`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`MYLAN PHARMACEUTICALS INC.,
`TEVA PHARMACEUTICALS USA, INC. and AKORN INC.,1
`Petitioners,
`v.
`ALLERGAN, INC.,
`Patent Owner.
`
`_____________________________
`
`Case IPR2016-01127 (US 8,685,930 B2)
`Case IPR2016-01128 (US 8,629,111 B2)
`Case IPR2016-01129 (US 8,642,556 B2)
`Case IPR2016-01130 (US 8,633,162 B2)
`Case IPR2016-01131 (US 8,648,048 B2)
`Case IPR2016-01132 (US 9,248,191 B2)
`_____________________________
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION TO WITHDRAW
`
`
`
`
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-00596,
`IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017-00599,
`IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and IPR2017-00601,
`have respectively been joined with the captioned proceedings. The word-for-word
`identical paper is filed in each proceeding identified in the caption pursuant to the
`Board’s Scheduling Order (Paper 10).
`
`
`
`
`
`I.
`
`PRECISE STATEMENT OF RELIEF
`
`Allergan has moved to withdraw from these proceedings on the premise that
`
`it no longer owns the patents. The motion should be denied because it assumes
`
`erroneous facts and law and fails to justify the requested relief even with those
`
`assumptions.
`
`II. ALLERGAN’S MOTION IS INEXTRICABLY TIED TO THE
`TRIBE’S MOTION TO DISMISS
`
`Allergan asserts that it has assigned some rights in the patents to the Tribe
`
`while retaining other exclusive rights through a simultaneous license-back
`
`agreement. Based on that transaction, Allergan presumes that it no longer qualifies
`
`as a patent owner. That ownership question, however, is a fundamental dispute
`
`that has been extensively briefed in connection with the Tribe’s pending Motion to
`
`Dismiss. The Board should not consider Allergan’s Motion to Withdraw before
`
`deciding the Tribe’s Motion to Dismiss.
`
`Allergan also identifies no prejudice that it would suffer from the Board
`
`denying or at least deferring its motion. In contrast, granting Allergan’s motion
`
`would prejudice Petitioners as an apparent prejudgment of the ownership question.
`
`To the extent that Allergan has simply attained another round of briefing on the
`
`issue of ownership, Petitioners’ response has not changed: for all of the reasons
`
`Petitioners and amici have previously provided, Allergan’s purported “assignment”
`
`
`
`-1-
`
`
`
`to the Tribe is a sham and did not abrogate Allergan’s status as a patent owner
`
`under the law.
`
`III.
`
`IN ANY EVENT, ALLERGAN IS AT LEAST A JOINT OWNER
`Even Allergan admits it has substantial, valuable, exclusive rights in the
`
`patents. Motions at 4 (exclusive license for all FDA-approved uses with exclusive
`
`right to commercialize Licensed Products). Allergan’s agreements provide that
`
`Allergan controls the defense in these IPRs with the Tribe only involved to the
`
`extent Allergan permits. EX2087, §5.3 (“Allergan shall retain control of the
`
`defense in such claim, suit, or proceeding”). Allergan’s Statement of Facts
`
`concedes that Allergan remains a real party-in-interest even after the “assignment.”
`
`Motions at 2. Allergan has not shown that its alleged partial interest is insufficient
`
`for it to be an owner of the patents.
`
`To the contrary, the Patent Code provides that parties may be joint owners
`
`even though they have allocated rights to make, use or sell among themselves.
`
`35 U.S.C. 262 (permitting agreements allocating rights between joint owners); see
`
`also 37 CFR §42.9(b) (granting the Board latitude in administering cases with
`
`partial owners and placing burden on co-owner seeking to act exclusively).
`
`Whatever labels Allergan and the Tribe have used for themselves in their
`
`agreements, their disposition of rights is consistent with Allergan still being a joint
`
`
`
`-2-
`
`
`
`owner under §262. Allergan has not addressed the proper legal standard, much less
`
`rebutted it.
`
`IV. ALLERGAN HAS NOT DEMONSTRATED A LACK OF STANDING
`
`Allergan has also failed to show it lacks standing. Allergan cites 35 U.S.C.
`
`311-319 and 37 C.F.R. §§42.8, 42.9, 42.101, 42.107, and 42.120 to establish that
`
`only Petitioners and patent owners are “authorized to take any actions in IPRs.”
`
`Motions at 4. But Allergan has already taken all owner actions authorized under
`
`these sections. Allergan identifies no statute that would be violated by it remaining
`
`in these IPRs.
`
`Moreover, Allergan’s narrow interpretation of the term “parties” is incorrect.
`
`As the Board recently explained, “Party” is a defined term. Paper 124, citing §42.2.
`
`The definition includes “at least” the patent owner and the petitioner, expressly
`
`rejecting Allergan’s arbitrarily narrow definition of IPR “standing”. Allergan never
`
`addresses the rule, instead presupposing that only petitioners and patent owners of
`
`an undivided interest in patents may participate in IPR proceedings. This
`
`assumption ignores, for example, the statutory obligations relating to real parties-
`
`in-interest and privies. See 35 U.S.C. 315; 37 CFR §42.8(b)(1). If Allergan truly
`
`lacked administrative standing to participate, it is unclear how Allergan could file
`
`its motion in these IPRs in the first place. Allergan has not justified the relief it
`
`seeks. See 37 C.F.R. §42.20(c).
`
`
`
`-3-
`
`
`
`V. ALLERGAN’S WITHDRAWAL JUSTIFIES ADVERSE JUDGMENT
`
`As Petitioners noted when Allergan first asked to withdraw, doing so would
`
`constitute abandonment of the IPRs (EX1137, 42-43), a point Allergan has not
`
`denied. A patent owner may request adverse judgment, and the Board construes
`
`abandoning the case as such a request. §42.73(b)(4). By its deal with the Tribe, and
`
`by this motion, Allergan continues its efforts to extricate itself from these IPRs in a
`
`way designed to prevent a decision on the merits.
`
`The Board has dealt with similar behavior before. In Microsoft Corp. v.
`
`Global Techs., Inc., IPR2016-00669, Paper No. 35 (2017), the Board dealt with a
`
`patent ownership that had broken down leaving no one to defend the patent; it
`
`construed the situation as an abandonment and entered adverse judgment. In Shire
`
`Dev. LLC v. Lucerne Biosciences, LLC, IPR2014-00739, Paper No. 33 (2015), the
`
`Board entered adverse judgment where a patent owner was gaming the system by
`
`refusing to comply with rules and orders; again, the Board construed the behavior
`
`as an abandonment of the contest.
`
`
`
`While the manner in which a party tries to avoid judgment may vary, the
`
`underlying problem of gaming the Board’s ability to act on the merits is the same.
`
`Allergan and the Tribe have been remarkably candid about their intent to deprive
`
`the Board of its jurisdiction. E.g., EX2087, §§5.3, 7.2.8, 7.2.12,10.8.9 (granting
`
`Allergan control over IPR proceedings and prohibiting Tribe from waiving
`
`
`
`-4-
`
`
`
`immunity in them); EX1147. Their actions have significantly delayed resolution on
`
`the merits and substantially increased the cost of the proceeding. The proper
`
`response to Allergan’s deliberate gaming of the Board’s jurisdiction is an adverse
`
`judgment. §42.73(b)(4); §42.12(a)(7); §42.12(b)(8). Allowing Allergan to contract
`
`its way out of IPR proceedings would essentially render IPRs a nullity and
`
`undermine the efficient administration of Board proceedings, the integrity of the
`
`patent system, and timely completion of the proceedings. 35 U.S.C. 316(b).
`
`VI. CONCLUSION
`
`Allergan’s motion should be denied or held for decision with the Tribe’s
`
`Motion to Dismiss. Alternatively, Allergan should not be permitted to withdraw at
`
`this stage without paying a price for its misconduct: adverse judgment.
`
`
`
`Dated: January 17, 2018
`
`
`
`
`
`
`
`
`Respectfully submitted,
`/ Steven W. Parmelee /
`Steven W. Parmelee
`Reg. No. 31,990
`
`
`
`
`
`-5-
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that true and correct copies of the foregoing Petitioners’ Opposition
`
`to Patent Owner’s Motion to Withdraw was served on this 17th day of January,
`
`2018, on Allergan, Inc. and the St. Regis Mohawk Tribe as follows:
`
`Dorothy P. Whelan
`Michael Kane
`Susan Morrison Colletti
`Robert M. Oakes
`Jonathan Singer
`Fish & Richardson P.C.
`Email: IPR13351-0008IP1@fr.com
`Email: IPR13351-0008IP2@fr.com
`Email: IPR13351-0008IP3@fr.com
`Email: IPR13351-0008IP4@fr.com
`Email: IPR13351-0008IP5@fr.com
`Email: IPR13351-0008IP6@fr.com
`Email: PTABInbound@fr.com
`
`Alfonso Chan
`Joseph DePumpo
`Michael W. Shore
`Christopher L. Evans
`Shore Chan DePumpo LLP
`Email: achan@shorechan.com
`Email: jdepumpo@shorechan.com
`Email: mshore@shorechan.com
`Email: cevans@shorechan.com
`
`Marsha K. Schmidt
`Email: marsha@mkschmidtlaw.com
`
`
`
`
`
`-6-
`
`
`
`And on the remaining Petitioners as follows:
`
`Gary Speier
`Mark Schuman
`Carlson, Caspers, Vandenburgh,
`Lindquist & Schuman, P.A.
`Email: gspeier@carlsoncaspers.com
`Email: mschuman@carlsoncaspers.com
`Attorneys for Teva Pharmaceuticals USA, Inc.
`
`
`
`
`
`Michael Dzwonczyk
`Azadeh Kokabi
`Travis Ribar
`Sughrue Mion, PLLC
`Email: mdzwonczyk@sughrue.com
`Email: akokabi@sughrue.com
`Email: tribar@sughrue.com
`Attorneys for Akorn Inc.
`
`
`
`Dated: January 17, 2018
`
`
`
`
`
`Respectfully submitted,
`/ Steven W. Parmelee /
`Steven W. Parmelee, Lead Counsel
`Reg. No. 31,990
`
`
`
`
`
`-7-
`
`
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