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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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`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`
`________________
`
`
`Case IPR2017-01063
`Patent 9,006,224
`
`__________________
`
`
`MOTION FOR JOINDER
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)
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`
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
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`TABLE OF CONTENTS
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`II.
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`BACKGROUND ............................................................................................ 1
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
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`A.
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`Joinder is Appropriate ........................................................................... 4
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`B.
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`C.
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`No New Grounds of Unpatentability Are Asserted .............................. 4
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`Joinder Will Not Impact the Existing Schedule.................................... 4
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`D. Discovery and Briefing Can Be Simplified .......................................... 5
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`IV. CONCLUSION ............................................................................................... 6
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`IPR2015-01063
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`Motion for Joinder
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`Page i
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`Cases
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`TABLE OF AUTHORITIES
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`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper No. 17 at 3(July 29, 2013) ............................................... 3, 5
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`Hyunda Motor Co. v. American Vehicular Sciences LLC,
` IPR2014-01543, Paper 11 (Oct. 24, 2014) ............................................................... 5
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`Motorola Mobility LLC v. Softview LLC, IPR2013-00256,
`Paper 10 (June 20, 2013) ........................................................................................... 5
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`Statutes
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`35 U.S.C. § 315(c) ..................................................................................................... 2
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`Rules
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`37 C.F.R. § 42.122(b) ................................................................................................ 1
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`
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`IPR2017-01063
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`Motion for Joinder
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`Page ii
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`
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner Argentum Pharmaceuticals LLC (“Argentum” or “Petitioner”)
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`respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
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`§ 42.122(b) of the above-captioned inter partes review (“Argentum IPR”) with the
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`pending inter partes review involving the same patent and the same grounds of
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`invalidity in Par Pharmaceutical, Inc. v. Novartis AG, IPR2016-01479 (“Par
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`IPR”), which was instituted on February 15, 2017. Joinder is appropriate because
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`it will promote efficient and consistent resolution of the validity of a single patent
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`and will not prejudice any of the parties to the Par IPR.
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`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
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`as it is submitted no later than one month after February 15, 2017, the date on
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`which the Par IPR was instituted.
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`II. BACKGROUND
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`On July 22, 2016, Par filed a Petition for inter partes review challenging
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`claims 1-3 of U.S. Patent No. 9,006,224 (the “’224 patent”), which was assigned
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`Case No. IPR2016-01479. The Board instituted review on claims 1–3 on the
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`following four grounds:
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`IPR2017-01063
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`Motion for Joinder
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`Page 1 of 6
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`
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`(1) Claims 1–3 are unpatentable under 35 U.S.C. § 103 as obvious over
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`Oberg 2004 (Ex. 1027) in combination with Boulay 2004 (Ex. 1005)
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`and O’Donnell (Ex. 1029).
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`(2) Claim 2 is unpatentable under 35 U.S.C. § 103 as obvious over Oberg
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`2004 (Ex. 1027) in combination with Boulay 2004 (Ex. 1005) and
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`O’Donnell (Ex. 1029), in further view of Tabernero (Ex. 1038).
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`(3) Claims 1–3 are unpatentable under 35 U.S.C. § 103 as obvious over
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`Boulay 2004 (Ex. 1005), O’Donnell (Ex. 1029), and Duran (Ex.
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`1011).
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`(4) Claim 2 is unpatentable under 35 U.S.C. § 103 as obvious over
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`Boulay 2004 (Ex. 1005), O’Donnell (Ex. 1029), and Duran (Ex.
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`1011), in further view of Tabernero (Ex. 1038).
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`The accompanying Petition filed by Argentum presents only the identical
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`grounds on which the Par IPR was instituted.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`The Leahy-Smith America Invents Act (“AIA”) permits joinder of inter
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`partes review proceedings. The statutory provision governing joinder of inter
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`partes review proceedings is 35 U.S.C. § 315(c), which reads as follows:
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`IPR2017-01063
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`Motion for Joinder
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`Page 2 of 6
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`
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`(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.
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`In exercising its discretion to grant joinder, the Board considers the impact
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`of substantive and procedural issues on the proceedings, as well as other
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`considerations, while being “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” Dell, Inc. v. Network-1 Security Solutions, Inc.,
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`IPR2013-00385, Paper No. 17 at 3 (July 29, 2013). The Board should consider
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`“the policy preference for joining a party that does not present new issues that
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`might complicate or delay an existing proceeding.” Id. at 10. Under this
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`framework, joinder of the present Argentum IPR with the Par IPR is appropriate.
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`“A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” Id. at 4. Each of these factors is addressed fully below.
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`IPR2017-01063
`
`Motion for Joinder
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`Page 3 of 6
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`
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`A.
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`Joinder is Appropriate
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`Joinder with the Par IPR is appropriate here because the Argentum IPR is
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`limited to the same grounds instituted in the Par IPR and relies on the same prior
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`art analysis and expert testimony submitted by Par. The Argentum IPR is identical
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`with respect to the grounds raised in the Par IPR, and does not include any grounds
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`not raised in that proceeding.
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`Joinder is also appropriate because it will promote the just, speedy, and
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`inexpensive resolution of patentability issues, including the determination of
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`validity of the challenged claims of the ’224 patent. For example, a final written
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`decision on the validity of the ’224 patent has the potential to minimize issues and
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`potentially resolve any litigation with respect to the ’224 patent.
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`B. No New Grounds of Unpatentability Are Asserted
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`The Argentum IPR does not present any new grounds of unpatentability. As
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`mentioned above, the Argentum IPR presents only the instituted grounds from the
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`Par IPR. Additionally, the Argentum IPR is based on the same prior art analysis
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`and expert testimony submitted by Par.
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`C.
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`Joinder Will Not Impact the Existing Schedule
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. In this case, joinder will not affect the Board’s ability to issue
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`a final written decision within the one-year timeframe because the Argentum IPR is
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`IPR2017-01063
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`Motion for Joinder
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`Page 4 of 6
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`substantively identical to the Par IPR and no new expert testimony or evidence is
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`presented. Moreover, as discussed below, Argentum agrees to participate in the
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`proceeding in a limited capacity as an “understudy,” absent termination of Par as a
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`party.
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`D. Discovery and Briefing Can Be Simplified
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`Given the Argentum IPR is substantively identical to the Par IPR, the Board
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`may adopt procedures similar to those used in other cases to simplify briefing and
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`discovery during trial. See Hyundai Motor Co. v. American Vehicular Sciences
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`LLC, IPR2014-01543, Paper 11 at 5 (Oct. 24, 2014); Dell Inc. v. Network-1
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`Securities Solutions, Inc., IPR2013-00385, Paper 17 at 8–10 (July 29, 2013);
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`Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 8–10 (June
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`20, 2013). Specifically, as long as Par remains a party, the Board may order
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`petitioners to consolidate filings and to limit Argentum to no additional filings in
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`its understudy role. As long as Par remains a party, Argentum agrees to not submit
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`any separate filings unless it disagrees with Par’s position, and in the event of such
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`disagreement will limits its argument only to points of disagreement with Par. The
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`Board may allow the Patent Owner a corresponding number of pages to respond to
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`any separate filings. See Dell, supra, at 8-9.
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`IPR2017-01063
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`Motion for Joinder
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`Page 5 of 6
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`IV. CONCLUSION
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`For the foregoing reasons, Argentum respectfully requests that
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`the
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`Argentum IPR be instituted and joined with the Par IPR.
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`
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`Date: Mar. 10, 2017
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`By: /Kevin B. Laurence/
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`Respectfully submitted,
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`Kevin B. Laurence
`Reg. No. 38,219
`Lead Counsel for Petitioner
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`Tyler Liu
`Reg. No. 72,126
`Back-up Counsel for Petitioner
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`Matthew C. Phillips
`Reg. No. 43,403
`Back-up Counsel for Petitioner
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`IPR2017-01063
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`Motion for Joinder
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`Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I certify that on March 10, 2017, the foregoing Motion for Joinder was served
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`on the Patent Owner via UPS by serving the correspondence address of record for
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`the ʼ224 Patent:
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`Novartis Pharmaceutical Corporation
`Intellectual Property Department
`One Health Plaza 433/2
`East Hanover, NJ 07936-1080
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`Nicholas N. Kallas
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104-3800
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`Daniel M. Silver
`McCarter & English, LLP
`Renaissance Centre
`405 N. King Street, 8th Floor
`Wilmington, DE 19801
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`
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`/Kevin B. Laurence /
`Kevin B. Laurence
`Reg. No. 38,219
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`IPR2017-01063
`
`Motion for Joinder
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`
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