`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
`
`v.
`
`ALLERGAN, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00583
`Patent 8,633,162
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER ALLERGAN, INC.’S
`OPPOSITION TO MOTION FOR JOINDER
`
`
`
`Case IPR2017-00583
`Attorney Docket No: 13351-0008IPJ
`
`
`
`
`I.
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(b)-(c) and 37 C.F.R. § 42.22, Allergan, Inc.
`
`(“Allergan”) respectfully requests that the Board deny Teva Pharmaceuticals USA,
`
`Inc.’s (“Teva”) Motion for Joinder, together with Teva’s petition for inter partes
`
`review of U.S. Patent No. 8,633,162 (“the ’162 patent”), seeking cancellation of
`
`claims 1-24 of the ’162 patent (“the Teva IPR”) and joinder of this proceeding with
`
`Mylan Pharmaceuticals Inc. v. Allergan, Inc., Case IPR2016-01130 (“IPR 1130”).
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`Allergan, Teva, and other entities are involved in litigation over the
`
`’162 and related patents in Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et al.,
`
`No. 2:15-cv-01455, filed by Allergan, in the Eastern District of Texas.
`
`2.
`
`The complaint in Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et
`
`al., No. 2:15-cv-01455 was filed by Allergan against defendants, including Teva,
`
`on August 24, 2015.
`
`3.
`
`On June 3, 2016, Mylan Pharmaceuticals, Inc. (“Mylan”) filed its
`
`petition for inter partes review seeking cancellation of claims 1-24 of the ’162
`
`patent. (IPR 1130, Paper 3.)
`
`4.
`
`On September 9, 2016, Allergan filed a Preliminary Response. (IPR
`
`1130, Paper 7).
`
`2
`
`
`
`Case IPR2017-00583
`Attorney Docket No: 13351-0008IPJ
`On December 8, 2016, the Board instituted review of claims 1-24 of
`
`5.
`
`the ’162 patent in IPR 1130. (IPR 1130, Paper 8.)
`
`6.
`
`Teva submitted its petition for inter partes review of claims 1-24 of
`
`the ’162 patent and its Motion for Joinder on January 6, 2017, more than one year
`
`after Allergan filed its complaint alleging infringement of the ’162 patent against
`
`Teva.
`
`III. ARGUMENT
`The Board should deny Teva’s Motion for Joinder because the applicable
`
`statutory scheme, 35 U.S.C. § 315(b)-(c), prohibits the joinder of time barred
`
`petitions to existing inter partes review proceedings.
`
`Congress created the current inter partes review scheme in 2011 when it
`
`enacted the American Invents Act (“AIA”). 35 U.S.C. § 315(b) was part and parcel
`
`of this scheme. § 315(b) imposes a mandatory time bar on the institution of inter
`
`partes review proceedings:
`
`An inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than 1
`year after the date on which the petition, real party in
`interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.
`
`35 U.S.C. § 315(b) (emphasis added).
`
`3
`
`
`
`Case IPR2017-00583
`Attorney Docket No: 13351-0008IPJ
`Section 315(b) provides an exception from this time bar, but only for “a
`
`
`
`request for joinder”: “The time limitation set forth in the preceding sentence shall
`
`not apply for a request for joinder under subsection (c).” Id. The joinder
`
`provision—i.e. 35 U.S.C. § 315(c)—permits the Board discretion to join a party to
`
`an existing inter partes review provided certain criteria are met.
`
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join a party to that
`inter partes review any person who properly files a
`petition under section 311 that the Director, after
`receiving a preliminary response under section 313 or the
`expiration of the time for filing such a response,
`determines warrants the institution of an inter partes
`review under section 314.
`
`35 U.S.C. § 315(c) (emphasis added).
`
`
`
`Thus, sections 315(b)-(c) provide that if a party properly files a petition
`
`within the one-year deadline described in section 315(b), and then files a request
`
`for joinder under subsection (c) after that deadline expires, section 315(b) would
`
`permit the Board to grant the joinder request. Properly construed, the statutory
`
`scheme codified at sections 315(b)-(c) requires that the petition be “properly filed”
`
`for the consideration of both the petition and the joinder request, contemplating
`
`4
`
`
`
`Case IPR2017-00583
`Attorney Docket No: 13351-0008IPJ
`that the petition would have been filed within the one-year period authorized by
`
`section 315(b).1
`
`
`
`Applying section 315(b)-(c)’s proper construction, Teva’s Motion for
`
`Joinder should be denied because its petition for inter partes review is time-barred,
`
`thus not properly filed. Allergan sued Teva for infringement of the ’162 patent in
`
`the Eastern District of Texas on August 24, 2015. Teva filed its petition for inter
`
`partes review and Motion for Joinder on January 6, 2017, more than one year after
`
`Allergan brought the relevant infringement action. Under section 315(b)’s one-year
`
`time bar, Teva’s petition for inter partes review is untimely—i.e. barred. As noted
`
`above, section 315(c)’s proper construction permits the Board to join inter partes
`
`review proceedings only when the underlying petition was properly filed. Because
`
`Teva’s petition for inter partes review is barred by section 315(b), the board has no
`
`discretion to grant Teva’s Motion for Joinder of its improperly filed petition.
`
`Consequently, in view of the relevant statutory scheme, the Board should deny
`
`Teva’s Motion for Joinder.
`
`
`
`
`1 Allergan acknowledges the Board’s current position that (1) section 315(b)’s one-year time bar
`exception applies to both petitions and requests for joinder and (2) that institution decisions are
`not reviewable on appeal. See Microsoft Corp. v. Proxyconn Inc., IPR2013-00109, Paper 15
`(PTAB Feb. 25, 2013); see also Achates Reference Publ’g, Inc. v. Apple, Inc., 803 F.3d 652
`(Fed. Cir. 2015); 37 C.F.R. § 42.122(b).
`
`5
`
`
`
`Case IPR2017-00583
`Attorney Docket No: 13351-0008IPJ
`
`IV. CONCLUSION
`Because the applicable statutory scheme unequivocally proscribes joinder in
`
`this case, Allergan respectfully requests that the Board deny Teva’s Motion for
`
`Joinder.
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Dorothy P. Whelan/
`Dorothy P. Whelan
`Reg. No. 33,814
`
`
`
`6
`
`
`
`
`
`Date /February 6, 2017/
`
`
`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 337-2509
`Facsimile: (612) 288-9696
`
`
`
`Case IPR2017-00583
`Attorney Docket No: 13351-0008IPJ
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
`
`that on February 6, 2017, a complete and entire copy of this Patent Owner
`
`Allergan, Inc.’s Opposition to Motion for Joinder was provided via electronic
`
`service, to the Petitioner by serving the correspondence address of record as
`
`follows:
`
`Gary J. Speier
`Mark D. Schuman
`Carlson, Caspers, Vandenburgh, Lindquist & Schuman, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, Minnesota 55402
`
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`IPRCyclosporine@carlsoncaspers.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Jessica K. Detko/
`
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
`
`
`
`
`
`
`
`
`
`
`
`