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`Paper No. ___
`Date Filed: March. 8, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`ACTAVIS LABORATORIES FL, INC., AMNEAL PHARMACEUTICALS LLC,
`AMNEAL PHARMACEUTICALS OF NEW YORK, LLC, DR. REDDY’S
`LABORATORIES, INC., DR. REDDY’S LABORATORIES, LTD., SUN
`PHARMACEUTICALS INDUSTRIES, LTD., SUN PHARMACEUTICALS
`INDUSTRIES, INC., TEVA PHARMACEUTICALS USA, INC., WEST-WARD
`PHARMACEUTICAL CORP., and HIKMA PHARMACEUTICALS, LLC,
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`Petitioners,
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`v.
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`JANSSEN ONCOLOGY, INC.,
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`Patent Owner.
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`________________
`
`Case IPR2017-00853
`Patent 8,822,438
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`________________
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`JANSSEN ONCOLOGY, INC.’S OPPOSITION TO MOTION FOR
`JOINDER PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
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`IPR2017-00853
`Patent 8,822,438
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
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`FACTUAL BACKGROUND .......................................................................... 1
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`I.
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`II.
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`III. LEGAL STANDARDS .................................................................................... 4
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`IV. ARGUMENT ................................................................................................... 6
`A.
`The Board Should Exercise its Discretion to Discourage Late
`Requests for Joinder .............................................................................. 6
`Joinder Would Not Simplify Briefing and Discovery ........................... 8
`If Joinder is Granted, the Board Should Impose Strict
`Safeguards ........................................................................................... 10
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`B.
`C.
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`V.
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`CONCLUSION .............................................................................................. 12
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`IPR2017-00853
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`Cases
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`TABLE OF AUTHORITIES
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` Page(s)
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`Brinkmann Corp. v. A&J Mfg., LLC,
`IPR2015-00056, Paper 10 (PTAB March 23, 2015) ............................................ 8
`
`Int’l Bus. Machines Corp. v. Elec. & Telecomms. Research Inst.,
`IPR2014-00949, Paper 25 (PTAB Jan. 28, 2015) .............................................. 11
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`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ............................................... 5
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`Samsung Elec. Co., Ltd. v. Arendi S.A.R.L.,
`IPR2014-01144, Paper 11 (PTAB Oct. 2, 2014) .............................................. 4, 5
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`Skimlinks, Inc. v. Linkgine, Inc.,
`CBM2015-00086, Paper 17 (PTAB Jun. 12, 2015) ........................................... 11
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`Unified Patents, Inc. v. PersonalWeb Tech.,
`LLC, IPR2014-00702, Paper 12 (PTAB Jul. 24, 2014) ........................... 4, 5, 7, 8
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`Statutes
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`35 U.S.C. § 315(b) ............................................................................................. 4, 8, 9
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`35 U.S.C. § 315(c) ............................................................................................. 4, 5, 6
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`35 U.S.C. § 315(c) ................................................................................................... 14
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`Other Authorities
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`37 C.F.R. §§ 42.20(c), 42.122(b) ............................................................................... 5
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`37 C.F.R. § 42.122(b) .............................................................................................. 14
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`157 Cong. Rec. S1376............................................................................................ 6, 7
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`iii
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`IPR2017-00853
`Patent 8,822,438
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`INTRODUCTION
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`I.
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`Patent Owner Janssen Oncology, Inc. (“Janssen”) respectfully requests that
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`the Board deny Petitioners’1 motion for joinder of IPR2017-00853 (the “Actavis
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`IPR”) with IPR2016-01332 (the “Mylan IPR”). The Actavis IPR and the Mylan
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`IPR are both directed to Janssen’s U.S. Patent No. 8,822,438 (the “’438 patent”).
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`As explained below, the Board should deny Petitioners’ motion because the
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`serial challenges to the ’438 patent brought by what now amounts to 14 different
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`petitioners are prejudicial to Janssen and are the exact type of practice that the
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`Board should discourage. Rather than simplifying briefing and discovery, as
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`Petitioners suggest, joinder may further complicate discovery in an already
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`condensed schedule in the Mylan IPR.
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`FACTUAL BACKGROUND
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`II.
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`The present petition for inter partes review is the latest in a growing list of
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`1 There are ten named Petitioners in this proceeding: Actavis Laboratories
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`FL, Inc., Amneal Pharmaceuticals LLC, Amneal Pharmaceuticals of New York,
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`LLC, Dr. Reddy’s Laboratories, Inc., Dr. Reddy’s Laboratories, Ltd., Sun
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`Pharmaceuticals Industries, Ltd., Sun Pharmaceuticals Industries, Inc., Teva
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`Pharmaceuticals USA, Inc., West-Ward Pharmaceutical Corp., and Hikma
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`Pharmaceuticals, LLC.
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`IPR2017-00853
`Patent 8,822,438
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`staggered attacks aimed at challenging the patentability of the claims of the ’438
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`patent. Amerigen Pharmaceuticals Limited (“Amerigen”) filed the first IPR
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`petition on December 4, 2015 seeking review of all 20 claims of the ’438 patent.
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`See Amerigen Pharms. Ltd. v. Janssen Oncology, Inc., IPR2016-00286, Paper 1
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`(PTAB Dec. 4, 2015) (the “Amerigen IPR”). The Board instituted the Amerigen
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`IPR on May 31, 2016 based on two grounds of unpatentability. See Amerigen,
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`IPR2016-00286, Paper 14.
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`Half-a-year later—on June 29 and June 30, 2016, respectively—Argentum
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`Pharmaceuticals LLC (“Argentum”) and Mylan Pharmaceuticals Inc. (“Mylan”)
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`followed with their own separate IPR petitions. See Argentum Pharms. LLC v.
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`Janssen Oncology, Inc., IPR2016-01317, Paper 2 (PTAB June 29, 2016) (the
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`“Argentum IPR”) and Mylan Pharms. Inc. v. Janssen Oncology, Inc., IPR2016-
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`01332, Paper 1 (PTAB June 30, 2016) (the “Mylan IPR”). Concurrently with their
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`respective IPR petitions, Argentum and Mylan filed motions seeking joinder with
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`the Amerigen IPR.
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`On August 10, 2016, Wockhardt Bio AG (“Wockhardt”) filed a fourth
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`petition seeking cancellation of all 20 claims of the ’438 patent. Wockhardt Bio AG
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`v. Janssen Oncology, Inc., IPR2016-01582, Paper 4 (PTAB Aug. 10, 2016) (the
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`“Wockhardt IPR”).
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`On September 19, 2016, the Board instituted the Argentum IPR and joined it
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`with the Amerigen IPR. Argentum, IPR2016-01317, Paper 9. On January 10,
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`2017, the Board denied Mylan’s motion for joinder because, among other things,
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`Mylan sought to rely on new evidence, including two new expert declarations.
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`Mylan, IPR2016-01332 , Paper 21 at p. 10 (noting that “[g]ranting joinder in view
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`of Mylan’s two different declarations and new evidence would add an additional
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`dimension to the substantive issues in the Amerigen IPR, and thus would be more
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`significant than Mylan suggests.”). On January 10, 2017, the Board instituted the
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`Mylan IPR and, in doing so, implemented a condensed schedule “to allow for
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`resolution of [the Amerigen IPR and the Mylan IPR] . . . in relative proximity to
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`each other.” Id. at p. 11.
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`On January 19, 2017, the Board instituted the Wockhardt IPR and also
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`ordered that the trial phase of this proceeding be conducted under a condensed
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`schedule. Wockhardt, IPR2016-01582, Paper 29 at p. 19. The Board has ordered
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`oral argument in both the Mylan and Wockhardt IPR proceedings on the same day,
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`May 24, 2017. Mylan, IPR2016-01332, Paper 22 at p. 6; Wockhardt, IPR2016-
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`01582, Paper 30 at p. 6. Oral argument in the Amerigen IPR took place on
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`February 16, 2017.
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`The Petitioners in the present case, a collection of ten generic
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`pharmaceutical companies, have filed the Actavis IPR as a fifth separate challenge
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`to the ’438 patent. Presently before the Board is Petitioners’ motion for joinder,
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`which seeks to join the Actavis IPR to the previously instituted Mylan IPR. As
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`explained below, the Board should exercise its discretion and deny Petitioners’
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`motion for joinder because the attempt by these ten additional companies to
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`serially attack the ’438 patent in staggered IPR petitions does not promote judicial
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`efficiency and is prejudicial to Janssen. Furthermore, because the present petition
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`was filed more than one year after Petitioners were served with a complaint
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`alleging infringement of the ’438 patent, absent joinder, the Actavis IPR is time-
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`barred under 35 U.S.C. § 315(b).
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`III. LEGAL STANDARDS
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`The decision to grant joinder is discretionary. 35 U.S.C. § 315(c). When
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`exercising that discretion, the Board should be mindful that “patent trial
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`regulations, including the rules for joinder, must be construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” Samsung Elec. Co., Ltd.
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`v. Arendi S.A.R.L., IPR2014-01144, Paper 11 at p. 7 (PTAB Oct. 2, 2014) (citing 37
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`C.F.R. § 42.1(b)); see also Unified Patents, Inc. v. PersonalWeb Tech., LLC,
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`IPR2014-00702, Paper 12 at p. 2 (PTAB Jul. 24, 2014) (“The America Invents Act
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`(‘AIA’) created new administrative trial proceedings, including inter partes review,
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`as an efficient, streamlined, and cost-effective alternative to district court
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`litigation.”). Even when there are “two proceedings with nearly identical petitions
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`. . . joinder is not automatic, particularly given the need to complete proceedings in
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`a just, speedy and inexpensive manner.” Unified Patents, IPR2014-00702, Paper
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`12 at p. 4 (citing 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b); 157 Cong. Rec. S1376,
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`daily ed. Mar. 8, 2011 (statement of Sen. Kyl)).
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`As the moving party, a petitioner requesting joinder has the burden of proof
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`in establishing entitlement to joinder. See Samsung, IPR2014-01144, Paper 11 at p.
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`7; 37 C.F.R. §§ 42.20(c), 42.122(b). In this regard, a motion for joinder should:
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`(1) set forth the reasons why joinder is appropriate; (2) identify any new grounds
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`of unpatentability asserted in the petition; (3) explain what impact (if any) joinder
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`would have on the trial schedule for the existing review; and (4) specifically
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`address how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v.
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`Softview LLC, IPR2013-00004, Paper 15 at p. 4 (PTAB Apr. 24, 2013).
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`As indicated in the legislative history, “the Board will determine whether to
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`grant joinder on a case-by-case basis, taking into account the particular facts of
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`each case.” Samsung, IPR2014-01144, Paper 11 at p. 7. In particular, “when
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`determining whether and when to allow joinder, the Office may consider factors
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`including the breadth or unusualness of the claim scope, claim construction issues,
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`and consent of the patent owner.” Id. (citing 157 Cong. Rec. S1376, daily ed. Mar.
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`8, 2011 (statement of Sen. Kyl)) (emphasis added). The Board has also indicated
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`its intent to use its authority under § 315(c) “to encourage early requests for joinder
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`and to discourage late requests.” See 157 Cong. Rec. S1376, daily ed. Mar. 8, 2011
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`(statement of Sen. Kyl).
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`IV. ARGUMENT
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`A. The Board Should Exercise its Discretion to Discourage Late
`Requests for Joinder
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`
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`35 U.S.C. § 315(c) instructs that the decision to grant or deny joinder is
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`discretionary. The legislative history also makes clear that the Office should use its
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`discretion to encourage the early filing of motions for joinder and to avoid an
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`onslaught of joinder petitions. See 157 Cong. Rec. S1376, daily ed. Mar. 8, 2011
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`(statement of Sen. Kyl). The instant case presents an ideal opportunity to advance
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`these goals. And the Board should do so by denying Petitioners’ motion for
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`joinder.
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`As described above, the Actavis IPR is the fifth in a series of IPR attacks
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`brought by 14 petitioners to challenge the patentability of the claims of the ’438
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`patent. And it comes at the 11th hour. The Actavis IPR and present motion for
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`joinder were filed approximately 18 months after Petitioners were served with a
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`complaint alleging infringement of the ’438 patent. Petitioners offer no
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`explanation for why they waited so long to file the Actavis IPR, especially
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`considering that Petitioners contend that the Actavis IPR relies on the same
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`unpatentability grounds, prior art references, and expert declarations as the Mylan
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`IPR. See Petitioners’ Motion for Joinder, Paper 9 at p. 6. Having chosen to wait,
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`Petitioners now seek to join the Mylan IPR, which is at an advanced stage due to
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`the condensed schedule ordered by the Board.
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`This type of “gang-tackling,” in which petitioners serially file IPR petitions
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`along with motions to join a previously instituted proceeding is exactly the type of
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`late request for joinder that the Board should discourage. See 157 Cong. Rec.
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`S1376, daily ed. Mar. 8, 2011 (statement of Sen. Kyl) (“The Director is given
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`discretion, however, over whether to allow joinder. This safety valve will allow
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`the Office to avoid being overwhelmed if there happens to be a deluge of joinder
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`petitions in a particular case.”). Judicial efficiency is not best served by allowing
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`petitioners to manipulate the IPR process through such practice. In fact, the
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`purpose of IPR— to provide “an efficient, streamlined, and cost-effective
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`alternative to district court litigation” (Unified Patents, IPR2014-00702, Paper 12
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`at p. 4)—is undermined by allowing time-barred serial petitions through a loophole
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`in the joinder regulations. Granting the present motion for joinder would
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`encourage petitioners to file multiple, staggered challenges—well after the one-
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`year time bar—without any fear that their delay in filing might have adverse
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`consequences, such as denial of joinder. The present motion should, therefore, be
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`denied.
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`B.
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`Joinder Would Not Simplify Briefing and Discovery
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`Petitioners argue that briefing and discovery would be significantly
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`simplified if joinder were granted because “[w]ithout joinder, largely duplicative
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`briefs and other papers would be filed in parallel IPRs.” See Petitioners’ Motion
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`for Joinder, Paper 9 at p. 6. Petitioners further argue that “[j]oinder would
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`eliminate duplicative expert discovery and trial testimony.” See id. at p. 8.
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`Petitioners are wrong. Absent joinder, the Actavis IPR is time-barred; therefore, if
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`Petitioners’ motion for joinder is denied, no IPR proceeding can be instituted.
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`The ’438 patent is asserted against the Petitioners in BTG International LTD
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`v. Actavis Laboratories FL, Inc.—an action that was filed on July 31, 2015 in the
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`United States District for the District of New Jersey listing as defendants all ten
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`Petitioners in this proceeding. Each of the ten Petitioners waived service of the
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`summons, and Janssen filed these executed waivers in district court between
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`August 11, 2015 and September 8, 2015. See Exs. 2002-2011. The filing date of
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`the waiver of summons is the date that each Petitioner is deemed to have been
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`served with a complaint for purposes of 35 U.S.C. § 315(b). See Brinkmann Corp.
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`v. A&J Mfg., LLC, IPR2015-00056, Paper 10 at pp. 6-7 (PTAB March 23, 2015).
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`Yet, these Petitioners waited until February 8, 2017 to file the Actavis IPR. Thus,
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`because the Actavis IPR was filed more than one year after the Petitioners were
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`served with a complaint alleging infringement of the ’438 patent, the Actavis IPR
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`is time-barred under 35 U.S.C. § 315(b). And, despite Petitioners’ assertions to the
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`contrary,2 if Petitioners’ motion for joinder is denied, there would be no parallel
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`proceeding and no threat of duplicative briefs, expert discovery, or trial testimony.
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`Rather than simplifying briefing and discovery, joinder could potentially
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`complicate the already condensed Mylan IPR proceeding. In their motion for
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`joinder, Petitioners state that they will coordinate with Mylan “to facilitate the
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`elimination of repetitive briefs and testimony.” See Petitioners’ Motion for Joinder,
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`Paper 9 at p. 8. But, notably, Petitioners stop short of agreeing to rely on Mylan’s
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`briefs and testimony in their entirety and, in doing so, leave open the possibility to
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`set forth independent positions and opinions on issues that do not overlap with
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`Mylan’s. See id. at p. 8. Because ten new Petitioners would be added to the
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`Mylan IPR if the proceedings were joined, there is a strong likelihood that the
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`interests of all the Petitioners may not completely align with Mylan’s interests on
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`all issues. In that event, the Petitioners would undoubtedly seek to have their
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`independent voices heard by advancing positions that Janssen would not have to
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`face if it were dealing with Mylan alone. Thus, joinder would be prejudicial to
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`Janssen and poses a real threat of complicating the already condensed Mylan IPR
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`proceeding. And Petitioners’ motion should be denied for this additional reason.
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`2 See Petitioners’ Motion for Joinder, Paper 9 at pp. 7-8.
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`C.
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`If Joinder is Granted, the Board Should Impose Strict Safeguards
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`In its motion for joinder, Petitioners represented to the Board that (1) their
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`petition is limited to the same grounds instituted in the Mylan IPR (see Petitioners’
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`Motion for Joinder, Paper 9 at pp. 1, 6), (2) their petition is based on the same prior
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`art analysis as the Mylan IPR (id.), (3) their petition relies on expert declarations
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`that are identical to those in the Mylan IPR (id.), and (4) there would be no change
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`in the trial schedule as a result of joinder (id. at pp. 1-2, 6-7).
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`While Janssen believes that Petitioners’ motion should be denied, in the
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`event that the Board decides to allow joinder, Janssen respectfully requests that
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`Petitioners be required to abide by the following conditions:
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` Petitioners agree to “assert exactly the same grounds and rel[y]
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`exactly on the same evidence for invalidity that formed the basis for
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`institution in the Mylan IPR,” including “the same combinations of
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`prior art references.” Petitioners’ Motion for Joinder, Paper 9 at p. 6;
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`see also Ex. 2012 (Feb. 8, 2017 email from Petitioners’ counsel).
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` Petitioners agree to rely on “the same experts, Dr. Garnick and Mr.
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`Hofmann, [who] have submitted identical supporting declarations in
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`both [the Actavis and Mylan] IPRs.” Petitioners’ Motion for Joinder,
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`Paper 9 at p. 6; Ex. 2012.
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` Petitioners agree that they “will not request any alterations to the
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`schedule in the Mylan IPR based on the requested joinder” and that
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`“[a]ccordingly, joinder will not at all impact the trial schedule for
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`existing review of the Mylan IPR.” Petitioners’ Motion for Joinder,
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`Paper 9 at p. 7.
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` Petitioners “agree to not submit any separate briefing on any issue
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`(unless the issue pertains specifically to one of [the Petitioners] and
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`not to Mylan).” Ex. 2012. In Janssen’s view, such a petitioner-
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`specific issue should be strictly limited to challenges to real party-in-
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`interest.
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` As the Board has done in other proceedings, Janssen requests that the
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`Board orders Petitioners to work together to consolidate filings
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`without authorizing expansion of page limits beyond the regular page
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`limits allotted by the rules. See Int’l Bus. Machines Corp. v. Elec. &
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`Telecomms. Research Inst., IPR2014-00949, Paper 25 at pp. 3-4
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`(PTAB Jan. 28, 2015); Skimlinks, Inc. v. Linkgine, Inc., CBM2015-
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`00086, Paper 17 at pp. 26-27 (PTAB Jun. 12, 2015).
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` Petitioners agree to “coordinate with [Mylan] to facilitate the
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`elimination of repetitive . . . testimony.” Petitioners’ Motion for
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`Joinder, Paper 9 at p. 8.
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` Petitioners agree to participate only as observers during depositions.
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`Ex. 2012. Petitioners further agree that no additional depositions will
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`be needed, and that the depositions will be completed within the time
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`limits agreed upon by Janssen and Mylan.
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` Petitioners agree that they will “maintain a secondary role in the
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`proceeding, if joined,” and “will assume a primary role only if the
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`Mylan IPR petitioner ceases to participate in the IPR.” Petitioners’
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`Motion for Joinder, Paper 9 at p. 8; Ex. 2012.
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`V. CONCLUSION
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`For all the foregoing reasons, Petitioners’ motion for joinder should be
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`denied and the Board should proceed to an orderly and timely consideration of the
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`Mylan IPR.
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`Dated: March 8, 2017
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin (Reg. No. 28,598)
`Barbara L. Mullin (Reg. No. 38,250)
`Ruben H. Munoz (Reg. No. 66,998)
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel: (215) 965-1200
`Fax: (215) 965-1210
`JANS-ZYTIGA@akingump.com
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`ZytigaIPRTeam@sidley.com
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`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing JANSSEN
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`ONCOLOGY, INC.’S OPPOSITION TO MOTION FOR JOINDER
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`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b) was served on
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`counsel of record on March 8, 2017 by filing this document through the End-to-
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`End System, as well as delivering a copy via electronic mail to counsel of record
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`for the Petitioners at the following addresses:
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`Samuel S. Park – spark@winston.com
`Ryan B. Hauer – rhauer@winston.com
`Jovial Wong – jwong@winston.com
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`Date: March 8, 2017
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`/Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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