UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AKORN INC.,
`Petitioner
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`v.
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`ALLERGAN, INC.
`Patent Owner
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`Case IPR2017-00596
`Patent 8,629,111
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`PATENT OWNER ALLERGAN, INC.’S
`OPPOSITION TO MOTION FOR JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AKORN INC.,
`Petitioner
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`v.
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`ALLERGAN, INC.
`Patent Owner
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`Case IPR2017-00596
`Patent 8,629,111
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`PATENT OWNER ALLERGAN, INC.’S
`OPPOSITION TO MOTION FOR JOINDER
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`Case IPR2017-00596
`Attorney Docket No: 13351-0008IPC
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`I.
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(b)-(c) and 37 C.F.R. § 42.22, Allergan, Inc.
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`(“Allergan”) respectfully requests that the Board deny Akorn, Inc.’s (“Akorn”)
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`Motion for Joinder, together with Akorn’s petition for inter partes review of U.S.
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`Patent No. 8,629,111 (“the ’111 patent”), seeking cancellation of claims 1-27 of
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`the ’111 patent (“the Akorn IPR”) and joinder of this proceeding with Mylan
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`Pharmaceuticals Inc. v. Allergan, Inc., Case IPR2016-01128 (“IPR 1128”).
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`Allergan, Akorn, and other entities are involved in litigation over the
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`’111 and related patents in Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et al.,
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`No. 2:15-cv-01455, filed by Allergan, in the Eastern District of Texas.
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`2.
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`The complaint in Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., et
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`al., No. 2:15-cv-01455 was filed by Allergan against defendants, including Akorn,
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`on August 24, 2015.
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`3.
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`On June 3, 2016, Mylan Pharmaceuticals, Inc. (“Mylan”) filed its
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`petition for inter partes review seeking cancellation of claims 1-27 of the ’111
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`patent. (IPR 1128, Paper 3.)
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`4.
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`On September 9, 2016, Allergan filed a Preliminary Response. (IPR
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`1128, Paper 7).
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`2
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`Attorney Docket No: 13351-0008IPC
`On December 8, 2016, the Board instituted review of claims 1-27 of
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`5.
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`the ’111 patent in IPR 1128. (IPR 1128, Paper 8.)
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`6.
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`Akorn submitted its petition for inter partes review of claims 1-27 of
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`the ’111 patent and its Motion for Joinder on January 6, 2017, more than one year
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`after Allergan filed its complaint alleging infringement of the ’111 patent against
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`Akorn.
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`III. ARGUMENT
`The Board should deny Akorn’s Motion for Joinder because the applicable
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`statutory scheme, 35 U.S.C. § 315(b)-(c), prohibits the joinder of time barred
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`petitions to existing inter partes review proceedings.
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`Congress created the current inter partes review scheme in 2011 when it
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`enacted the American Invents Act (“AIA”). 35 U.S.C. § 315(b) was part and parcel
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`of this scheme. § 315(b) imposes a mandatory time bar on the institution of inter
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`partes review proceedings:
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`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.
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`35 U.S.C. § 315(b) (emphasis added).
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`3
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`Attorney Docket No: 13351-0008IPC
`Section 315(b) provides an exception from this time bar, but only for “a
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`request for joinder”: “The time limitation set forth in the preceding sentence shall
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`not apply for a request for joinder under subsection (c).” Id. The joinder
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`provision—i.e. 35 U.S.C. § 315(c)—permits the Board discretion to join a party to
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`an existing inter partes review provided certain criteria are met.
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`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.
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`35 U.S.C. § 315(c) (emphasis added).
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`Thus, sections 315(b)-(c) provide that if a party properly files a petition
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`within the one-year deadline described in section 315(b), and then files a request
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`for joinder under subsection (c) after that deadline expires, section 315(b) would
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`permit the Board to grant the joinder request. Properly construed, the statutory
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`scheme codified at sections 315(b)-(c) requires that the petition be “properly filed”
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`for the consideration of both the petition and the joinder request, contemplating
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`4
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`Case IPR2017-00596
`Attorney Docket No: 13351-0008IPC
`that the petition would have been filed within the one-year period authorized by
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`section 315(b).1
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`Applying section 315(b)-(c)’s proper construction, Akorn’s Motion for
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`Joinder should be denied because its petition for inter partes review is time-barred,
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`thus not properly filed. Allergan sued Akorn for infringement of the ’111 patent in
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`the Eastern District of Texas on August 24, 2015. Akorn filed its petition for inter
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`partes review and Motion for Joinder on January 6, 2017, more than one year after
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`Allergan brought the relevant infringement action. Under section 315(b)’s one-year
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`time bar, Akorn’s petition for inter partes review is untimely—i.e. barred. As
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`noted above, section 315(c)’s proper construction permits the Board to join inter
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`partes review proceedings only when the underlying petition was properly filed.
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`Because Akorn’s petition for inter partes review is barred by section 315(b), the
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`board has no discretion to grant Akorn’s Motion for Joinder of its improperly filed
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`petition. Consequently, in view of the relevant statutory scheme, the Board should
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`deny Akorn’s Motion for Joinder.
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`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).
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`5
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`Attorney Docket No: 13351-0008IPC
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`IV. CONCLUSION
`Because the applicable statutory scheme unequivocally proscribes joinder in
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`this case, Allergan respectfully requests that the Board deny Akorn’s Motion for
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`Joinder.
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`Respectfully submitted,
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`/Dorothy P. Whelan/
`Dorothy P. Whelan
`Reg. No. 33,814
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`6
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`Date /February 6, 2017/
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`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 337-2509
`Facsimile: (612) 288-9696
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`Case IPR2017-00596
`Attorney Docket No: 13351-0008IPC
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on February 6, 2017, a complete and entire copy of this Patent Owner
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`Allergan, Inc.’s Opposition to Motion for Joinder was provided via electronic
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`service, to the Petitioner by serving the correspondence address of record as
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`follows:
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`Michael R. Dzwonczyk
`Azy S. Kokabi
`Travis B. Ribar
`Sughrue Mion, PLLC
`2100 Pennsylvania Ave., NW, Suite 800
`Washington, DC 20037
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`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`tribar@sughrue.com
`sughrue@sughrue.com
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`/Jessica K. Detko/
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`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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