IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC
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`Petitioner,
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`v.
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`ALLERGAN, INC.
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`Patent Owner.
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`
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`U.S. Patent No. 8,629,111
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`Inter Partes Review No. IPR2016-01232
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`PETITIONER ARGENTUM PHARMACEUTICALS LLC’S MOTION FOR
`JOINDER UNDER 35 C.F.R. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`ARGENTUM PHARMACEUTICALS LLC
`
`Petitioner,
`
`v.
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`ALLERGAN, INC.
`
`Patent Owner.
`
`
`
`U.S. Patent No. 8,629,111
`
`Inter Partes Review No. IPR2016-01232
`
`PETITIONER ARGENTUM PHARMACEUTICALS LLC’S MOTION FOR
`JOINDER UNDER 35 C.F.R. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b)
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`TABLE OF CONTENTS
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`I. STATEMENT OF PRECISE RELIEF REQUESTED .......................................... 1
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`II.
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`STATEMENT OF MATERIAL FACTS ............................................................ 2
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`III. APPLICABLE LEGAL STANDARD ................................................................ 3
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`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED ............................ 3
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`A.
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`Joinder is Appropriate Because It Would Promote Efficient Resolution of
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`Identical Challenges in a Single Proceeding ............................................................. 3
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`B. No New Grounds of Unpatentability ............................................................... 5
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`C. No Impact on the Trial Schedule ..................................................................... 6
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`D. How Briefing and Discovery May be Simplified ............................................ 6
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`V. CONCLUSION ................................................................................................... 7
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`
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`i
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner Argentum Pharmaceuticals LLC (“Argentum”) submits this
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`Motion for Joinder under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and
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`42.122(b), together with a Petition for Inter Partes Review of U.S. Patent No.
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`8,629,111. Argentum requests joinder of the instant IPR proceeding with an IPR
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`filed by Mylan Pharmaceuticals Inc. (“Mylan”) involving the same patent claims
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`and the same grounds of unpatentability. Mylan Pharms. Inc. v. Allergan, Inc.,
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`Case IPR2016-01128 (filed June 3, 2016) (the “Mylan IPR”).
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`Argentum’s request for joinder is timely because it was filed before the
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`institution date of the Mylan IPR and, therefore, “no later than one month after the
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`institution date of any inter partes review for which joinder is requested.” 37
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`C.F.R. § 42.122(b). See Mercedes-Benz USA, LLC v. Innovative Display Techs.
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`LLC, Case IPR2015-00360, slip. op. at 4 (PTAB May 22, 2015) (Paper 22)
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`(holding joinder motion timely, as it was filed more than one month before
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`institution decision); Taiwan Semiconductor Mfg. Co. v. Zond, LLC, Case
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`IPR2014-00781, slip. op. at 4 (PTAB May 29, 2014) (Paper 5) (explaining that pre-
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`institution joinder movant “should indicate whether it would withdraw non-
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`instituted grounds of unpatentability should the Board institute an inter partes
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`review with less than all of the asserted grounds of unpatentability in [the earlier-
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`filed, not-yet-instituted IPR] proceedings”).
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`-1-
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On June 3, 2016, Mylan filed an IPR petition against claims 1-27 of
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`U.S. Patent No. 8,629,111, which was accorded Case No. IPR2016-01128 (the
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`“Mylan IPR”).
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`2.
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`The Mylan IPR Petition asserts the following grounds of
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`unpatentability:
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`a. Ground 1: Claims 1-27 are anticipated under § 102 by Ding
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`’979;
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`b. Ground 2: Claims 1-27 are obvious under Ding ’979 and Sall;
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`and
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`c. Ground 3: Claims are obvious under §103 over Ding ’979, Sall,
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`and Acheampong.
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`3.
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`Today, concurrent with the instant motion for joinder, Argentum filed
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`an IPR petition that was accorded Case No. IPR2016-01232, asserting the same
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`grounds of unpatentability against the same patent claims as in the Mylan IPR. As
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`stated in Argentum’s IPR Petition and in this motion, Argentum is willing to
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`withdraw any grounds of unpatentability that the Board denies in the Mylan IPR
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`Petition.
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`4.
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`Argentum’s IPR Petition is substantively identical to Mylan’s IPR
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`Petition and includes all the same exhibits as those filed in the Mylan IPR, except
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`-2-
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`for additional Exhibits 1025-1026 and the “Additional Arguments And/Or
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`Reasoning” section of Argentum’s IPR Petition. As stated in Argentum’s IPR
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`Petition and in this motion, Argentum is willing to withdraw Exhibits 1025-1026
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`and the “Additional Arguments And/Or Reasoning” section to facilitate joinder If
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`the Board deems such a withdrawal necessary in order to join the two proceedings.
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`III. APPLICABLE LEGAL STANDARD
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`The Leahy-Smith America Invents Act (AIA) gives the Board discretion to
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`join any person as a party to another petitioner’s IPR. 35 U.S.C. § 315(c). In
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`deciding whether to exercise its discretion, the Board considers factors including:
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`(1) the movant’s reasons why joinder is appropriate; (2) whether the new petition
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`presents any new grounds of unpatentability; (3) what impact, if any, joinder would
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`have on the trial schedule for the existing review; and (4) how briefing and
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`discovery may be simplified. Dell Inc. v. Network-1 Security Solutions, Inc., Case
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`IPR2013-00385, slip. op. at 4 (PTAB July 29, 2013) (Paper 17).
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`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Joinder is Appropriate Because It Would Promote Efficient Resolution
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`of Identical Challenges in a Single Proceeding
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`Joinder is appropriate here because it is the most expedient way to secure the
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`just, speedy, and inexpensive resolution of two related proceedings involving the
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`same patent in a single inter partes review. See 35 U.S.C. § 316(b); 37 C.F.R.
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`-3-
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`§ 42.1(b). Otherwise, determining the same validity questions in separate
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`concurrent proceedings would duplicate efforts and create a risk of inconsistent
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`results and piecemeal review. Accordingly, a joined inter partes review will avoid
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`inefficiency and potential inconsistency and result in a final written decision
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`without delay.
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`To facilitate joinder, Argentum has asserted the same grounds of
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`unpatentability as in Mylan’s IPR Petition and hereby agrees to: (1) withdraw any
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`grounds the Board denies in Mylan’s IPR Petition, and (2) withdraw Exhibits 1025-
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`1026 and the “Additional Arguments And/Or Reasoning” section of Argentum’s
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`IPR Petition if joinder is granted. See Taiwan Semiconductor, IPR2014-00781,
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`Paper 5, at 4 (explaining that pre-institution joinder movant “should indicate
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`whether it would withdraw non-instituted grounds of unpatentability should the
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`Board institute an inter partes review with less than all of the asserted grounds of
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`unpatentability in [the earlier-filed, not-yet-instituted IPR] proceedings”); SAP Am.
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`Inc. v. Clouding IP, LLC, Case IPR2014-00306, slip. op. at 4 (PTAB May 19,
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`2014) (Paper 13) (granting joinder where second petitioner promised to withdraw
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`its expert declaration and rely only on the first petitioner’s expert declaration).
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`Absent joinder, Argentum is not otherwise time-barred from filing a separate
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`IPR petition that would potentially burden the Board with two separate IPR trials
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`based on different grounds and evidence. This fact weighs in favor of joinder. See
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`-4-
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`Lupin Ltd. v. Horizon Therapeutics, Inc., Case IPR2016-00283, Motion at 7 (PTAB
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`Dec., 2015) (Paper 4) (joinder motion granted which argued “Lupin would not be
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`time-barred from filing the present Petition without a corresponding motion for
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`joinder”); Teva Pharms. USA, Inc. v. AstraZeneca AB, Case IPR2016-01122,
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`Motion at 11 (PTAB June 1, 2016) (Paper 6) (joinder motion arguing “Teva has an
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`independent right to file an IPR, having not been previously sued for allegedly
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`infringing AstraZeneca’s . . . patent” and thus the “Board may otherwise be
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`burdened with two proceedings.”)
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`B. No New Grounds of Unpatentability
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`Argentum’s IPR Petition presents the same three grounds of unpatentability
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`as those in Mylan’s IPR Petition. Moreover, Argentum hereby agrees to: (1)
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`withdraw any grounds the Board denies in Mylan’s IPR Petition, and (2) withdraw
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`Exhibits 1025-1026 and the “Additional Arguments And/Or Reasoning” section of
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`Argentum’s IPR Petition in the event that joinder is granted and such withdrawal is
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`deemed necessary by the Board for joinder. See Taiwan Semiconductor, IPR2014-
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`00781, Paper 5 at 4; SAP Am., IPR2014-00306, Paper 13 at 4. Because joinder will
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`not introduce any new prior art, expert declarations, or grounds of unpatentability
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`into the Mylan IPR, joining Argentum’s proceeding will not complicate the
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`substantive issues already pending in the Mylan IPR.
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`-5-
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`C. No Impact on the Trial Schedule
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`Joinder will not impact the Board’s ability to complete the Mylan IPR in a
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`timely manner, as Argentum raises the same grounds against the same claims in the
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`Mylan IPR. Moreover, because Argentum agrees to withdraw all additional
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`arguments and exhibits from its petition which differ from those in Mylan’s IPR if
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`joinder is granted, there will be no need to alter the trial schedule to accommodate
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`depositions.
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`D. How Briefing and Discovery May be Simplified
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`In an effort to simplify briefing and discovery, Argentum agrees to abide by
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`procedures the Board has adopted when granting joinder in other cases, such as
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`Dell, IPR2013-00385, and SAP Am., IPR2014-00306. In those proceedings, the
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`Board required the petitioners to make consolidated filings, for which the first
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`petitioner was responsible, and allowed the new petitioner to file an additional
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`seven-page paper addressing only points of disagreement with points asserted in
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`the consolidated filing. See Dell, IPR2013-00385, Paper 17 at 11; SAP Am.,
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`IPR2014-00306, Paper 13 at 5. The Board also permitted the patent owner to
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`respond to any separate filing, limiting the page limit to that used in the separate
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`filing. See Dell, IPR2013-00385, Paper 17 at 11; SAP Am., IPR2014-00306, Paper
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`13 at 5. Adopting similar procedures in this case will minimize any delay that
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`could arise from briefing submitted by each party, while at the same time providing
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`-6-
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`all parties an opportunity to be heard. See Dell, IPR2013-00385, Paper 17 at 8.
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`Moreover, as in the above cases, Argentum shall coordinate with Mylan
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`regarding questioning at depositions and at the oral hearing, which shall not to
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`exceed the time allotted by the rules for one party, or as otherwise agreed between
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`Mylan and Patent Owner or as ordered by the Board. See Dell, IPR2013-00385,
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`Paper 17 at 12; SAP Am., IPR2014-00306, Paper 13 at 6.
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`V. CONCLUSION
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`For the foregoing reasons, Argentum respectfully requests the Board to
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`institute its Petition for Inter Partes Review and join this proceeding with Mylan
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`Pharmaceuticals Inc. v. Allergan, Inc., Case IPR2016-01128.
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`Respectfully submitted,
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`By: /Matthew J. Dowd/ /
`Matthew J. Dowd, Lead Counsel
` (Reg. No. 47,534)
`John Murray, Back-Up Counsel
`(Reg. No. 61,497)
`Andrews Kurth, LLP
`1350 I Street NW, Suite 1100
`Washington, D.C. 20005
`Phone: (202) 662-2701
`Fax: (202) 974-9511
`MatthewDowd@andrewskurth.com
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`Counsel for Petitioner
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`Date: June 22, 2016
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`Customer No. 38598
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`-7-
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`Motion for Joinder re Inter Partes Review IPR2016-01232
`U.S. Patent No. 8,629,111
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6 (e), the undersigned certifies that on this 22nd
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`day of June, 2016, I caused to be served a true and correct copy of the foregoing
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`“PETITIONER ARGENTUM PHARMACEUTICALS LLC’S MOTION FOR
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`JOINDER” by Federal Express Next Business Day Delivery on representatives
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`of the Patent Owner at the correspondence address of the Patent Owner as
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`follows:
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`Allergan, Inc.
`2525 Dupont Drive, T2-7H
`Irvine, CA 92612-1599
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`and at other addresses also likely to affect service:
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`Dorothy P. Whelan
`Jonathan E. Singer
`FISH & RICHARDSON P.C.
`60 South Sixth Street, #3200
`Minneapolis, MN 55402
`(612) 335-5070
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`Respectfully submitted,
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`By: /Matthew J. Dowd/ /
`Matthew J. Dowd, Lead Counsel
`(Reg. No. 47,534)
`Andrews Kurth, LLP
`1350 I Street NW, Suite 1100
`Washington, D.C. 20005
`Phone: (202) 662-2701
`Fax: (202) 974-9511
`MatthewDowd@andrewskurth.com
`
`Counsel for Petitioner
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