UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
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`v.
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`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`
`Case No. IPR2016-01317
`Patent No. 8,822,438
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`PETITIONER’S MOTION FOR JOINDER
`42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`
`Case No. IPR2016-01317
`Patent No. 8,822,438
`
`PETITIONER’S MOTION FOR JOINDER
`42.122(b)
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Argentum Pharmaceuticals LLC (“Argentum” or “Petitioner”) submits,
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`concurrently with this motion, a petition for inter partes review (“Petition”) of
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`claims 1-20 of U.S. Patent No. 8,822,438 (“the ’438 patent”) to Auerbach et al.
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`(“the ‘438 patent”) (Ex. 1001), which is assigned to Janssen Oncology, Inc.
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`(“Janssen”). Argentum respectfully requests joinder pursuant to 35 U.S.C.
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`§ 315(c) and 37 C.F.R.§ 42.122(b) of the concurrently filed Petition with a
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`pending inter partes review filed by Amerigen Pharmaceuticals, Ltd.
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`(“Amerigen”), Amerigen Pharmaceuticals, Ltd. v. Janssen Oncology, Inc.,
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`IPR2016-00286 (“Amerigen IPR”). Joinder is appropriate because it will
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`promote efficient and consistent resolution of the validity of a single patent and
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`will not prejudice any of the parties to the Amerigen IPR.
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`Argentum’s request for joinder is timely under 37 C.F.R. § 42.122(b),
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`because it is submitted within one month of May 31, 2016, the date of the
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`Board’s institution decision in IPR2016-00286.
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`II. BACKGROUND
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`On December 4, 2015, Amerigen filed a petition for inter partes review
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`challenging claims 1-20 of the’438 patent, which was assigned Case No.
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`IPR2016-00286. On May 31, 2016, the Board instituted review on claims 1-20
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`on two grounds: (1) Claims 1–20 as obvious under 35 U.S.C. § 103 over
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`O’Donnell and Gerber; and (2) Claims 1–4 and 6–11 as obvious under 35 U.S.C.
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`§ 103 over Barrie and Gerber. The accompanying Petition presents only the
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`identical grounds on which the Amerigen IPR was instituted.
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`III. ARGUMENT
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`A. Legal Standard
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`The Board has authority to join as a party any person who properly files
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`a petition for inter partes review to an instituted inter partes review. 35 U.S.C.
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`§ 315(c). A motion for joinder must be filed within one month of institution of
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`any inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b).
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`In deciding whether to grant a motion for joinder, the Board considers several
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`factors including: (1) the reasons why joinder is appropriate; (2) whether the
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`party to be joined has presented any new grounds of unpatentability; (3) what
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`impact, if any, joinder would have on the trial schedule for the existing review;
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`and (4) how briefing and discovery may be simplified. See, e.g., Hyundai
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`Motor Co. v. Am.Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3
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`(Oct. 24, 2014); Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4
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`(Aug. 13, 2014) (quoting Kyocera Corporation v. Softview LLC, IPR2013-
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`00004, Paper 15 at 4 (April 24, 2013)).
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`B.
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`The Relevant Factors Weigh in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder.
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`1.
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`Joinder is Appropriate
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`Joinder with IPR2016-00286 is appropriate because the Petition is limited
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`to the same grounds instituted in the IPR2016-00286 petition. It also relies on
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`the same prior art analysis and expert testimony submitted by Amerigen. Indeed,
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`the Petition is nearly identical with respect to the grounds raised in the IPR2016-
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`00286 petition, and does not include any grounds not raised in that petition.
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`In order to further simplify the proceeding, Argentum will rely on the same
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`expert as Amerigen, should Amerigen permit it. If Amerigen allows Argentum to
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`retain the same expert, then Argentum will withdraw its expert declaration of Dr.
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`Devalingam Mahalingam and rely solely on the declaration and testimony of
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`Amerigen’s expert, Dr. Scott R. Serels. The Board has previously acknowledged
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`that such concessions on the part of a party seeking to join are sufficient to
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`minimize the impact on the original proceeding (see SAP America Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13, page 4).
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`Joinder is also appropriate because it will promote the just, speedy, and
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`inexpensive resolution of patentability issues, including the determination of
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`validity of the challenged claims of the ’438 patent. For example, a final written
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`decision on the validity of the ’438 patent has the potential to minimize issues and
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`potentially resolve any litigation—current or future—altogether with respect to
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`the ’438 patent.
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`2.
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`No New Grounds Are Presented
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`The Petition does not present any new ground of unpatentability. As
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`mentioned above, the Petition presents for review only grounds from the petition
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`in IPR2016-00286 that have been instituted. The present Petition is based on the
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`same prior art analysis and expert testimony submitted by Amerigen. See, e.g.,
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`Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony Corp. of Am. v. Network-1
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`Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-9 (Sep. 16, 2013); Dell
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`Inc. v. Network-1 Solutions, Inc., IPR2013- 00385, Paper No. 17, at 6-10 (Jul.
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`29, 2013); Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at
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`4-10 (June 20, 2013).
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`3.
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`Joinder Will Not Negatively Impact the IPR2016-
`00286 Trial Schedule
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`Because the Petition essentially copies grounds raised in the IPR2016-
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`00286 petition, including the prior art analysis and expert testimony provided by
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`Amerigen, joinder will have no substantial effect on the parties, or prevent the
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`Board from issuing a final written decision in a timely manner. Moreover, as
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`discussed below, Argentum anticipates participating in the proceeding in a
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`limited capacity as an understudy, absent termination of Amerigen as a party.
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`Accordingly, Argentum does not believe that any extension of the trial schedule
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`will be required as a result of joinder.
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`4.
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`Discovery and Briefing Can Be Simplified
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`Given the Petition is substantively identical to the IPR2016-00286
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`petition, the Board may adopt procedures similar to those used in other cases to
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`simplify briefing and discovery during trial. See e.g., Hyundai, IPR2014-01543,
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`Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17 at 8-10; Motorola,
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`IPR2013-00256, Paper 10 at 8-10. Specifically, as long as Amerigen remains a
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`party, the Board may order petitioners to consolidate filings and to limit
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`Argentum to no additional filings in its understudy role. As long as Amerigen
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`remains a party, Argentum will not submit any separate filings unless it disagrees
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`with Amerigen’s position, and in the event of such disagreement it will submit a
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`short separate filing directed only to points of disagreement with Amerigen. The
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`Board may allow the Patent Owner a corresponding number of pages to respond
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`to any separate filings. See Dell Inc., supra, at 8-9.
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`Further, so long as Amerigen agrees to allow Argentum to retain and rely
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`on Dr. Serels, no additional depositions will be needed, and the depositions will
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`be completed within ordinary time limits. As discussed above, if Amerigen
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`allows Argentum to retain the same expert, then Argentum will withdraw its
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`expert declaration of Devalingam Mahalingam and rely solely on the declaration
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`and testimony of Amerigen’s expert, Dr. Scott Serels. The Board has previously
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`acknowledged that such concessions on the part of a party seeking to join are
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`sufficient to minimize the impact on the original proceeding (see SAP America
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`Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13, page 4).
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`IV. CONCLUSION
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`For the foregoing reasons, Argentum respectfully requests that this motion
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`be granted and an inter partes review of the challenged claims 1-20 be instituted
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`based on the same grounds authorized and for the same reasons discussed in the
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`Institution Decision in IPR2016-00286, and that this proceeding be joined with
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`IPR2016-00286.
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`Dated: June 29, 2016
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`Respectfully submitted,
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`/Teresa Stanek Rea/
`Teresa Stanek Rea
`Reg. No. 30,427
`CROWELL & MORING LLP
`Intellectual Property Group
`P.O. Box 14300
`Washington, DC 20044-4300
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), the undersigned hereby
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`certifies that this Motion for Joinder was served in its entirety on June 29, 2016
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`via FedEx® on the Patent Owner by serving the correspondence address of record
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`for the ‘438 Patent:
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`Joseph F. Shirtz
`Johnson & Johnson
`One Johnson & Johnson Plaza
`New Brunswick, New Jersey 08933-7003
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`A courtesy copy of the foregoing was also served via email on the counsel
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`of record for the Petitioner and Patent Owner in Amerigen Pharmaceuticals Ltd.
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`v. Janssen Oncology, Inc., IPR2016-00286 as follows:
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`Amerigen Pharmaceuticals Ltd.
`bill@miplaw.com
`materassi@miplaw.com
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`Janssen Oncology, Inc.
`Jans-zytiga@akingump.com
`zytigaIPRTeam@sidley.com
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`
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`Dated: June 29, 2016
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`Respectfully submitted,
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`
` /Shannon M. Lentz/
`Shannon M. Lentz
`Reg. No. 65,382
`CROWELL & MORING LLP
`Intellectual Property Group
`P.O. Box 14300
`Washington, DC 20044-4300
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`-8-
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