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
`__________________
`
`
`
`
`
`REPLY TO OPPOSITION TO 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
`__________________
`
`
`
`
`
`REPLY TO OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`Reply to Opposition to Motion for Joinder
`
`
`U.S. Patent No. 8,629,111
`
`Table of Contents
`
`I.
`
`Summary .......................................................................................................... 1
`
`II.
`
`Response to Patent Owner’s Argument ........................................................... 2
`
`III. Conclusion ....................................................................................................... 3
`
`CERTIFICATE OF SERVICE .................................................................................. 5
`
`
`
`
`
`i
`
`
`
`Reply to Opposition to Motion for Joinder
`
`
`U.S. Patent No. 8,629,111
`
`I.
`
`SUMMARY
`
`Petitioner Akorn’s motion for joinder should be granted because it is timely,
`
`typical, and presents nothing out of the ordinary for the Board to consider.
`
`The Board has routinely granted motions for joinder where, party seeking
`
`joinder presents the same arguments and the same grounds as in the IPR to which
`
`joinder is sought. See, e.g., Samsung Electronics, Co., Ltd. v. Raytheon Co.,
`
`IPR2016-00962, Paper 12 (PTAB August 24, 2016); Perfect World Entm’t, Inc. v.
`
`Uniloc USA, Inc., et al., IPR2015-01026, Paper 10, (PTAB Aug. 3, 2015); Fujitsu
`
`Semiconductor Limited v. Zond, LLC, IPR2014-00845, Paper 14 (PTAB Oct. 2,
`
`2014); Enzymotec Ltd. v. Neptune Technologies & Bioresources, Inc., IPR2014-
`
`00556, Paper 19 (PTAB Jul. 9, 2014). This is the same situation here, and
`
`Petitioner Akorn’s Motion for Joinder should be granted, consistent with the
`
`Board’s “policy preference for joining a party that does not present new issues that
`
`might complicate or delay an existing proceeding.” Enzymotec, IPR2014-00556,
`
`Paper 19, at 5; see also 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement
`
`of Sen. Kyl) (“The Office anticipates that joinder will be allowed as of right – if an
`
`inter partes review is instituted on the basis of a petition, for example, a party that
`
`files an identical petition will be joined to that proceeding . . .”)) (emphasis
`
`added).
`
`
`
`1
`
`
`
`Reply to Opposition to Motion for Joinder
`
`
`U.S. Patent No. 8,629,111
`
`The Board has also routinely granted joinder where, as here, the joining
`
`party agrees to an understudy role in the joined proceeding. See, e.g., Amerigen
`
`Pharm. Ltd. v. UCB Pharma GMBH, IPR2016-01665, slip op. at 4-7 (PTAB
`
`December 7, 2016) (Paper No. 26).
`
`Furthermore, the Board has also routinely granted joinder where, as here, the
`
`petitioner files its Petition and Motion for Joinder within 30 days of the institution
`
`of the trial in the IPR to which joinder is sought. See, e.g., Samsung Electronics,
`
`Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12 (PTAB August 24, 2016);
`
`Nintendo of Am., Inc., et al. v. Babbage Holdings, LLC, IPR2015-00568, Paper 12
`
`(PTAB Mar. 18, 2015)).
`
`Accordingly, Petitioner Akorn’s Motion for Joinder should be granted, since
`
`it is consistent with motions for joinder that have been routinely granted.
`
`II. RESPONSE TO PATENT OWNER’S ARGUMENT
`
`Patent Owner’s sole argument against joinder is an interpretation of 35
`
`U.S.C. § 315(b) and (c) that Patent Owner itself acknowledges has already been
`
`addressed and rebuffed by the Board. In particular, Patent Owner argues that
`
`Petitioner Akorn’s IPR Petition was time-barred under 35 U.S.C. § 315(b)-(c). See
`
`Patent Owner Allergan, Inc.’s Opposition to Motion for Joinder, IPR2017-00596,
`
`Paper 8 (February 6, 2017), at 5. Patent Owner acknowledges, however, that its
`2
`
`
`
`
`
`Reply to Opposition to Motion for Joinder
`
`argument is not one that is consistent with the Board’s current position on this
`
`U.S. Patent No. 8,629,111
`
`issue. Id. at FN 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).”). Indeed, in Microsoft and Samsung, the Board
`
`granted joinder specifically because the exception to the one-year time bar applied.
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`Microsoft Corp. v. Proxyconn Inc., IPR2013-00109, Paper 15 (PTAB Feb. 25,
`
`2013) at 4; Samsung Electronics, Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`12 (PTAB August 24, 2016) at 4.
`
`Accordingly, there is no disagreement between the parties that the Board, by
`
`granting joinder in, for example, Microsoft (IPR2013-00109) and Samsung
`
`(IPR2016-00962), has confirmed that 35 U.S.C. § 315 does not bar joinder in the
`
`present instance.
`
`III. CONCLUSION
`
`In view of the above, Petitioner Akorn respectfully requests that the Board
`
`grant its Motion for Joinder.
`
`
`
`
`
`3
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`
`
`Reply to Opposition to Motion for Joinder
`
`
`U.S. Patent No. 8,629,111
`
`
`
`Respectfully Submitted,
`
`
`/ Travis B. Ribar /
`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: February 10, 2017
`
`
`
`
`
`
`
`4
`
`
`
`Reply to Opposition to Motion for Joinder
`
`
`U.S. Patent No. 8,629,111
`
`CERTIFICATE OF SERVICE
`
`(37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that the above-captioned “REPLY TO
`
`OPPOSITION TO MOTION FOR JOINDER” was served on Patent Owner via
`
`e-mail on this 10th day of February, 2017, at the following e-mail addresses:
`
`Dorothy P. Whelan, Reg. No. 33,814
`Michael Kane, Reg. No. 39,722
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR13351 -0008IPC@fr.com and PTABInbound@fr.com
`(ref.: Docket No. IPR13351-0008IPC)
`
`
`
`
`Respectfully Submitted,
`
`/ Travis B. Ribar /
`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: February 10, 2017
`
`
`
`5
`
`
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