`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ACRUX DDS PTY LTD., ACRUX LIMITED, and
`ARGENTUM PHARMACEUTICALS LLC
`Petitioners,
`
`v.
`
`KAKEN PHARMACEUTICAL CO., LTD and
`VALEANT PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner
`
`
`IPR2017-001901
`Patent No. 7,214,506
`
`
`
`
`
`
`
`
`OPPOSITION TO THE MOTION TO
`TERMINATE THE PROCEEDING
`
`
`1 IPR2017-01429 was previously joined with the instant proceeding.
`
`
`
`
`
`
`IPR2017-00190
`
`
`
`I.
`
`Introduction
`Despite Patent Owner and Petitioner Acrux’s attempts to mischaracterize
`
`Petitioner Argentum’s status in this inter partes review (“IPR”) proceeding, the
`
`parties cannot escape the plain fact that Argentum remains a party in this IPR
`
`proceeding and is entitled to participate in this IPR proceeding now that it is on
`
`remand. Accordingly, the Board should deny the Joint Motion to Terminate the
`
`Proceeding (“Joint Motion”) and allow the remand to continue with Argentum as
`
`the sole Petitioner.2
`
`II.
`
` Relevant Facts
`On November 2, 2016, Acrux filed a Petition for inter partes review of U.S.
`
`Patent No. 7,214,506 (“the ‘506 patent”). See Paper 1.
`
`On May 1, 2017, the Board instituted review of the ‘506 patent based on
`
`Acrux’s Petition. See Paper 12.
`
`On May 12, 2017, Argentum filed a Petition for inter partes review of the
`
`‘506 patent together with a Motion for Joinder seeking to join the instant
`
`proceeding as a Petitioner. See Papers 2 and 3 of IPR2017-01429.
`
`On November 13, 2017, the Board granted Argentum’s Motion and joined
`
`Argentum as a Petitioner to the instant proceeding. See Paper 40.
`
`
`2 Based on the extensions of time granted in the Board’s order of June 22, 2020
`and the email of July 13, 2020, this Opposition is timely filed.
`2
`
`
`
`
`
`IPR2017-00190
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`On June 6, 2018, the Board issued a Final Written Decision in the captioned
`
`proceeding finding the claims of the ‘506 patent unpatentable. See Paper 80.
`
`On August 7, 2018, Patent Owner filed a Notice of Appeal to the Federal
`
`Circuit. See Paper 86.
`
`Petitioner Argentum did not enter an appearance at the Federal Circuit and
`
`did not participate in the appeal.
`
`During the appeal, Patent Owner and Petitioner Acrux settled their dispute
`
`involving the ’506 Patent and Petitioner Acrux submitted a Notice of Non-
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`Participation in the appeal. The U.S. Patent and Trademark Office intervened in
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`the appeal. See Joint Motion at 2.
`
`On March 13, 2020, the Federal Circuit vacated the Board’s Final Written
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`Decision and remanded the case back to the Board. Kaken Pharm. Co., Ltd. v.
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`Bausch Health Co. Inc., 952 F.3d 1346 (Fed. Cir. 2020).
`
`As of the date of this Opposition, there is no settlement between Argentum
`
`and Patent Owner, and Argentum has not filed any papers withdrawing from the
`
`captioned IPR proceeding.
`
`III. Argument
`The Joint Motion incorrectly states that there are no petitioners remaining in
`
`this IPR proceeding. To the contrary, despite its lack of participation in the appeal,
`
`Argentum remains a party to this IPR proceeding before the Board and is entitled
`
`
`
`3
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`
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`IPR2017-00190
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`to continue with the remanded proceeding. A recent Board decision makes this
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`point clear. See ARRIS International PLC v. Sony Corp., IPR2016-00834, Paper
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`56 (February 20, 2020). In the Arris case, the Petitioner Arris, settled prior to the
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`appeal proceeding. Upon remand, however, the Board noted that “Arris has not
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`formally withdrawn from the proceedings before the Board.” See Arris, IPR2016-
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`00834, Paper 56 at 4. Even with Arris remaining silent in the remand, the Board
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`proceeded in reaching a second Final Written Decision. Even more tellingly,
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`because Arris remained silent in the remand but was still a party to the
`
`proceeding—and thus did not seek to file additional arguments—the Board denied
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`Patent Owner’s attempts to supplement the record with new arguments and
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`proceeded on the existing record in reaching its Decision. See Arris, IPR2016-
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`00834, Paper 56 at 4.
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`Thus, it is clear that upon remand—irrespective of that party’s participation
`
`or lack thereof in the appeal—until a party officially withdraws from the
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`proceeding before the Board, they remain a party in the IPR proceeding. The facts
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`are even more clear in the present situation, where Argentum has not settled its
`
`dispute with Patent Owner, and thus, is entitled to proceed with the remand before
`
`the Board.
`
`IV. Conclusion
`For the foregoing reasons, Argentum respectfully requests that the Board not
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`
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`4
`
`
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`terminate the proceeding and instead allow the proceeding to continue with
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`Argentum as the sole remaining Petitioner.
`
`IPR2017-00190
`
`
`Dated: July 27, 2020
`
`Respectfully submitted,
`
` /Teresa Stanek Rea/
`Teresa Stanek Rea
`Reg. No. 30,427
`Shannon M. Lentz
`Reg. No. 65,382
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Ave, NW
`Washington, DC 20004-2595
`
`Counsel for Petitioner Argentum
`
`
`
`
`
`
`
`5
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`
`
`
`IPR2017-00190
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a true copy of the foregoing Opposition to
`
`
`
`the Motion to Terminate the Proceeding, was served via email on July 27, 2020,
`
`on the following:
`
`
`
`Patent Owner
`KakenIPR@finnegan.com
`John D. Livingstone (john.livingstone@finnegan.com);
`Naoki Yoshida (naoki.yoshida@finnegan.com);
`Toan P. Vo (toan.vo@bausch.com);
`Anthony Hartmann (anthony.hartmann@finnegan.com)
`Barbara R. Rudolph (barbara.rudolph@finnegan.com)
`Trenton Ward (trenton.ward@finnegan.com)
`
`Petitioner Acrux
`Tara Raghavan (traghavan@rmmslegal.com)
`Steven J. Birkos (sbirkos@rmmslegal.com)
`William A. Rakoczy (wrakoczy@rmmslegal.com)
`Joseph T. Jaros (jjaros@rmmslegal.com)
`
`/Shannon M. Lentz/
`Shannon M. Lentz
`Reg. No. 65,382
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Ave, NW
`Washington, DC 20004-25950
`
`
`
`
`By:
`
`6
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`
`
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