Paper No. ______
`
`
`
`Filed on behalf of Akorn Inc.
`By: Michael R. Dzwonczyk
`
`Azy S. Kokabi
`Travis B. Ribar
`Sughrue Mion, PLLC
`2100 Pennsylvania Ave., NW
`Washington, DC 20037
`Telephone: 202-293-7060
`Facsimile: 202-293-7860
`mdzwonczyk@sughrue.com
`email:
`
`
`akokabi@sughrue.com
`tribar@sughrue.com
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
` AKORN INC.
`Petitioner
`
`v.
`
`ALLERGAN, INC.
`Patent Owner
`__________________
`
`Case No. IPR2017-00596
`Patent No. 8,629,111
`__________________
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`
`Filed on behalf of Akorn Inc.
`By: Michael R. Dzwonczyk
`
`Azy S. Kokabi
`Travis B. Ribar
`Sughrue Mion, PLLC
`2100 Pennsylvania Ave., NW
`Washington, DC 20037
`Telephone: 202-293-7060
`Facsimile: 202-293-7860
`mdzwonczyk@sughrue.com
`email:
`
`
`akokabi@sughrue.com
`tribar@sughrue.com
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
` AKORN INC.
`Petitioner
`
`v.
`
`ALLERGAN, INC.
`Patent Owner
`__________________
`
`Case No. IPR2017-00596
`Patent No. 8,629,111
`__________________
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`Motion for Joinder
`
`
`
`
`U.S. Patent No. 8,629,111
`
`Table of Contents
`
`I.
`
`Statement of precise relief requested ............................................................... 1
`
`II.
`
`Statement of material facts .............................................................................. 2
`
`III. Applicable legal standard ................................................................................ 3
`
`IV. Argument ......................................................................................................... 4
`
`A.
`
`Joinder is timely .................................................................................... 4
`
`B.
`
`C.
`
`Joinder is appropriate because both IPRs present the same grounds of
`unpatentability concerning the same claims of the same patent ........... 4
`
`Joinder is appropriate because the Akorn IPR proposes no additional
`grounds of unpatentability ..................................................................... 5
`
`D.
`
`Joinder will not impact the existing trial schedule ................................ 6
`
`E.
`
`Joinder will simplify briefing and discovery ........................................ 6
`
`V.
`
`Conclusion ....................................................................................................... 7
`
`CERTIFICATE OF SERVICE .................................................................................. 8
`
`
`
`
`
`i
`
`
`
`Motion for Joinder
`
`
`
`
`U.S. Patent No. 8,629,111
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner Akorn, Inc. (“Akorn”) requests joinder and/or consolidation of its
`
`today-filed Petition (“the Akorn Petition”) for inter partes review of U.S. Patent
`
`No. 8,629,111 (“the ‘111 Patent”) (“the Akorn IPR”) with IPR2016-01128, filed
`
`June 3, 2016 by Mylan Pharms. Inc. (“the Mylan IPR”). The Mylan IPR was
`
`instituted on December 8, 2016. Mylan Pharm., Inc. v. Allergan, Inc., IPR2016-
`
`01128, slip op. at 22 (PTAB December 8, 2016) (Paper 8).
`
`The Akorn Petition is substantially the same as the Petition in the Mylan
`
`IPR. The Akorn Petition involves the same patent, the same claims, and presents
`
`the same grounds of unpatentability, using the same evidence, as the Petition in the
`
`Mylan IPR, except where Akorn-specific substitutions were required. The Akorn
`
`IPR challenges the claims as anticipated and/or obvious over the same prior art,
`
`based on the same arguments, and relies on the same expert, Dr. Mansoor Amiji as
`
`the Mylan IPR. Indeed, Mylan has consented to Akorn’s retention of Dr. Amiji for
`
`purposes of the Akorn IPRs.
`
`Joinder is appropriate because the Akorn IPR Petitioner will take on a purely
`
`understudy role in the Mylan IPR, and thus joinder will not cause any delay in the
`
`Mylan IPR trial schedule. Mylan Pharms., Inc., the Petitioner in the Mylan IPR, is
`
`
`
`1
`
`
`
`Motion for Joinder
`
`not opposing this joinder, and joinder will not prejudice any of the parties to the
`
`U.S. Patent No. 8,629,111
`
`
`
`Mylan IPR.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. On June 3, 2016, Mylan filed a Petition for Inter Partes Review (“the
`
`Mylan Petition”) of claims 1-27 of U.S. Patent No. 8,629,111. The Mylan IPR was
`
`accorded Case No. IPR2016-01128.
`
`2.
`
`The Mylan Petition asserted the following grounds of unpatentability:
`
`
`
`
`
`a. Ground 1: Claims 1-27 are anticipated under § 102 by Ding ’979;
`
`b. Ground 2: Claims 1-27 are obvious under §103 over Ding ’979 and
`
`Sall; and
`
`c. Ground 3: Claims 11 and 16 are obvious under §103 over Ding
`
`’979, Sall, and Acheampong.
`
`3. On December 8, 2016, the PTAB granted the Mylan Petition on all of
`
`the asserted grounds of unpatentability. Mylan Pharm., Inc. v. Allergan, Inc.,
`
`IPR2016-001128, slip op. at 22 (PTAB December 8, 2016) (Paper 8).
`
`4.
`
` Akorn filed a Petition for Inter Partes Review on January 6, 2017,
`
`Case No. IPR2017-00596, and filed the present Motion for Joinder the same day.
`
`
`
`2
`
`
`
`Motion for Joinder
`
`
`
`
`U.S. Patent No. 8,629,111
`
`5.
`
`The Petition in the Akorn IPR is substantially identical to the Petition
`
`in the Mylan IPR and includes substantially the same exhibits and relies on the
`
`same expert as the Petition in the Mylan IPR.
`
`III. APPLICABLE LEGAL STANDARD
`
`An inter partes review may be joined with another inter partes review,
`
`subject to the provisions 35 U.S.C. § 315(c), which governs joinder of inter partes
`
`review proceedings:
`
`(c) JOINDER. — If the Director institutes an inter
`
`partes review, the Director, in his or her discretion, may
`
`join as 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.
`
`As the moving party, Petitioner bears the burden of proving that it is entitled
`
`to the requested relief. 37 C.F.R. § 42.20(c). The PTAB has indicated that a
`
`motion for joinder should set forth the reasons joinder is appropriate, identify any
`
`new grounds of unpatentability asserted in the petition, and explain what impact (if
`3
`
`
`
`
`
`Motion for Joinder
`
`any) joinder would have on the trial schedule for the existing review. See Kyocera
`
`U.S. Patent No. 8,629,111
`
`
`
`Corp. v. Softview, LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`
`(Paper 15).
`
`IV. ARGUMENT
`
`A.
`
`Joinder is timely
`
`Akorn’s request for joinder is timely because it was filed on January 6, 2017,
`
`which is less than one month after the December 8, 2016 institution of the Mylan
`
`IPR. This Motion for Joinder is therefore filed “no later than one month after the
`
`institution date of any inter partes review for which joinder is requested.” 37
`
`C.F.R. § 42.122(b).
`
`Furthermore, the Petition for Inter Partes Review filed concurrently with the
`
`present Motion for Joinder is not time barred under 37 C.F.R. § 42.101(b) because
`
`“[t]he time period set forth in § 42.101(b) shall not apply when the petition is
`
`accompanied by a request for joinder.” Id.
`
`B.
`
`Joinder is appropriate because both IPRs present the same grounds
`of unpatentability concerning the same claims of the same patent
`
`Joinder is appropriate here because Akorn has presented the same arguments
`
`in the Akorn Petition as are present in the Mylan Petition. In particular, both the
`
`Akorn and the Mylan Petitions allege the same three grounds of unpatentability:
`
`
`
`4
`
`
`
`Motion for Joinder
`
`
`
`
`U.S. Patent No. 8,629,111
`
`a. Ground 1: Claims 1-27 are anticipated under § 102 by Ding ’979;
`
`b. Ground 2: Claims 1-27 are obvious under §103 over Ding ’979 and
`
`Sall; and
`
`c. Ground 3: Claims are obvious under §103 over Ding ’979, Sall, and
`
`Acheampong.
`
`Furthermore, the Akorn Petition is substantially identical to the Mylan
`
`Petition. The Akorn Petition contains the same arguments as the Mylan Petition
`
`and relies upon the same expert testimony and exhibits, except where Akorn-
`
`specific substitutions were required.
`
`Thus, the parties in both the Akorn and Mylan IPRs will be presenting the
`
`same arguments, and the PTAB will be considering the same issues, in both IPRs.
`
`Joinder is therefore the most just, speedy, and inexpensive way in which to
`
`proceed. See 37 C.F.R. § 42.1(b).
`
`C.
`
`Joinder is appropriate because the Akorn IPR proposes no
`additional grounds of unpatentability
`
`As indicated above, there are no grounds of unpatentabilty presented in the
`
`Akorn Petition that were not presented, and accepted for the purposes of
`
`institution, in the Mylan Petition.
`
`
`
`5
`
`
`
`Motion for Joinder
`
`
`D.
`
`
`
`U.S. Patent No. 8,629,111
`
`Joinder will not impact the existing trial schedule
`
`Akorn will not request any alterations to the schedule in the Mylan IPR. In
`
`addition, because joinder will not introduce any new prior art, arguments, or
`
`grounds of unpatentability into the Mylan IPR, joining the Akorn and Mylan IPRs
`
`will not complicate the substantive issues already pending in the Mylan IPR.
`
`E.
`
`Joinder will simplify briefing and discovery
`
`To simplify briefing and discovery, the petitioners in the Akorn IPR will
`
`adopt an “understudy role” in the joined proceedings. So long as the petitioners in
`
`the Mylan IPR (“Mylan”) remain a party in the Mylan IPR, the petitioners in the
`
`Akorn IPR agree to consolidated filings for all substantive papers in the respective
`
`proceedings, except for motions that do not involve Mylan. The petitioners in the
`
`Akorn IPR also agree that cross-examinations will occur within the timeframe
`
`normally allotted by the rules to one party and will not need to be extended in light
`
`of the joinder. Furthermore, unless Mylan ceases to be a party in the IPR, the
`
`petitioners in the Akorn IPR agree that oral argument will be conducted by Mylan.
`
`Accordingly, joinder will greatly simplify the proceedings, and neither the
`
`Board, the patent owner, nor Mylan will be prejudiced by joinder, given the
`
`present petitioners’ willingness to be an “understudy” in the joined proceeding.
`
`
`
`6
`
`
`
`Motion for Joinder
`
`
`
`
`U.S. Patent No. 8,629,111
`
`To this end, Petitioner notes that the PTAB has granted joinder in similar
`
`circumstances before. In particular, in IPR2016-01665, Petitioner Amerigen
`
`Pharmaceuticals Limited was granted joinder with a previously-filed IPR by Mylan
`
`Pharmaceuticals, Inc. where the petitioner made many of the concessions noted
`
`above. Amerigen Pharm. Ltd. v. UCB Pharma GMBH, IPR2016-01665, slip op. at
`
`4-7 (PTAB December 7, 2016) (Paper No. 26).
`
`V. CONCLUSION
`
`For the foregoing reasons, the present petitioners respectfully request that
`
`the Board institute the Petition for Inter Partes Review submitted concurrently
`
`herewith, and join this proceeding with Mylan Pharmaceuticals Inc. v. Allergan,
`
`Inc., Case IPR2016-01128.
`
`
`
`Respectfully submitted,
`
`/s/ Azy S. Kokabi
`Michael R. Dzwonczyk, Reg. No. 36,787
`Azy S. Kokabi, Reg. No. 58,902
`Travis B. Ribar, Reg. No. 61,446
`
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., N.W., Suite 800
`Washington, D.C. 20037-3202
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Dated: January 6, 2017
`
`
`
`
`
`
`
`7
`
`
`
`Motion for Joinder
`
`
`
`
`U.S. Patent No. 8,629,111
`
`CERTIFICATE OF SERVICE
`
`(37 C.F.R. §§ 42.6(e) and 42.105(a))
`
`The undersigned hereby certifies that the above-captioned “MOTION FOR
`
`JOINDER” was served on Patent Owner, on this 6th day of January, 2017, on the
`
`Patent Owner at the correspondence address of the Patent Owner as follows:
`
`ALLERGAN, INC.
`2525 Dupont Drive, T2-7H
`Irvine, CA 92612-1599
`
`and at other addresses also likely to affect service:
`
`Jonathan E. Singer
`FISH & RICHARDSON P.C.
`60 South Sixth Street, #3200
`Minneapolis, MN 55402
`(612) 335-5070
`
`Respectfully submitted,
`
`
`
`/s/ Azy S. Kokabi
`Michael R. Dzwonczyk, Reg. No. 36,787
`Azy S. Kokabi, Reg. No. 58,902
`Travis B. Ribar, Reg. No. 61,446
`
`
`
`
`
`
`
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., N.W., Suite 800
`Washington, D.C. 20037-3202
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Dated: January 6, 2017
`
`
`
`8
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