`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: October 24, 2016
`
`
`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 IPR2016-01248
`Patent RE38,551 E
`____________
`
`
`Before FRANCISCO C. PRATS, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review and Motion for Joinder
`35 U.S.C. § 314, 37 C.F.R. §§ 42.108 and 42.122
`
`
`
`
`
`
`IPR2016-01248
`Patent RE38,551 E
`
`
`Petitioner Mylan Pharmaceuticals, Inc. filed a Petition requesting an
`inter partes review of claims 1–13 of U.S. Patent No. RE38,551 E (Ex.
`1001, “the ’551 patent”). Paper 2. Along with the Petition, Petitioner filed a
`Motion for Joinder requesting that we join that it as a party to Argentum
`Pharmaceuticals LLC v. Research Corporation Technologies, Inc.,
`IPR2016-00204 (“Argentum IPR”). Paper 3 (“Joinder Mot.”).
`As stated in the Motion for Joinder, Petitioner previously filed a
`“substantial copy” of the Petition in the Argentum IPR in Mylan
`Pharmaceuticals, Inc. v. Research Corporation Technologies, Inc.,
`IPR2016-01101 (“prior Mylan IPR”). Joinder Mot. 1–2. In the prior Mylan
`IPR, Petitioner also filed “a motion to join IPR2016-00204 as to instituted
`Grounds 3A–3B” in the Argentum IPR. Id.
`As stated by Petitioner, the current Petition is also a “substantial
`copy” of the Petition in the Argentum IPR, with the exception of certain
`“modifications.” Id. at 2. Those modifications include the “contingent
`reliance on the expert declaration of Dr. Lars J.S. Knutsen (Ex. 1102)” and
`“submission of conclusive evidence of the public availability of the LeGall
`thesis.” Id.
`As discussed in an Order we issued after Petitioner filed its current
`Petition, in a conference call with Petitioner and other relevant Petitioners,1
`Petitioner agreed to assert only arguments and evidence of record in
`IPR2016-00204 in this case, and to not rely on any additional evidence
`raised in the Petition or Motion for Joinder. Paper 6, 3. Based on that
`
`
`1 Argentum Pharmaceuticals LLC is Petitioner in Case IPR2016-00204,
`Breckenridge Pharmaceutical, Inc. is Petitioner in Case IPR2016-01242, and
`Alembic Pharmaceuticals, Ltd. is Petitioner in Case IPR2016-01245.
`2
`
`
`
`
`
`IPR2016-01248
`Patent RE38,551 E
`
`agreement, and because Petitioner is so limited in this case, the Petition
`essentially becomes identical to the Petition that Petitioner already filed in
`the prior Mylan IPR (IPR2016-01101).
`Institution of an inter partes review is subject to the Board’s
`discretion. See 37 C.F.R. § 42.108(b). By statute, “[i]n determining whether
`to institute or order a proceeding under this chapter, chapter 30, or chapter
`31, the Director may take into account whether, and reject the petition or
`request because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” 35 U.S.C. § 325(d). For the
`reasons discussed above, the current Petition presents the same prior art and
`arguments previously presented by the same Petitioner in IPR2016-01101.
`Accordingly, we exercise our discretion to deny institution of inter partes
`review in this case under 35 U.S.C. § 325(d).
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’551 patent.
`
`
`
`
`3
`
`
`
`IPR2016-01248
`Patent RE38,551 E
`
`
`PETITIONER:
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`PATENT OWNER:
`Andrea G. Reister
`Jennifer L. Robbins
`Enrique D. Longton
`COVINGTON & BURLING LLP
`areister@cov.com
`jrobbins@cov.com
`rlongton@cov.com
`
`
`
`
`
`4
`
`
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