`571-272-7822
`
`
` Paper 23
`
`Entered: January 11, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAR PHARMACEUTICAL, INC.,
`BRECKENRIDGE PHARMACEUTICAL, INC., and
`ROXANE LABORATORIES, INC.,
`Petitioners,1
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`____________
`
`Cases IPR2016-01059, IPR2016-01102, and IPR2016-01103
`Patent 5,665,772
`
`
`
`
`Before LORA M. GREEN, CHRISTOPHER L. CRUMBLEY, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Dismissing Requests for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 Par Pharmaceutical is Petitioner in IPR2016-01059, Breckenridge
`Pharmaceutical is Petitioner in IPR2016-01103, and Roxane Laboratories is
`Petitioner in IPR2016-01102. This consolidated caption is for the purposes
`of this joint Decision and is not to be used by the parties.
`
`
`
`IPR2016-01059, IPR2016-01102, IPR2016-01103
`Patent 5,665,772
`
`Par Pharmaceutical, Breckenridge Pharmaceutical, and Roxane
`Laboratories (collectively, “Petitioners”) request reconsideration of our
`Decision denying or denying-in-part their Motions for Joinder with
`IPR2016-00084. IPR2016-01059, Paper 20; IPR2016-01102, Paper 19;
`IPR2016-01103, Paper 19. Patent Owner Novartis filed a consolidated
`Response to these requests. See, e.g., IPR2016-01059, Paper 21.1
`A party dissatisfied with a decision of the Board may file a request for
`rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the
`burden of showing the decision should be modified, and “[t]he request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, an opposition, or a reply.” Id.
`The rehearing requests each pertain to our denial of joinder as to claim
`7 of the ’772 patent, which depends from claim 1 that is at issue in the
`instituted inter partes review IPR2016-00084. In our Decision denying
`joinder of claim 7, we determined that the joinder Petitions had established a
`reasonable likelihood of prevailing as to claim 7, based on Petitioners’
`unpatentability arguments as to claim 1 made in IPR2016-00084. IPR2016-
`01059, Paper 19, 10–12. Nevertheless, we declined to exercise our
`discretion to grant joinder. Id. at 15–18. It is of this latter determination that
`Petitioners request rehearing.
`In light of our determination in today’s Final Written Decision in
`IPR2016-00084 that Petitioners have not proven the unpatentability of claim
`
`
`1 Unless otherwise indicated, when essentially identical documents have
`been filed in each of the cases, for simplicity we will cite only to the docket
`of IPR2016-01059.
`
`
`
`IPR2016-01059, IPR2016-01102, IPR2016-01103
`Patent 5,665,772
`
`1 of the ’772 patent; however, Petitioners’ rehearing requests are moot.
`Petitioners advanced no ground of unpatentability as to claim 7 that did not
`rely on the unpatentability of claim 1. As claim 1 has not been proven
`unpatentable, there is no basis to conclude that claim 7 is separately
`unpatentable. Therefore, even if we were to reconsider exercising our
`discretion not to join claim 7 to IPR2016-00084, as Petitioners ask, the claim
`would remain patentable.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Requests for Rehearing are dismissed as moot.
`
`
`
`IPR2016-01059, IPR2016-01102, IPR2016-01103
`Patent 5,665,772
`
`
`For PETITIONER:
`Daniel G. Brown
`Robert Steinberg
`Jonathan Strang
`LATHAM & WATKINS LLP
`dan.brown@lw.com
`bob.steinberg@lw.com
`jonathan.strang@lw.com
`
`Keith A. Zullow
`Marta E. Delsignore
`GOODWIN PROCTER LLP
`kzullow@goodwinprocter.com
`mdelsignore@goodwinprocter.com
`
`B. Jefferson Boggs
`Daniel R. Evans
`MERCHANT & GOULD P.C.
`jboggs@merchantgould.com
`devans@merchantgould.com
`
`Matthew L. Fedowitz
`matthew.fedowitz@bipc.com
`
`
`For PATENT OWNER:
`
`Nicholas N. Kallas
`Raymond R. Mandra
`FITZPATRICK, CELLA, HARPER & SCINTO
`nkallas@fchs.com
`rmandra@fchs.com
`
`
`
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