PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 1
`
` UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`---------------------------------
` :
`ARGENTUM PHARMACEUTICALS, LLC, :
` :
`et al., : IPR2016-00204
` :
` Appellants, : IPR2016-01101
` :
` v. : IPR2016-01242
` :
`RESEARCH CORPORATION : IPR2016-01245
` :
`TECHNOLOGIES, INC., : IPR2016-01248
` :
` Respondent. :
` :
`---------------------------------
`
` The telephonic conference in the
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`above-entitled matter convened at 11:03 a.m. on
`
`Tuesday, August 9, 2016, and the proceedings
`
`being taken down by stenotype and transcribed by
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`Catherine B. Crump, a Notary Public in and for the
`
`District of Columbia.
`
`BEFORE:
`
` HON. JACQUELINE WRIGHT BONILLA
`
` HON. FRANCISCO C. PRATS
`
` Patent Trial and Appeal Board Judges
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 1/40
`
`
`
`Telephonic
`
`August 9, 2016
`
`Page 1
`
` UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`---------------------------------
` :
`ARGENTUM PHARMACEUTICALS, LLC, :
` :
`et al., : IPR2016-00204
` :
` Appellants, : IPR2016-01101
` :
` v. : IPR2016-01242
` :
`RESEARCH CORPORATION : IPR2016-01245
` :
`TECHNOLOGIES, INC., : IPR2016-01248
` :
` Respondent. :
` :
`---------------------------------
`
` The telephonic conference in the
`
`above-entitled matter convened at 11:03 a.m. on
`
`Tuesday, August 9, 2016, and the proceedings
`
`being taken down by stenotype and transcribed by
`
`Catherine B. Crump, a Notary Public in and for the
`
`District of Columbia.
`
`BEFORE:
`
` HON. JACQUELINE WRIGHT BONILLA
`
` HON. FRANCISCO C. PRATS
`
` Patent Trial and Appeal Board Judges
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 1/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 2
`
`APPEARANCES:
`
`On behalf of Appellant Argentum:
`
` MATTHEW J. DOWD, ESQ.
`
` Andrews, Kurth, LLP
`
` 1350 I Street, N.W., Suite 1100
`
` Washington, D.C. 20006
`
` (202) 662-2701
`
`On behalf of Appellant Mylan:
`
` JAD MILLS, ESQ.
`
` MICHAEL ROSATO, ESQ.
`
` Wilson, Sonsini, Goodrich & Rosati
`
` 701 Fifth Avenue, Suite 5100
`
` Seattle, Washington 98104
`
` (206) 883-2699
`
`On behalf of Appellant Breckenridge:
`
` MATTHEW F. FEDOWITZ, ESQ.
`
` Merchant & Gould
`
` 1900 Duke Street, Suite 600
`
` Alexandria, Virginia 22314
`
` (703) 684-2526
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`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 2/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 3
`
`On behalf of Appellant Alembic:
`
` GARY SPEIER, ESQ.
`
` SARAH STENSLAND, ESQ.
`
` Carlson, Caspers, Vandenburgh,
`
` Lindquist & Schuman
`
` Capella Tower, Suite 4200
`
` 225 South Sixth Street
`
` Minneapolis, Minnesota 55402
`
` (612) 436-9600
`
`On behalf of the Respondent:
`
`ANDREA REISTER, ESQ.
`
`Covington & Burling, LLP
`
`One City Center
`
`850 Tenth Street, N.W.
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`Washington, D.C. 20001-4956
`
`(202) 662-6000
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 3/40
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`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 4
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` P R O C E E D I N G S
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` JUDGE BONILLA: I understand -- Mr. Fedowitz,
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`are you speaking on behalf of all three of the other
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`petitioners today or will there be people speaking on
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`-- different counsel on different parties' behalf?
`
` MR. FEDOWITZ: With regard to the joinder
`
`petitioners, yes. There are common issues amongst
`
`us. If there's something that's specific to a
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`specific petitioner, they can address it, but the
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`substance of the discussion today will be based on
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`the joint joinder of petitioners.
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` JUDGE BONILLA: And counsel for the other
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`parties, are you in agreement with Mr. Fedowitz
`
`speaking on your behalf right now?
`
` MR. MILLS: This is Jad Mills for Mylan.
`
`That's correct with regard to the joinder.
`
` MR. SPEIER: This is Gary Speier for Alembic.
`
`Yes.
`
` JUDGE BONILLA: Okay. Great.
`
` All right. Mr. Fedowitz, you initiated the
`
`call. So why don't you go ahead and get us started.
`
` MR. FEDOWITZ: Sure, Your Honor.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 4/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 5
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` The petitioners arranged for this call today
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`because we are seeking guidance on the status of our
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`joinder petition. Given that Patent Owner did not
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`oppose the motions for joinder within the one-month
`
`time period set forth at 37 C.F.R. 42.25, we were
`
`wondering how we should respond given that these are
`
`all me-too petitions and whether this will impact
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`timing of the decision on joinder.
`
` JUDGE BONILLA: Okay. Is it correct, Patent
`
`Owner, that you don't oppose the joinder motion?
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` MS. REISTER: No, Your Honor. That's not
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`correct.
`
` In the initial conference we had in the 204
`
`petition, we specifically raised this issue and were
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`advised that we could certainly put into our patent
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`owner preliminary response our oppositions to the
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`joinder, and that is our intention, to do that.
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` MR. FEDOWITZ: Your Honor, this is Matthew
`
`Fedowitz again.
`
` I think what Ms. Reister is talking about, it
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`would be an ex parte communication with the board.
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`That was never communicated to any of the joinder
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 5/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 6
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`petitioners. I've taken a look at the transcript
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`there. The transcript of that call with the board,
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`the board said "confer with the panel" twice in each
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`of these petitioners, joinder petitioners. That was
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`never done. We were never notified of any attempts
`
`to communicate with any of the panels, and then it
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`also said on page 34 of the transcript that Patent
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`Owner should reach out to confer among the parties,
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`and that was never done.
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` So this is highly prejudicial if Patent Owner
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`is keying their action in failing to file an
`
`opposition in each of the joinder petitioners as an
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`ex parte communication. There was a July 5th Order
`
`of Conduct in the initial instituted IPR and this
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`issue of opposition was never addressed in that Order
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`of Conduct.
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` Given that there is no Order on Opposition,
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`the default rules are in effect under 42.25,
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`requiring within one month an opposition to be filed
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`and then a reply to be filed after that.
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` Further, if there was any -- if an opposition
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`was to put in a preliminary response, that would be
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 6/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 7
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`highly prejudicial to the joinder petitioners as well
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`because that delays the reply three months -- more
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`than three months down the road, and not only that.
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`The preliminary response, a reply from joinder
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`petitioners is not even contemplated.
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` So all of this will just push everything down
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`the road and delay things even further than they are
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`now and stands in the way of harmonizing the cases
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`and consolidating everything together and not to
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`delay any ability for the joinder petitioners to be
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`active in the cases at hand. So all of this is very
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`prejudicial to the joinder petitioners given that
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`Patent Owner failed to follow the requirements for
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`filing an opposition, which also impacts joinder
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`petitioners from filing a reply.
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` JUDGE BONILLA: All right. Let's back up a
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`little bit.
`
` In relation to the three other petitioners,
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`Breckenridge, Alembic, and Mylan, is there a 315(b)
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`bar in place? Is it the situation where you need to
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`join in order to go forward at all?
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` MR. FEDOWITZ: Yes on behalf of Breckenridge.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 7/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 8
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` MR. SPEIER: Yes on behalf of Alembic.
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` JUDGE BONILLA: And Mylan?
`
` MR. MILLS: Yes.
`
` JUDGE BONILLA: So there's a bar in place for
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`all three.
`
` Okay. And in relation to the petitions,
`
`looking at them, I understand, if I've read them
`
`correctly, that we went forward on two grounds in the
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`decision to institute in the 204 case. There's a
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`request for rehearing pending on that in relation to
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`certain grounds.
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` Whatever we decide on the request for the
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`rehearing, are the other petitioners agreeing to
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`essentially be a me-too petition, meaning that we
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`would go forward only on those grounds; they wouldn't
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`be pursing other grounds in their petitioners; that
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`it would basically be following the Argentum petition
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`and so on?
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` MR. FEDOWITZ: Yes, Your Honor. On behalf of
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`Breckenridge, we are a me-too petitioner and we will
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`follow along as you've stated.
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` MR. SPEIER: Yes on behalf of Alembic.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 8/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 9
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` MR. MILLS: On behalf of Mylan, that is
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`correct. We have the two petitions. One of them
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`relates to the ground that is on rehearing. The
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`other one relates solely to the already instituted
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`grounds.
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` JUDGE BONILLA: So that's the difference
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`between the two, is that one is limited to what's on
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`rehearing; the other one is on the grounds that are
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`already instituted?
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` MR. MILLS: Yes. I should properly say one
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`of them has both. The second one has both, the
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`instituted and the rehearing grounds. The only
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`difference is that one also has what's currently on
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`rehearing.
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` JUDGE BONILLA: And the first one, remind me
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`what's in the first one.
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` MR. MILLS: The first one is limited to
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`exactly what was instituted.
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` JUDGE BONILLA: Okay. Give me a moment. I'm
`
`going to confer with Judge Prats. Give me just a
`
`moment, please.
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` [Judge Bonilla and Judge Prats confer.]
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 9/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 10
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` JUDGE BONILLA: This is Judge Bonilla and
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`Judge Prats back on the line. We have a few followup
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`questions.
`
` In relation to the latter three petitioners
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`and also with the current petition in the 204, what
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`are your plans in terms of addressing the current
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`schedule that's in place right now and who will be
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`doing what and so on?
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` MR. FEDOWITZ: Your Honor, this is Matthew
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`Fedowitz on behalf of Breckenridge. Breckenridge's
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`position is that we will just take an understudy role
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`in the instituted IPR and just follow along.
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`Whatever schedule is in place, we're amenable to
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`that. We would just like to take an understudy role
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`there.
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` JUDGE BONILLA: Okay.
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` MR. SPEIER: Gary Speier for Alembic, and we
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`have the same perspective.
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` MR. MILLS: This is Jad Mills for Mylan. We
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`have the same perspective, as an understudy.
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` JUDGE BONILLA: Okay. So the idea would be
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`that Argentum would be going forward and you would
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 10/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 11
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`just be named as a party on there, but, otherwise,
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`you wouldn't be taking your own depositions. You
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`wouldn't be filing separate papers and making
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`separate arguments or needing additional time at the
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`hearing; is that correct?
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` MR. FEDOWITZ: That's correct. I should say
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`should there be an issue that's unique to
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`Breckenridge, perhaps we would like to be able to
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`address that and not be totally barred, but,
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`otherwise, we would completely take an understudy
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`role.
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` JUDGE BONILLA: To the extent that comes up,
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`we'll take it up. That's something you can raise in
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`a conference call with the board. We can deal with
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`that as it comes up.
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` MR. FEDOWITZ: Okay.
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` JUDGE BONILLA: Now, there is a motion to
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`consolidate this case with a related re-exam. I
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`assume that the other petitioners know about that.
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` MR. FEDOWITZ: Yes. We're aware of it.
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` JUDGE BONILLA: And is it the same situation,
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`that you'll just be an understudy role and all of
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 11/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 12
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`that, depending on how that goes out?
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` MR. FEDOWITZ: On behalf of Breckenridge,
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`that's correct.
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` MR. SPEIER: On behalf of Alembic, that's
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`correct as well.
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` MR. MILLS: And same for Mylan.
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` MR. DOWD: Your Honor, this is Matthew Dowd
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`for Argentum. I'd just like to raise one possible
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`issue that could complicate matters, and I'm not
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`really sure how it will play out because the board
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`hasn't ruled on our motion, of course; but from my
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`understanding in my previous conversation with the
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`other petitioners, there may be a disagreement as to
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`the potential estoppel role that might take effect if
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`the re-examination were consolidated with the pending
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`IPR and to the extent that the petitioner would be
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`estopped from raising an obviousness-type double
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`patenting argument in a separate proceeding, and as
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`the board is aware based on our papers, Argentum has
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`taken the position and we think that this is the
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`proper position from the reading of the statute and
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`the rules, that once it's consolidated, the issue
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Breckenridge Pharm. v. Research Corp. Techs., IPR2016-01242
`RCT EX. 2001 - 12/40
`
`
`
`PTAB Conference
`
`Telephonic
`
`August 9, 2016
`
`Page 13
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`that comes in in this case, obviousness-type double
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`patenting would be subject to the estoppel provision.
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`I understand, and I'm not putting words in their
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`mouth, but it's my understanding that the other
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`petitioners may disagree with that argument, and I
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`just want to raise that issue for the board's
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`consideration and information.
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` JUDGE BONILLA: Well, thanks for the
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`information. I'm not sure that it has much impact on
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`us and our decision here. The parties have just
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`agreed to be an understudy role regardless of how the
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`case comes out. So unless that's different, I'm not
`
`sure why that's relevant to the board's decision on
`
`the matter.
`
` Do the parties see it differently?
`
` MR. SPEIER: Alembic does not.
`
` MR. FEDOWITZ: Neither does Breckenridge.
`
` MR. MILLS: Mylan sees it the way the judge
`
`said.
`
` JUDGE BONILLA: Okay. If you don't mind
`
`holding on for just one minute, I want to confer with
`
`Judge Prats and we'll be back in just a moment.
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`August 9, 2016
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` MS. REISTER: Your Honor, this is the patent
`
`owner.
`
` JUDGE BONILLA: Yes. Go ahead.
`
` MS. REISTER: Could I just make a few points?
`
` JUDGE BONILLA: Sure.
`
` MS. REISTER: So with respect to the 01248
`
`petition, that's the petition that -- and the motion
`
`that sought joinder to the ground that was instituted
`
`as well as the ground that's on rehearing. I just
`
`want to note that that particular petition includes
`
`additional evidence and an additional declarant. So
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`it's really not on all fours as a me-too petition.
`
` With respect to each of the motions for
`
`joinder, each of the parties requested the ability to
`
`seek additional pages for disagreement with the
`
`board. So that represents three parties that could
`
`potentially be seeking that, not just one.
`
` With respect to the hearing time, again, I
`
`would expect that every party will be willing to
`
`agree that the hearing time remains the same as well
`
`as cross-examination time.
`
` I think the other point I would want to make
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`to the board is that with respect to the Patent Owner
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`preliminary response, we at this time do anticipate
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`having a substantive response.
`
` JUDGE BONILLA: Right. Okay. Thank you and
`
`thank you for raising those points.
`
` Mylan, let me -- the patent owner raises a
`
`good point about the 1248 case, citing additional
`
`evidence. My understanding is that relates to the
`
`Legall reference which was already dealt with in the
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`prior decision to institute. Are you at this point
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`willing to follow whatever happens in relation to the
`
`request for rehearing that's already pending in the
`
`204 case?
`
` MR. MILLS: Yes, Your Honor. We understand
`
`that the 1248 petition, if joined, is subject to the
`
`board's decisions in the 1204 IPR.
`
` JUDGE BONILLA: Okay. So however that comes
`
`out is what will dictate in this case, and my
`
`understanding is the other concerns that Patent Owner
`
`raised, request for additional pages, hearing time,
`
`and so on, that that won't be necessary, that this
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`will be a true me-too and will be a follow-on and
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`August 9, 2016
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`you'll be -- as you mentioned already, it would be
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`Argentum leading the cause with the pages and
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`everything else, as we already have talked about,
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`with the exception, the possible exception, of
`
`something unique coming up in relation to a party
`
`that would raised separately in a separate call.
`
` Is that what the three latter petitioners
`
`understand at this point?
`
` MR. FEDOWITZ: Yes, for Breckenridge.
`
` JUDGE BONILLA: I heard Breckenridge. Is
`
`that true for the other two petitioners as well?
`
` MR. SPEIER: Yes.
`
` MR. MILLS: Yes for Mylan.
`
` JUDGE BONILLA: Okay. Thank you.
`
` All right. Give me just a moment. I'm going
`
`to confer with Judge Prats and we will be back in a
`
`moment.
`
` [Judge Bonilla and Judge Prats confer.]
`
` JUDGE BONILLA: This is Judge Bonilla and
`
`Judge Prats again. We are going to need just a
`
`couple more minutes. If you don't mind waiting just
`
`a few more minutes, we'll be back on the line.
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` Thanks so much.
`
` [Judge Bonilla and Judge Prats further
`
`confer.]
`
` JUDGE BONILLA: Hello. This is Judge Bonilla
`
`and Judge Prats on the line again.
`
` Is everybody still here?
`
` MR. FEDOWITZ: Breckenridge is.
`
` MS. REISTER: Patent Owner is.
`
` MR. DOWD: Yes for Argentum.
`
` MR. MILLS: Yes for Mylan.
`
` JUDGE BONILLA: Was that everybody?
`
` PARTICIPANTS IN UNISON: Yes.
`
` JUDGE BONILLA: Okay. Great.
`
` All right. Patent Owner, we want to follow
`
`up with some questions to you.
`
` It sounds to me like we're dealing with a
`
`true me-too situation where the latter three
`
`petitioners are willing to basically follow along
`
`with what's already going to be in place for
`
`Argentum. My understanding is that they will be
`
`relying on all evidence and arguments that were made
`
`in that petition and based on the grounds that are
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`going forward with in the decision to institute. We
`
`understand that there is a request for rehearing
`
`that's outstanding, but however that's decided in the
`
`204 case, based on the evidence in that case, is what
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`will be dictated about what happens in relation to
`
`those parties, that they won't be asking for
`
`additional pages or time or separate briefings.
`
` In that situation, do you oppose their
`
`motions for joinder?
`
` MS. REISTER: Given all of the constructs in
`
`terms of no additional pages, no separate
`
`cross-examination or redirect time, that all
`
`discovery will be conducted within the original time
`
`and that we're not talking about any additional
`
`hearing time or any additional declarants, then I
`
`think that the patent owner with those constructs in
`
`the order, that we would not have additional
`
`opposition, but I do reiterate that the patent owner
`
`does plan to file a preliminary response with some
`
`substantive arguments based upon recent Federal
`
`Circuit case law.
`
` JUDGE BONILLA: Is that something that you
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`would be opposed to expediting under the
`
`circumstances?
`
` Let me ask you, also, is this going to be
`
`separate from what -- I mean, you have a Patent Owner
`
`response that's also due in the 204 case.
`
` MS. REISTER: Correct. The patent owner
`
`response that's due in the 204 case will be filed on
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`August 15th, which is its due date. The preliminary
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`response that we intend to file in the other
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`proceeding will be separate and apart from that and
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`we would like the opportunity to file that separately
`
`in each of those proceedings prior to the board
`
`making its decision on those petitions in the
`
`joinder.
`
` So we would be amenable to expediting the
`
`filing of the preliminary response in the four
`
`proceedings and we could -- the proceeding, the first
`
`proceeding, the first preliminary response is due on
`
`September 4th and the other ones are due much later.
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`They're due on September 30 and October 1, and what
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`we would propose is to leave the preliminary response
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`date in the first proceeding of September 4th, leave
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`Page 20
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`that date and accelerate the other three to September
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`12th.
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` JUDGE BONILLA: Why do you need three
`
`separate responses if they're all me-too if they're
`
`identical? It sounds like --
`
` MS. REISTER: I see your point. In terms of
`
`-- I think with respect to -- again, with respect to
`
`the 1248 proceeding, we would want it to be clear
`
`that that's going to rise and fall with the request
`
`for rehearing and that the additional evidence and
`
`declaration would not play a role in any joined
`
`proceedings. We would want to make that clear.
`
` In terms of the substantive response on the
`
`other ones, I think given that we could file them all
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`by the first deadline of September 4, we would agree
`
`to do that.
`
` JUDGE BONILLA: So in relation to the issues
`
`as they stand now, not taking into account the
`
`request for rehearing, you want additional briefing
`
`in the patent owner preliminary response that's above
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`and beyond what you're doing in the patent owner
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`response in the 204? Is that what you're asking?
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`August 9, 2016
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`Page 21
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` MS. REISTER: We're asking for the right to,
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`yes, to file the preliminary response in all of these
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`proceedings so that we can specifically articulate
`
`some arguments with respect to non-institution on
`
`particular claims.
`
` JUDGE BONILLA: I'm sorry. You want to
`
`address arguments where we didn't previously
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`institute?
`
` MS. REISTER: No. We want to address
`
`particular arguments in the preliminary responses
`
`with respect to some intervening case law that we
`
`think bears on whether or not the institution on
`
`certain claims should take place.
`
` JUDGE BONILLA: Keep in mind we've already
`
`instituted on two grounds in the 204 case.
`
` MS. REISTER: Understood. Understood.
`
` JUDGE BONILLA: Would you be making your same
`
`arguments in the patent owner response?
`
` MS. REISTER: In the patent owner response,
`
`the arguments are similar, but they're a little
`
`different because they're already instituted. So the
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`posture is a little bit different.
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`Page 22
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` JUDGE BONILLA: Give me a moment, please.
`
` [Judge Bonilla confers with Judge Prats.]
`
` JUDGE BONILLA: Before we go much farther,
`
`I'm going to go ahead and ask Petitioners to respond
`
`to what Patent Owner just said. We'll go ahead and
`
`start with Breckenridge since you led the call.
`
` MR. FEDOWITZ: Sure. I think at the outset,
`
`the patent owner did not oppose the joinder
`
`petitions. They are all me-too petitions.
`
` JUDGE BONILLA: It sounds to me like they're
`
`not opposing it now. I mean, that's what I heard
`
`them saying, is if it's a true me-too. That's what I
`
`heard Patent Owner say, but I also heard Patent Owner
`
`say, however, that they want to have a patent owner
`
`response to respond to the petition based on
`
`intervening case law.
`
` Do you have a response to that?
`
` MR. FEDOWITZ: We think that's unnecessary.
`
`In fact, we're seeking today an order from the board
`
`jointly granting the motions to joinder. There is
`
`nothing new that would come out. If they want to
`
`provide briefing on a specific case, they can do
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`August 9, 2016
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`Page 23
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`that, but given that these are virtually or very
`
`similar or virtually identical petitions, we're ready
`
`to go ahead now to harmonize the schedules and
`
`consolidate these petitions with the instituted IPR.
`
` JUDGE BONILLA: Do any of the other
`
`petitioners have additional commentary?
`
` MR. SPEIER: Alembic does not.
`
` MR. MILLS: Not at this time from Mylan.
`
` MR. FEDOWITZ: In addition, Your Honor, I
`
`have one other point. Should Patent Owner have a
`
`preliminary response, we're seeking that they be
`
`barred from arguing any delay for the delay in timing
`
`incurred by the joinder regarding harmonization of
`
`the schedule.
`
` MR. DOWD: Your Honor, this is Matthew Dowd
`
`for Argentum.
`
` JUDGE BONILLA: Yes.
`
` MR. DOWD: I just have a question. I've been
`
`following the conversation and I heard both sides and
`
`I'm not really trying to interject any unnecessary
`
`commentary, but I guess the question I have that I'm
`
`just trying to understand, what the patent owner is
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`Page 24
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`proposing since I understood that they agreed to
`
`joinder given your construct in terms of limiting the
`
`proceeding going forward, and then I don't understand
`
`the purpose of -- well, given that agreement, I don't
`
`understand the purpose of filing a patent owner
`
`preliminary response that would then attack the
`
`merits of the petition, which from what I understand
`
`--
`
` JUDGE BONILLA: Let me cut you off there,
`
`because this does lead me to a question for Patent
`
`Owner. This is something I'm trying to work through
`
`myself.
`
` So you want to file a Patent Owner
`
`preliminary response so that you could potentially
`
`argue that we shouldn't institute on certain grounds
`
`in relation to certain petitioners? Because we've
`
`already instituted in the 204 on certain grounds in
`
`relation to that petitioner.
`
` You want an opportunity to argue that we
`
`wouldn't institute in relation to certain grounds or
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`all of the grounds in relation to the petitioner, but
`
`we would still be going on in the 204 and you would
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`still have to respond there. If they're a true
`
`me-too, they would just be sitting there as a silent
`
`party.
`
` It's not abundantly clear to me what benefit
`
`you get from that if you were to have a patent owner
`
`response as opposed to just being able to do it in
`
`your patent owner response in the 204, but if you
`
`need additional time or something like that, we can
`
`talk about it, but it sounds to me you're not opposed
`
`to the joinder if it's a true me-too situation, and
`
`if we do join, they're going to be joined to that
`
`case which is already going forward on those grounds
`
`in relation to at least one petitioner.
`
` So I'm not exactly sure what the benefit is
`
`to you of filing a patent owner preliminary response
`
`about intervening law in those cases. Do you want to
`
`respond to that?
`
` MS. REISTER: Certainly, Your Honor. I think
`
`it really goes to the issue of the evidence, and I
`
`think that -- I understand that the 204 proceeding is
`
`going forward. It's been instituted, but the
`
`question of whether all of these parties join up to
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`each of the instituted grounds on all of the claims,
`
`I think does bear on some intervening case law. I
`
`think that --
`
` JUDGE BONILLA: So it sounds like what you're
`
`actually saying is that you're opposing the motion to
`
`join for some reason. I mean, notwithstanding the
`
`fact that it's me-too and all the other things that
`
`we just talked about, that you're actually opposing
`
`the motion for joinder. Is that the issue?
`
` MS. REISTER: I think, in essence, yes. I
`
`think that with respect to when you sit back and look
`
`at it, I think that, yes, we have some substantive
`
`issues that do bear on this whole issue. So from
`
`that perspective, we do oppose the joinder as to the
`
`parties with respect to these claims, and all we're
`
`asking for is the opportunity to provide a
`
`preliminary response to lay that out.
`
` JUDGE BONILLA: So I'm just trying to figure
`
`out whether this is going t
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