Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: August 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01332
`Patent 8,822,438 B2
`____________
`
`Before LORA M. GREEN, RAMA G. ELLURU, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: August 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01332
`Patent 8,822,438 B2
`____________
`
`Before LORA M. GREEN, RAMA G. ELLURU, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`
`On June 30, 2016, Mylan Pharmaceuticals Inc. (“Petitioner”) filed a
`Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–20 of
`U.S. Patent No. 8,822,438 B2 (Ex. 1001, “the ’438 patent”) pursuant to
`35 U.S.C. §§ 311–319. Concurrently with its Petition, Petitioner filed a
`Motion for Joinder (Paper 3, “Mot.”), seeking to join this case, under 35
`U.S.C. § 315(c), with the inter partes review in Amerigen Pharmaceuticals,
`Ltd. v. Janssen Oncology, Inc., Case IPR2016-00286 (“the Amerigen IPR”
`and Petitioner “Amerigen”), which was instituted on May 31, 2016. See
`IPR2016-00286, slip op. at 34–35 (PTAB May 31, 2016) (Paper 14)
`(decision instituting review of claims 1–20 of the ’438 patent).
`Patent Owner Janssen Oncology, Inc. (“Patent Owner”) filed an
`Opposition to the Motion for Joinder (Paper 9, “Opp.”). Petitioner filed a
`Reply in Support of its Motion for Joinder (Paper 10, “Reply”).
`Petitioner requested a telephone conference with the Board to discuss
`Petitioner’s Motion for Joinder and Patent Owner’s due date to file a
`preliminary response. We held a conference call on August 22, 2016. On
`the call were all members of the present panel, counsel for Petitioner and
`Patent Owner, counsel for Amerigen, and counsel for Argentum
`Pharmaceuticals LLC (Petitioner in IPR2016-01317, also involving the ’438
`patent). During the conference call, we heard the parties’ views of both
`sides on the matter.
`Petitioner, during the call, presented its case for joinder, reiterating
`many of the same arguments presented in its Motion for Joinder and its
`Reply. Given the schedule of this proceeding and the schedule in the
`Amerigen IPR, Petitioner requested that Patent Owner’s due date for filing
`its Patent Owner Preliminary Response be expedited, and effectively, that
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`we consider Petitioner’s Motion for Joinder in advance of the September 20,
`2016 due date for the Patent Owner Response in the Amerigen IPR.
`IPR2016-00286, Paper 22.
`Patent Owner presented its case against joinder, reiterating many of
`the same arguments presented in its Opposition. Patent Owner opposed
`expediting the due date for filing its Patent Owner Preliminary Response.
`We have the authority to expedite a preliminary response under 37
`C.F.R. § 42.5(c)(1) (“Times set by rule . . . may be modified by order.”).
`For the following reasons, we decline to grant Petitioner’s request to
`expedite Patent Owner’s Preliminary Response.
`The parties do not appear to dispute that the issues in IPR2016-01332
`are largely the same as the issues in IPR2016-00286. Patent Owner,
`however, expressed its concern about Petitioner’s reliance on the testimony
`of a different expert than the expert retained by Amerigen in the Amerigen
`IPR, and about Petitioner’s submission of additional evidence not presented
`by Amerigen in the Amerigen IPR. Patent Owner argued that it would be
`unfair and prejudicial to have to analyze and respond to new evidence and
`address Petitioner’s expert’s testimony. Petitioner argued, during the call,
`that there are no new issues and no undue burden on Patent Owner if the due
`date for filing Patent Owner’s Preliminary Response is expedited.
`Considering the arguments presented during the call, and the additional
`evidence and testimony relied upon by Petitioner in its Petition, however, we
`decline to shorten Patent Owner’s time to file its Preliminary Response.
`Patent Owner has filed its Opposition, and confirmed during the
`conference call that it opposes the Motion for Joinder in IPR2016-01332.
`Patent Owner also has represented that it plans to file its Patent Owner
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`Preliminary Response, no later than the October 12, 2016 due date. Paper 9,
`3. Because Patent Owner has not waived the Patent Owner Preliminary
`Response or agreed to file the Patent Owner Preliminary Response prior to
`the three month default time period for filing such Response, and because
`Patent Owner opposes the Motion for Joinder, we determine that we will not
`expedite action on the Motion for Joinder. We will consider the Petition, the
`Motion for Joinder, the Opposition, and the Reply after the Patent Owner
`has filed or waived its Preliminary Response.
`If the parties stipulate to a modified schedule for IPR2016-01332 in
`which Patent Owner’s Preliminary Response is waived or submitted earlier
`than the October 12, 2016 deadline, the parties are encouraged to submit the
`same to the Board at their earliest convenience.
`
`ORDER
`
`
`In view of the foregoing, it is hereby:
`ORDERED that the deadline for filing the Patent Owner Preliminary
`Response remains October 12, 2016.
`
`
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`FOR PETITIONER:
`
`Brandon M. White
`Crystal Canterbury
`bmwhite@perkinscoie.com
`CCanterbury@perkinscoie.com
`
`FOR PATENT OWNER:
`
`Dianne Elderkin
`delderkin@akingump.com
`
`Ruben Munoz
`rmunoz@akingump.com
`
`Barbara Mullin
`bmullin@akingump.com
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