Paper No. ____
`Filed: May 25, 2016
`
`Filed on behalf of: Mylan Pharmaceuticals Inc.
`By: Steven W. Parmelee
`
`Michael T. Rosato
`
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-01101
`Patent No. RE38,551
`_____________________________
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§42.22 AND 42.122(b)
`
`
`
`
`Filed: May 25, 2016
`
`Filed on behalf of: Mylan Pharmaceuticals Inc.
`By: Steven W. Parmelee
`
`Michael T. Rosato
`
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-01101
`Patent No. RE38,551
`_____________________________
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§42.22 AND 42.122(b)
`
`
`
`
`
`
`
`I.
`
`Statement of the Precise Relief Requested
`
`Mylan Pharmaceuticals Inc. (“Mylan” or “Petitioner”) submits, concurrently
`
`with this motion, a petition for inter partes review (“Petition”) of claims 1-13 of
`
`U.S. Reissue Patent No. RE38,551 (“the ’551 patent”), which is purportedly
`
`assigned to Research Corporation Technologies, Inc. (“Patent Owner”). Mylan
`
`respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`
`§ 42.122(b) of the concurrently filed Petition with a pending inter partes review
`
`initiated by Argentum Pharmaceuticals LLC (“Argentum”), Argentum
`
`Pharmaceuticals LLC v. Research Corporation Technologies, Inc., IPR2016-
`
`00204.
`
`Mylan’s request for joinder is timely because it has been less than one month
`
`since the Board issued an institution decision on May 23, 2016, in IPR2016-00204.
`
`See 37 C.F.R. § 42.122(b). Grounds 1-4 of the accompanying Petition are practical
`
`copies of the grounds presented in the petition in IPR2016-00204, including
`
`Grounds 3A-3B that were instituted by the Board, and challenge the same claims
`
`over the same prior art and using the same arguments and expert testimony.
`
`Petitioner requests joinder only as to Grounds 3A-3B, and not as to Grounds 1A-
`
`1B, 2A-2B, or 4A-4B.
`
`Institution and joinder for Grounds 3A-3B should create no additional
`
`burden for the Board, Patent Owner, or the existing petitioners in IPR2016-00204
`
`-1-
`
`
`
`because these grounds are practical copies of already instituted grounds. In
`
`addition, joinder is appropriate because it will efficiently resolve the validity of
`
`claims 1-13 of the ’551 patent over the same prior art in a single IPR proceeding,
`
`without prejudicing the parties to IPR2016-00204.
`
`Absent termination of Argentum as a party to the proceeding, Mylan
`
`anticipates participating in the proceeding in a limited capacity as an understudy.
`
`Moreover, joinder will have no impact on the trial schedule of IPR2016-00204
`
`because that IPR is still in its early stages, and Mylan, in its limited role, is
`
`agreeable to the same schedule.
`
`II. Background
`
`On July 10, 2013, UCB, Inc. et al. asserted claims for infringement of the
`
`’551 patent in UCB, Inc. et al. v. Mylan Pharmaceuticals Inc. and Mylan, Inc.,
`
`Case No. 1:13-cv-01214, in the District of Delaware, which case was consolidated
`
`with UCB, Inc. v. Accord Healthcare Inc., 1:13-cv-01206 (D. Del. Jul. 10, 2013).
`
`In IPR2014-01126, the Board denied institution of inter partes review of the
`
`’551 patent based on a petition filed by Actavis, Inc., Actavis Laboratories FL,
`
`Inc., Actavis Pharma, Inc., Amneal Pharmaceuticals of New York, LLC,
`
`Aurobindo Pharma Ltd., Aurobindo Pharma USA, Inc., Breckendridge
`
`Pharmaceutical, Inc., Vennoot Pharmaceuticals, LLC, Sandoz Inc., Sun Pharma
`
`Global FZE, and Sun Pharmaceutical Industries, Ltd. On November 23, 2015,
`
`Argentum filed a petition for inter partes review challenging claims 1-13 of the
`
`
`
`’551 patent, which was assigned Case No. IPR2016-00204. On May 23, 2016, the
`
`Board instituted review on claims 1-13. This Petition is a practical copy of the
`
`IPR2016-00204 petition, including the same prior art analysis and expert
`
`testimony. See Pet. The Petition has been revised in portions to address certain
`
`formalities, such as, e.g., mandatory notice information, counsel, related matters,
`
`etc.
`
`III. Argument
`
`A. Legal Standard
`
`The Board has authority to join as a party any person who properly files a
`
`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
`
`§315(c). A motion for joinder must be filed within one month of institution of any
`
`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
`
`deciding whether to grant a motion for joinder, the Board considers several factors
`
`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
`
`joined has presented any new grounds of unpatentability; (3) what impact, if any,
`
`joinder would have on the trial schedule for the existing review; and (4) how
`
`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
`
`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
`
`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
`
`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(April 24, 2013)).
`
`
`
`B. Mylan’s Motion for Joinder Is Timely
`
`Joinder may be requested no later than one month after the institution date of
`
`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122. Here,
`
`because the Board issued its institution decision in IPR2016-00204 on May 23,
`
`2016, this Motion for Joinder and the accompanying Petition are timely.
`
`C. The Relevant Factors Weigh in Favor of Joinder
`
`Each of the four factors considered by the Board weighs in favor of joinder.
`
`As discussed below, granting joinder will not enlarge the scope of the IPR2016-
`
`00204 and will not negatively impact the IPR2016-00204 schedule, but a decision
`
`denying joinder could severely prejudice Mylan. Thus, joinder is appropriate and
`
`warranted.
`
`1.
`
`Joinder is Appropriate
`
`Joinder with IPR2016-00204 is appropriate because the Petition is limited to
`
`the same grounds instituted in the IPR2016-00204 petition, and expressly does not
`
`advance for joinder purposes in this proceeding the grounds that were not instituted
`
`in IPR2016-00204. It also relies on the same prior art analysis and expert
`
`testimony submitted by Argentum. Indeed, the Petition is nearly identical with
`
`respect to the grounds raised in the IPR2016-00204 petition, and does not include
`
`any grounds not raised in that petition. Other than certain formalities, the present
`
`petition and evidence is virtually identical in content to the IPR2016-00204
`
`
`
`petition. Certainly, no substantive differences exist between the present petition
`
`and the IPR2016-00204 petition.
`
`Joinder is also appropriate because it will promote the just, speedy, and
`
`inexpensive resolution of patentability issues, including the determination of
`
`validity of the challenged claims of the ’551 patent. For example, a final written
`
`decision on the validity of the ’551 patent has the potential to minimize issues and
`
`potentially resolve any litigation—current or future— altogether with respect to the
`
`’551 patent.
`
`Moreover, granting joinder will not prejudice Patent Owner or Argentum,
`
`while Mylan could be prejudiced if joinder is denied. As mentioned above, the
`
`accompanying Petition does not raise any new ground that is not raised in the
`
`IPR2016-00204 petition. Therefore, joinder should not significantly affect the
`
`timing in IPR2016-00204. Also, there should be little to no additional cost to
`
`Patent Owner or Argentum given the overlap in the petitions. On the other hand,
`
`Mylan and the public may be potentially prejudiced if joinder is denied. For
`
`example, absent joinder, Patent Owner and Argentum might settle and request
`
`termination of the proceedings, leaving facially intact a patent that the Board has
`
`already found is likely unpatentable .
`
`
`
`2.
`
`No New Grounds Are Presented
`
`The Petition does not present any new ground of unpatentability. As
`
`mentioned above, the Petition presents for review only grounds from the petition in
`
`IPR2016-00204 that have been instituted. The present Petition is based on the
`
`same prior art analysis and expert testimony submitted by Argentum. The petitions
`
`do not differ in any substantive way. In similar circumstances, the Board has
`
`granted joinder, because doing so does not introduce any additional arguments,
`
`briefing, or need for discovery. See, e.g., Hyundai, IPR2014-01543, Paper No. 11
`
`at 2-4; Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper
`
`No. 13 at 5-9 (Sep. 16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-
`
`00385, Paper No. 17, at 6-10 (Jul. 29, 2013); Motorola Mobility LLC v. Softview
`
`LLC, IPR2013-00256, Paper 10 at 4-10 (June 20, 2013).
`
`3.
`
`Joinder Will Not Negatively Impact the IPR2016-00204
`Trial Schedule
`
`Because the Petition essentially copies grounds raised in the IPR2016-00204
`
`petition, including the prior art analysis and expert testimony provided by
`
`Argentum, joinder will have no substantial effect on the parties, or prevent the
`
`Board from issuing a final written decision in a timely manner. The timing and
`
`content of Mylan’s petition and motion for joinder minimize any impact to the
`
`IPR2016-00204 trial schedule. Moreover, as discussed above, Mylan anticipates
`
`participating in the proceeding in a limited capacity as an understudy, absent
`
`
`
`termination of Argentum as a party. For example, if the proceedings are joined and
`
`absent termination of Argentum, it is anticipated that no expert witnesses beyond
`
`those presented by Argentum and Patent Owner will present testimony.
`
`Accordingly, Mylan does not believe that any extension of the schedule will be
`
`required by virtue of joinder of Mylan as a petitioner to this proceeding.
`
`4.
`
`Discovery and Briefing Can Be Simplified
`
`Given the Petition is identical to the IPR2016-00204 petition with respect to
`
`grounds of unpatentability raised, the Board may adopt procedures similar to those
`
`used in other cases to simplify briefing and discovery during trial. See e.g.,
`
`Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17
`
`at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. Specifically, as long as
`
`Argentum remains a party, the Board may order petitioners to consolidate filings,
`
`and to limit Mylan to no additional filings in its understudy role. As long as
`
`Argentum remains a party, Mylan will not submit any separate filings unless it
`
`disagrees with Argentum’s position (which it is not anticipated), and in the event
`
`of such disagreement it will request authorization from the Board to submit a short
`
`separate filing directed only to points of disagreement with Argentum. The Board
`
`may allow the Patent Owner a corresponding number of pages to respond to any
`
`separate filings. See Dell Inc., supra, at 8-9.
`
`
`
`Further, no additional depositions will be needed and depositions will be
`
`completed within ordinary time limits. Additionally, Mylan will not seek to
`
`submit any new expert declarations from those entered by Argentum, except to the
`
`extent that Mylan may be precluded from relying on Argentum’s experts, e.g., if
`
`Argentum settles with patent owner and contractually binds its experts from
`
`continuing in the IPR with Mylan.
`
` Moreover, to the extent that Mylan does participate in the proceedings,
`
`Mylan will endeavor to coordinate with Argentum to consolidate authorized
`
`filings, manage questioning at depositions, ensure that briefing and discovery
`
`occur within the time normally allotted, and avoid redundancies. Mylan will
`
`maintain a secondary role in the joined proceeding, and will assume a primary role
`
`only if Argentum ceases to participate in the IPR. As noted above, Mylan is
`
`willing to take a backseat role, in which it would not file any separate papers
`
`without consultation with Argentum and prior authorization from the Board.
`
`These procedures should simplify briefing and discovery and remove any
`
`“complication or delay” that might allegedly be caused by joinder, while providing
`
`the parties an opportunity to address all issues that may arise, and avoiding any
`
`undue burden on Patent Owner, Argentum, and the Board.
`
`
`
`IV. Conclusion
`
`For the foregoing reasons, Mylan respectfully requests that this motion be
`
`granted and an inter partes review of the challenged claims 1-13 be instituted based
`
`on the same grounds authorized and for the same reasons discussed in the
`
`Institution Decision in IPR2016-00204, and that this proceeding be joined with
`
`IPR2016-00204.
`
`
`
`Dated: May 25, 2016
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Steven W. Parmelee, Lead Counsel
`Reg. No. 31,990
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`caused to be served a true and correct copy of the foregoing Motion for Joinder by
`
`overnight courier (Federal Express or UPS), on this 25th day of May, 2016, on the
`
`Patent Owner at the correspondence address of the Patent Owner as follows:
`
`COVINGTON & BURLING, LLP
`Attn: Patent Docketing
`One City Center
`850 Tenth Street, NW
`Washington, DC 20001-4956
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.
`5210 East Williams Circle
`Suite 2400
`Tucson, AZ 85711-4410
`
`
`And to counsel for Petitioner Argentum Pharmaceuticals LLC in IPR2016-
`
`00204, as follows:
`
`Matthew J. Dowd
`ANDREWS KURTH LLP
`1350 I Street, NW, Suite 1100
`Washington, DC 20005
`
`Dated: May 25, 2016
`
`
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Steven W. Parmelee, Lead Counsel
`Reg. No. 31,990
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