`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________
`
`FAMY CARE LIMITED
`Petitioner
`v.
`ALLERGAN, INC.
`Patent Owner
`U.S. Patent No. 8,629,111 B2 to Acheampong et al.
`Issue Date: January 14, 2014
`Title: Methods of Providing Therapeutic Effects Using Cyclosporin Components
`________________________________
`
`Inter Partes Review Trial No. 2017-00567
`________________________________
`
`PETITIONER’S REPLY MOTION FOR JOINDER
`PURSUANT TO 37 C.F.R. §§ 42.23, 42.24(c)(2), and 42.25(a)(2)
`
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`
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`I.
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`II.
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`
`
`TABLE OF CONTENTS
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`PATENT OWNER’S TERMS ........................................................................ 1
`
`RESPONSE TO PATENT OWNER’S ARGUMENTS AGAINST
`JOINDER ......................................................................................................... 1
`
`A.
`
`B.
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`FCL and Mylan’s arguments are very similar when not
`identical. ................................................................................................ 1
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`The FCL and Mylan expert affidavits are substantially
`similar. ................................................................................................... 2
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`C.
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`Discovery Consolidation and Burden ................................................... 3
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`III. CONCLUSION ................................................................................................ 5
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`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Apotex, Inc. and Mylan Pharm. Inc., v. Novartis AG and Mitsubishi Pharma
`Corp., IPR2015-00518 ............................................................................................ 3
`
`Dell, Inc. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00385 ...................................................................................................3, 4
`
`Sierra Wireless America, Inc., et al. v. M2M Solutions LLC,
`IPR2016-01073 ....................................................................................................... 4
`
`Torrent Pharm. Ltd. v. Novartis AG and Mitsubishi Pharma Corp., IPR2014-
`00784 ....................................................................................................................... 3
`
`Other Authorities
`
`37 C.F.R. § 42.101(b) ................................................................................................ 5
`
`37 C.F.R. § 42.122(b) .................................................................................................. 5
`
`37 C.F.R. § 42.23 ....................................................................................................... 1
`
`37 C.F.R. § 42.24(c)(2) ............................................................................................... 1
`
`37 C.F.R. § 42.25(a)(2) ...............................................................................................1
`
`
`
`ii
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`
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`Pursuant to 37 C.F.R. §§ 42.23, 42.24(c)(2), and 42.25(a)(2), Petitioner Famy
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`Care Limited (“FCL”) respectfully submits this Reply Motion for Joinder to reply to
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`Patent Owner Allergan Inc.’s (“Allergan”) opposition (Paper 9).
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`I.
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`PATENT OWNER’S TERMS
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`Allergan offered to withdraw its opposition to joinder if four conditions are
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`met. (Paper 9 at 2). First, FCL’s opening brief had already agreed to one of Allergan’s
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`“conditions”—that FCL agree to conduct the “cross-examination of Patent Owner’s
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`witnesses… within the timeframe that the rules allot for one party.” (Compare id. with
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`Paper 5 at 8). So, only three purported “conditions” remain in dispute. None should
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`preclude joinder.
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`II. RESPONSE TO PATENT OWNER’S ARGUMENTS AGAINST
`JOINDER
`Allergan did not refute or respond to any of FCL’s Material Facts (see Paper
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`5 at 2-4). These facts should therefore be considered admitted.
`
`A.
`Allergan alleges
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`FCL and Mylan’s arguments are very similar when not identical.
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`that Famy Care’s Petition
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`introduces “additional
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`arguments.” (Paper 9 at 2). However, as explained in FCL’s opening brief, the
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`claims challenged in each petition, and the prior art used, are identical:
`
`
`
`Mylan Petition
`
`Famy Care Petition
`
`Claims Challenged
`
`1-27
`
`1-27
`
`
`
`1
`
`
`
`
`
`Mylan Petition
`
`Famy Care Petition
`
`Cited Prior Art
`
`Ding
`
`’979,
`
`Sall,
`
`and
`
`Ding
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`’979,
`
`Sall,
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`and
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`Acheampong
`
`Acheampong
`
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`(See Paper 5, Statement of Facts, at 2-3). The Mylan and FCL Petitions also assert
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`Mylan Art
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`FCL Art
`
`FCL
`Basis
`Ding ’979
`§ 102 Ding ’979
`§ 103 Ding ’979, Sall Ding ’979, Sall
`§ 103 Ding ’979, Sall,
`Ding ’979, Sall,
`Acheampong
`Acheampong
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`identical grounds for unpatentability:
`
`Ground Mylan
`Claims
`1-27
`1-27
`11, 16
`
`1
`2
`3
`
`FCL
`Claims
`1-27
`1-27
`11, 16
`
`Mylan
`Basis
`§ 102
`§ 103
`§ 103
`
`
`(Id.) It would waste Board and party resources for these very similar petitions to
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`proceed separately, with separate discovery, briefing, motions, and argument.
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`The FCL and Mylan expert affidavits are substantially similar.
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`B.
`Allergan notes FCL relies on two new experts rather than relying on
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`Mylan’s expert. (Paper 9 at 2). But the FCL experts support grounds for
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`unpatentability nearly identical to Mylan’s as discussed above. Moreover, as noted
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`in the motion, FCL’s experts include a distinguished clinician who can provide the
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`Board a valuable perspective on the secondary considerations arguments Allergan
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`leans heavily on. As the Board has noted, secondary considerations evidence is
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`most appropriately developed during trial, and Dr. Lemp will help do so. FCL’s
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`experts respond to Allergan’s proffered secondary considerations evidence, and
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`
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`2
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`
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`will therefore aid the Board. (Paper 5 at 3-4). The Board has previously joined two
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`IPR proceedings even where the second IPR petition relied on a different expert
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`declaration. (See, e.g., Apotex, Inc. and Mylan Pharm. Inc., v. Novartis AG and
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`Mitsubishi Pharma Corp., Paper No. 8, at 3, 4, IPR2015-00518 (February 17, 2015);
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`Torrent Pharm. Ltd. v. Novartis AG and Mitsubishi Pharma Corp., Paper No. 17 at 2,
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`IPR2014-00784 (February 4, 2015).
`
`C. Discovery Consolidation and Burden
`Allergan complains that FCL agreed “only to use its ‘best efforts to
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`cooperate with Mylan, and present consolidated papers wherever possible.’” (Paper
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`9 at 2). However, as noted above, FCL agreed up front to consolidate the cross-
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`examination. FCL is also willing to compromise on Allergan’s fourth condition
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`that “Mylan will conduct the Oral Argument.” FCL would agree to have Mylan
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`argue first, and would present its own arguments (if necessary) only on issues
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`where the Petitioners disagree, or where Mylan has no standing to address, all
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`within the allotted time for one party. See Dell, Inc. v. Network-1 Sec. Solutions,
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`Inc., IPR2013-00385, Paper No. 17, at 9 (July 29, 2013) (Dell to present oral
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`argument after Avaya so as not to be “unduly prejudice[d]”).
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`FCL has already committed to use its best efforts to present consolidated
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`papers with Mylan wherever possible. However, FCL cannot agree to Allergan’s
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`second “condition” limiting the briefing. FCL believes additional briefing,
`
`
`
`3
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`
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`including on its secondary considerations arguments, will give FCL a fair chance
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`to present its own arguments and aid the Board in considering the instituted
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`grounds. However, FCL will agree to consolidate its briefing with Mylan if
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`permitted separate briefing of up to seven pages (including but not limited to
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`arguments on which Mylan lacks standing, or FCL and Mylan disagree). The
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`Board has granted additional briefing in previous joined matters. See, Dell
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`IPR2013-00385, Paper No. 17, at 8, 11; Sierra Wireless America, Inc., et al. v.
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`M2M Solutions LLC, IPR2016-01073, Paper No. 17, at 9-10, 13 (Sept. 29, 2016).
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`Allergan never disputes that consolidation would increase efficiency for all
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`parties and the Board. Mylan has not objected to joinder; and Allergan has implied
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`it would be content so long as its four conditions are met. (See Paper 9 at 2). FCL
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`agreed to one of the conditions before being asked, and has offered compromises
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`on others, supported by Board precedent. If the FCL IPR is instituted, but joinder
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`denied, Allergan would be compelled to go through duplicative discovery to
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`defend against two IPR petitions, and the Board would be required to consider
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`similar arguments on the same grounds twice. There is no need for such a wasteful
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`exercise when FCL has offered reasonable compromises.
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`4
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`Finally, Allergan notes that Teva and Akorn have agreed to “similar
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`conditions” for conducting the joint proceedings.1 (Paper 9 at 3). Every party must
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`make their own choices and FCL is not bound by those decisions. For the reasons
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`presented above, granting joinder while retaining the FCL and Mylan experts,
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`consolidating cross-examination but allowing FCL limited additional briefing
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`would increase discovery efficiency and provide the Board more complete and
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`useful information to evaluate the instituted grounds.
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`III. CONCLUSION
`For the reasons set forth in the Opening Motion and above, Famy Care
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`respectfully requests joinder of IPR2017-00567 with IPR2016-01128.
`
`Respectfully submitted,
`
`/Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
`
`
`
`
`
`
`
`Dated: March 6, 2017
`
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`1 The Teva and Akorn petitions will be time-barred if the Board denies joinder. See
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`37 C.F.R. §§ 42.101(b), 42.122; IPR2017-00578, Paper 8; IPR 2017-00596, Paper
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`8. So those joinder analyses differ; there is no risk of separate proceedings.
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`5
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`CERTIFICATE OF SERVICE
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`I, Deanne M. Mazzochi, hereby certify that on this 6th day of March, 2017, I
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`caused to be served a true and correct copy of the foregoing Petitioner’s Reply
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`Motion for Joinder Pursuant to 37 C.F.R. §§ 42.23, 42.24(c)(2), and 42.25(a)(2) in
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`its entirety by Federal Express®, which is a means at least as fast and reliable as
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`U.S. Express Mail, on the following:
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`ALLERGAN, INC.
`2525 Dupont Drive, T2-7H
`Irvine, CA 92612-1599
`
`I also caused to be served a courtesy copy of the foregoing via Electronic Mail,
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`upon the following litigation counsel for Allergan, Inc.:
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`
`
`Jonathan E. Singer
`FISH & RICHARDSON P.C.
`60 South Sixth Street, #3200
`Minneapolis, MN 55402
`Telephone: (612) 335-5070
`Facsimile: (612) 288-969
`singer@fr.com
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`/Deanne M. Mazzochi/
`Deanne M. Mazzochi
`Registration No. 50,158
`6 West Hubbard, Suite 500
`Chicago, IL
`(312) 222-6305 (telephone)
`(312) 222-6325 (facsimile)
`dmazzochi@rmmslegal.com
`
`Attorney for Petitioner
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`Dated: March 6, 2017.
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