN THE 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.
`
`U.S. Patent No. 8,927,606 to Sawa et al.
`Issue Date: January 6, 2015
`Title: Aqueous Liquid Preparation Containing 2-Amino-3-(4-
`bromobenzoyl) Phenylacetic Acid
`__________________
`
`Inter Partes Review No.: IPR2016-00091
`__________________
`
`MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`__________________
`
`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.
`
`U.S. Patent No. 8,927,606 to Sawa et al.
`Issue Date: January 6, 2015
`Title: Aqueous Liquid Preparation Containing 2-Amino-3-(4-
`bromobenzoyl) Phenylacetic Acid
`__________________
`
`Inter Partes Review No.: IPR2016-00091
`__________________
`
`MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ..........................1
`STATEMENT OF MATERIAL FACTS ........................................................2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................3
`A.
`Joinder will not impact the Board’s ability to complete the
`review in a timely manner.....................................................................4
`Joinder will promote efficiency by consolidating issues,
`avoiding duplicate efforts, and preventing inconsistencies ..................6
`Joinder will not prejudice Senju or Lupin.............................................6
`C.
`IV. CONCLUSION................................................................................................7
`
`B.
`
`i
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385.........................4, 5
`Kyocera Corp. v. SoftView LLC, IPR2013-00004.....................................................1
`Lupin Ltd. et al. v. Senju Pharma. Co., Ltd., IPR2015-01097 ..................................5
`Lupin Ltd. et al. v. Senju Pharma. Co., Ltd., IPR2015-01100 ..................................5
`Lupin Ltd. et al. v. Senju Pharma. Co., Ltd., IPR2015-01105 ..................................5
`Motorola Mobility LLC v. SoftView LLC, IPR2013- 00256......................................5
`STATUTES
`35 U.S.C. § 103..........................................................................................................2
`35 U.S.C. § 315(c) .................................................................................................1, 3
`35 U.S.C. § 316(a)(1).................................................................................................7
`35 U.S.C. § 316(a)(11)...............................................................................................4
`OTHER AUTHORITIES
`37 C.F.R. § 42.22 .......................................................................................................1
`37 C.F.R. § 42.100(c).............................................................................................4, 7
`37 C.F.R. § 42.122(a).................................................................................................3
`37 C.F.R. § 42.122(b) ................................................................................................1
`
`ii
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`InnoPharma Licensing Inc., InnoPharma Licensing LLC, InnoPharma Inc.,
`
`InnoPharma LLC, Mylan Pharmaceuticals Inc., and Mylan Inc. (collectively
`
`“InnoPharma”) respectfully submits this Motion for Joinder,
`
`together with a
`
`Petition for Inter Partes Review of U.S. Patent No. 8,927,606 (“the ’606 Patent”)
`
`(“Petition”). Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b),
`
`InnoPharma requests institution of an inter partes review and joinder with the inter
`
`partes review concerning the same patent
`
`in Lupin Ltd. et al. v. Senju
`
`Pharmaceutical Co., Ltd., Case No. IPR2015-01100 (the “Lupin IPR”), which was
`
`instituted on October 27, 2015.
`
`In accordance with the Board’s Representative Order identifying matters to
`
`be addressed in a motion for joinder (Kyocera Corp. v. SoftView LLC, Paper No.
`
`15, IPR2013-00004, April 24, 2013), InnoPharma submits that: (1) joinder is
`
`appropriate because it will promote efficient determination of the validity of the
`
`’606 Patent without prejudice to Lupin Ltd. and Lupin Pharmaceuticals Inc.
`
`(collectively, “Lupin”) or Senju Pharmaceutical Co., Ltd., Bausch & Lomb, Inc.,
`
`and Bausch & Lomb Pharma Holdings Corp.
`
`(collectively “Senju”);
`
`(2)
`
`InnoPharma’s Petition includes grounds that are essentially the same as the ground
`
`instituted in the Lupin IPR; (3) joinder would not affect the pending schedule in
`
`1
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`the Lupin IPR nor increase the complexity of that proceeding, minimizing costs;
`
`and (4) InnoPharma is willing to agree to consolidated filings with Lupin to
`
`minimize burden and schedule impact.
`
`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as it is submitted within one month of the date on which the Lupin IPR was
`
`instituted.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`Senju Pharmaceutical, Co., Ltd., is the owner of the ’606 Patent.
`
`2.
`
`On May 8, 2015, Senju Pharmaceutical, Co., Ltd., et al. filed a
`
`complaint against
`
`InnoPharma for
`
`infringement of
`
`the ’606 Patent
`
`(the
`
`“Underlying Litigation”).
`
`3.
`
`On April 23, 2015, Lupin filed its petition for inter partes review of
`
`claims 1-30 of the ’606 Patent.
`
`4.
`
`On October 27, 2015, a decision instituting inter partes review of
`
`claims 1-30 of the ’606 Patent was entered in the Lupin IPR (Paper No.9, IPR
`
`2015-01100) on the grounds that claims 1-30 were unpatentable over U.S. Patent
`
`No. 5,891,913 (“the ’913 patent” or “Sallmann 913”) in view of U.S. Patent No.
`
`4,910,225 (“Ogawa” or “the ’225 patent”) under 35 U.S.C. § 103.
`
`5.
`
`Oral argument is currently set for June 6, 2016 in the Lupin IPR.
`
`2
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`6.
`
`Concurrently with this Motion for Joinder, InnoPharma is filing a
`
`petition for inter partes review of claims 1-30 of the ’606 Patent.
`
`7.
`
`The Petition includes grounds that are essentially the same as the
`
`ground instituted in the Lupin IPR.
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of like
`
`review proceedings, e.g., an inter partes review (“IPR”) may be joined with
`
`another inter partes review. 37 C.F.R. § 42.122(a). The statutory provision
`
`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c), which
`
`reads as follows:
`
`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.
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of substantive and procedural
`
`issues on the proceedings, as well as other
`
`considerations, while being “mindful that patent trial regulations, including the
`
`3
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`rules for joinder, must be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” See Dell, Inc. v. Network-1 Security Solutions,
`
`Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board should
`
`consider “the policy preference for joining a party that does not present new issues
`
`that might complicate or delay an existing proceeding.” Id. at 10. Under this
`
`framework, joinder of the present Petition with the Lupin IPR is appropriate.
`
`“A motion for joinder should: (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.” Id. at 4. Each of these is addressed fully below.
`
`A.
`
`Joinder will not impact the Board’s ability to complete the review
`in a timely manner
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R.
`
`§ 42.100(c) provide that inter partes review proceedings should be completed and
`
`the Board’s final decision issued within one year of institution of the review.
`
`In
`
`this case, joinder will not affect the Board’s ability to issue the decision because
`
`InnoPharma will be joining the grounds on which the Lupin IPR has been
`
`instituted.
`
`4
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`Here, the Board has instituted the Lupin IPR with respect to Lupin’s Ground
`
`2, which relies on Sallmann 913 and Ogawa. Ground 1 of the InnoPharma’s
`
`petition relies on Ogawa and U.S. Patent No. 6,107,343 (“Sallmann” or “Sallmann
`
`343”). Sallmann 343 is based on a divisional application from Sallmann 913 and
`
`has the same relevant disclosure. Accordingly, InnoPharma’s Ground 1 is
`
`essentially the same as the ground instituted in the Lupin IPR.1
`
`In addition, InnoPharma respectfully proposes procedures to simplify any
`
`further briefing and discovery, which will minimize any potential impact on the
`
`schedule or the volume of materials to be submitted to the Board. For example, the
`
`petitioners to file consolidated filings,
`
`for which the first petitioner was
`
`responsible, and allowed the new petitioner to file seven additional pages with
`
`corresponding additional responsive pages allowed to the Patent Owner. See Dell,
`
`Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 8; Motorola
`
`Mobility LLC v. SoftView LLC, IPR2013-00256, Paper 10 at 8-9. This procedure
`
`would minimize any complication or delay caused by joinder. The petitioners in
`
`this case can also work together to manage the questioning at depositions and
`
`1 The Board’s Decision to Institute also references U.S. Patent No. 6,274,609
`(“Yasueda”) and EP 0 306 984 (“Fu EP984”), which is a European patent
`publication that corresponds to Australian Patent No. AU-B-22042/88 (“Fu” or “Fu
`AU88”) is referred in several other companion decisions on related patents. Lupin
`Ltd. et al. v. Senju Pharma. Co., Ltd., IPR2015-1100, Paper 9 at 9-10; IPR2015-
`01097, Paper 9 at 8; IPR2015-1105, Paper 9 at 8.
`
`5
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`presentations at the hearing to avoid redundancy. Additionally, while InnoPharma
`
`and Lupin have relied upon testimony from separate experts in their respective
`
`petitions, the conclusions and underlying reasoning of the experts are substantially
`
`congruent, and therefore present no additional burden on the part of the Patent
`
`Owners to address.
`
`B.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies
`InnoPharma would not be time barred from filing the present Petition
`
`without a corresponding motion for joinder. However, determining the same
`
`validity questions concerning the ’606 patent in separate concurrent proceedings
`
`would duplicate efforts, and create a risk of inconsistent results and piecemeal
`
`review. Proceeding with a consolidated inter partes review would avoid
`
`inefficiency and potential inconsistency and would result in a final written decision
`
`without any delay.
`
`Joinder will not prejudice Senju or Lupin
`C.
`Permitting joinder will not prejudice Senju or Lupin.
`
`If joinder is granted,
`
`InnoPharma will be joining the grounds instituted in the Lupin IPR, thus the
`
`primarily issues will already be before the Board, such that joinder would not
`
`affect the timing of the Lupin IPR or the content of Senju’s Patent Owner response
`
`due on January 4, 2016. Moreover, joinder will not affect the timing of the Lupin
`
`IPR, and any extension to the schedule that may be required is permitted by law
`
`6
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`and the applicable rules. 35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c).
`
`In fact,
`
`joinder is likely more convenient and efficient for Senju by providing a single trial
`
`on the ’606 patent. By allowing all grounds of invalidity to be addressed in a
`
`single proceeding, the interests of all parties and the Board will be well served.
`
`IV. CONCLUSION
`For the foregoing reasons, InnoPharma respectfully requests that its Petition
`
`for Inter Partes Review of U.S. Patent No. 8,927,606 be granted and that the
`
`proceedings be joined with Lupin Ltd. and Lupin Pharmaceuticals Inc. v. Senju
`
`Pharmaceutical Co., Ltd., Case IPR2015-01100. Joinder will ensure a just, speedy
`
`and inexpensive resolution in both proceedings.
`
`7
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`The Patent Trial and Appeal Board is hereby authorized to charge any
`
`additional fees associated with this filing to Deposit Account No. 160605
`
`(Customer ID No. 00826).
`
`RESPECTFULLY SUBMITTED,
`
`ALSTON & BIRD LLP
`
`Date: November 2, 2015
`
`/Jitendra Malik/
`
`Jitendra Malik (Reg. No. 55823)
`4721Emperor Boulevard, Suite 400
`Durham, North Carolina 27703
`Telephone: 919-862-2200
`Fax: 919-862-2260
`Jitty.Malik@alston.com
`
`Lead Counsel for Petitioner
`InnoPharma Licensing Inc., InnoPharma
`Licensing LLC, InnoPharma Inc.,
`InnoPharma LLC, Mylan
`Pharmaceuticals Inc., and Mylan Inc.
`
`8
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 2nd day
`
`of November 2015, a complete copy of the foregoing “MOTION FOR JOINDER
`
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)” and all
`
`supporting exhibits were served were served via UPS® to the Patent Owner by
`
`serving the correspondence address of record for the ’606 Patent:
`
`WENDEROTH, LIND & PONACK, L.L.P.
`1030 15th Street, N.W.,
`Suite 400 East
`Washington DC 20005-1503
`
`Courtesy copies of the foregoing were also served via UPS® on counsel of
`
`record for the Petitioner and Patent Owner in Lupin Ltd. et al. v. Senju
`
`Pharmaceutical Co., Ltd., IPR2015-01100 as follows:
`
`Bryan C. Diner
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington DC 20001-4413
`
`Deborah H. Yellin
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`
`Respectfully submitted,
`
`Alston & Bird LLP
`
`By: /Jitendra Malik/
`
`9
`
`
`
`InnoPharma’s Motion for Joinder
`with Case IPR2016-00091
`
`Jitendra Malik, Ph.D.
`Reg. No. 55823
`Alston & Bird LLP
`4721 Emperor Blvd., Suite 400
`Durham, NC 27703-8580
`jitty.malik@alston.com
`
`Hidetada James Abe
`Reg. No. 61182
`Alston & Bird LLP
`333 South Hope Street, 16th Floor
`Los Angeles, California 90071
`james.abe@alston.com
`
`Lance Soderstrom
`Reg. No. 65405
`Alston & Bird LLP
`90 Park Avenue
`15th Floor
`New York, NY 10016-1387
`lance.soderstrom@alston.com
`
`Attorneys for Petitioners InnoPharma
`Licensing, Inc., InnoPharma Licensing LLC,
`InnoPharma Inc., InnoPharma LLC, Mylan
`Pharmaceuticals Inc., and Mylan Inc.
`
`10
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