Case IPR 2016-01640
`Patent 8,791,154
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`APOTEX INC. and APOTEX CORP.
`Petitioners
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`v.
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`ALCON RESEARCH, LTD
`Patent Owner
`__________________
`
`Patent No. 8,791,154
`Issue Date: July 29, 2014
`Title: HIGH CONCENTRATION OLOPATADINE
`OPHTHALMIC COMPOSITION
`__________________
`
`Inter Partes Review No. 2016-01640
`__________________
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`JOINT NOTICE OF STIPULATION CONCERNING JOINDER
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`Patent 8,791,154
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`APOTEX INC. and APOTEX CORP.
`Petitioners
`
`v.
`
`ALCON RESEARCH, LTD
`Patent Owner
`__________________
`
`Patent No. 8,791,154
`Issue Date: July 29, 2014
`Title: HIGH CONCENTRATION OLOPATADINE
`OPHTHALMIC COMPOSITION
`__________________
`
`Inter Partes Review No. 2016-01640
`__________________
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`JOINT NOTICE OF STIPULATION CONCERNING JOINDER
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`Case IPR 2016-01640
`Patent 8,791,154
`Apotex Inc. and Apotex Corp. (“Apotex”) filed a motion in the above-
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`captioned inter partes review seeking to join this IPR, IPR2016-01640, with
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`IPR2016-00544, which Argentum Pharmaceuticals LLC (“Argentum” or “Lead
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`Petitioner”) filed on February 2, 2016, and on which the Board instituted a trial on
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`July 18, 2016. Petitioner Apotex, Petitioner Argentum, and Patent Owner Alcon
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`Research, Ltd. (“Alcon”) have conferred, and hereby stipulate and agree as
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`follows, subject to the Board’s approval of joinder on the parties’ agreed-upon
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`terms:
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`1.
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`Alcon and Argentum will not oppose the joinder of Apotex to
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`IPR2016-00544 (the “Joined Proceeding”).
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`2.
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`Alcon waives its right to file a Patent Owner Preliminary Response in
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`IPR2016-01640.
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`3.
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`So long as Lead Petitioner is not terminated as a party, Apotex will (1)
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`file papers with Lead Petitioner as consolidated filings and will not file any papers
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`separately from Lead Petitioner except for pro hac vice motions, updated
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`mandatory notices, and similar administrative filings that do not constitute
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`argument or evidence relating to the merits; (2) only serve objections or discovery
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`requests jointly with Lead Petitioner in connection with the Joined Proceeding;
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`however, these restrictions do not apply to any discovery requests Alcon may serve
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`on Apotex; (3) will work together with Lead Petitioner to identify a single
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`Case IPR 2016-01640
`Patent 8,791,154
`questioner or defending attorney from either Lead Petitioner or Apotex for each
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`deposition in the Joined Proceeding; (4) not participate in oral argument in the
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`Joined Proceeding at the oral hearing. Apotex may attend all depositions,
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`telephonic conferences, and oral argument in the Joined Proceeding, and will be
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`served with all papers and exhibits served by Lead Petitioner on Patent Owner or
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`by Patent Owner on Lead Petitioner. Either Lead Petitioner or Apotex will take the
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`lead in raising or responding to an argument before the Board, but in no case shall
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`Lead Petitioner and Apotex both argue to the Board on the same issue unless
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`specifically requested by the Board.
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`4.
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`The parties agree that the arguments and evidence presented in
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`Apotex’s petition are duplicative of the arguments and evidence presented in Lead
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`Petitioner’s petition. Apotex agrees to proceed in the Joined Proceeding based
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`only upon the arguments and evidence advanced by Lead Petitioner.
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`5.
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`The presence of Apotex in the Joined Proceeding shall not be a basis
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`for any alteration of the schedule, nor shall Apotex’s joinder affect the times
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`allocated for cross-examination, redirect, or re-cross examination of any witness.
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`Nor shall the presence of Apotex in the Joined Proceedings be the basis for altering
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`the allotted length of any papers filed in the proceedings, unless additional length
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`is needed to address an issue unique to Apotex. In such cases, Apotex will
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`approach the Board for permission to address these issues and to obtain additional
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`3
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`Case IPR 2016-01640
`Patent 8,791,154
`length to the papers if it believes that additional length is needed. Argentum and
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`Alcon agree not to oppose any request by Apotex to the Board for permission to
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`address additional issues or for permission to obtain additional pages.
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`Notwithstanding the above, however, Alcon reserves its ability to oppose the
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`merits of any request for relief by Apotex and to argue that the Board should not
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`grant any relief sought by Apotex.
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`6.
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`In the event that Lead Petitioner is terminated from the Joined
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`Proceeding by settlement or for any other reason, Alcon and Apotex agree to
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`confer in good faith regarding a fair and efficient framework for completing the
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`/Michael R. Houston (with permission)/
`Michael R. Houston, Ph.D.
`Reg. No. 58,486
`Lead Counsel for Petitioner
`Argentum Pharmaceuticals, LLC
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`Foley & Lardner LLP
`3000 K St. N.W., Suite 600
`Washington, D.C. 20008
`312-832-4378 (Telephone)
`608-257-5035 (Facsimile)
`jmeara-PGP@foley.com
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`remainder of the Joined Proceeding.
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`Date: September 15, 2016
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
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`Lead Counsel for
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`Patent Owner
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`Williams & Connolly LLP
`725 Twelfth St., N.W.
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`Washington, D.C. 20005
`202-434-5338 (Telephone)
`202-434-5029 (Facsimile)
`dkrinsky@wc.com
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`4
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`Case IPR 2016-01640
`Patent 8,791,154
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`/Teresa Stanek Rea (with permission)/
`Teresa Stanek Rea
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`Reg. No. 30,427
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`Lead Counsel for
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`Petitioners Apotex Inc. and Apotex Corp.
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`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Ave., N.W.
`Washington, D.C. 20004-2595
`202-624-2620 (Telephone)
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`202-628-5116 (Facsimile)
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`trea@crowell.com
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`Case IPR 2016-01640
`Patent 8,791,154
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`CERTIFICATE OF SERVICE
`(37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing document was served on
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`September 15, 2016 by delivering a copy via electronic mail on the following
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`attorneys of record for the Petitioner:
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`Michael R. Houston, Ph.D. (Reg. No. 58,486)
`Joseph P. Meara, Ph.D. (Reg. No. 44,932)
`Foley & Lardner LLP, 3000 K St. N.W., Suite 600
`Washington, D.C. 20008
`jmeara-PGP@foley.com
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`Teresa Stanek Rea (Reg. No. 30,427)
`TRea@Crowell.com
`Telephone No.: (202) 624-2620
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`Deborah H. Yellin (Reg. No. 45,904)
`DYellin@Crowell.com
`Telephone No.: (202) 624-2947
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`Vincent J. Galluzzo (Reg. No. 67,830)
`VGalluzzo@Crowell.com
`Telephone No.: (202) 624-2781
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`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`Facsimile No.: (202) 628-5116
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for Patent Owner
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`Date: September 15, 2016
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