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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC
`Petitioner,
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`v.
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`KAKEN PHARMACEUTICAL CO., LTD.
`Patent Owner
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`Patent No. 7,214,506
`Issue Date: May 8, 2007
`Title: Method for Treating Onychomycosis
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`Case No. IPR2017-01429
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`REPLY TO PATENT OWNER’S OPPOSITION TO JOINDER
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`TABLE OF CONTENTS
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`IPR2017-01429
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`Introduction .................................................................................................. 2
`I.
`II. Argentum Agrees to Withdraw Dr. Maurizio Del Poeta and Retain Dr.
`Kenneth Walters ........................................................................................... 2
`III. Joinder Will Not Complicate or Disrupt the Trial Schedule ................... 3
`IV. Argentum Agrees with Patent Owner’s Safeguards ................................. 4
`V. Conclusion ..................................................................................................... 4
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`IPR2017-01429
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`I.
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`Introduction
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`Argentum Pharmaceuticals LLC (“Argentum” or “Petitioner”) has moved
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`for joinder of this inter partes review (Case No. IPR2017-01429, “Argentum IPR”)
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`to an earlier inter partes review filed by Acrux DDS Pty Ltd. (Case No. IPR2017-
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`00190, “Acrux IPR”). The Argentum IPR is identical to the Acrux IPR in all
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`substantive aspects. Kaken Pharmaceutical Co. Ltd. (“Patent Owner”) opposed
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`Petitioner’s motion alleging that Acrux and Argentum are not working together.
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`After filing of the Patent Owner’s Opposition, Argentum and Acrux conferred and
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`resolved Patent Owner’s concerns with respect to joinder. Specifically, on July 10,
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`2017, Acrux and Argentum agreed to the joint retention of Dr. Kenneth Walters
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`and Argentum agreed to participate in the joined proceeding in a limited capacity
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`as an understudy, absent termination of Acrux as a party. Argentum has taken all
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`necessary steps to ensure that joinder will not introduce complexity and expense to
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`briefing, discovery, and hearings, or threaten to delay the existing trial schedule.
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`For at least the following reasons, the Board should institute Argentum’s IPR and
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`join it to the Acrux IPR.
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`II. Argentum Agrees to Withdraw Dr. Maurizio Del Poeta and Retain Dr.
`Kenneth Walters
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`Argentum has agreed to retain Dr. Kenneth Walters jointly with Acrux.
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`Argentum agrees to withdraw its expert declaration of Dr. Maurizio Del Poeta
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`within 3 business days of the Board’s decision granting Argentum’s joinder
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`2
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`IPR2017-01429
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`motion, but will not do so preemptively, in the event Acrux is no longer a party to
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`the joined IPR. Upon the Board’s decision granting joinder, Argentum will rely
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`solely on the declaration and testimony of Dr. Walters. The Board has previously
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`acknowledged that such concessions on the part of a party seeking to join are
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`sufficient to minimize the impact on the original proceeding (see SAP America Inc.
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`v. Clouding IP, LLC, IPR2014-00306, Paper 13, page 4).
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`III.
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`Joinder Will Not Complicate or Disrupt the Trial Schedule
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`Joinder will not complicate the Acrux IPR because Argentum and Acrux
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`have agreed to cooperate, consolidate submissions, and jointly retain the same
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`expert. In fact, Argentum has agreed to play a passive, secondary role in the
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`proceedings. Given the Argentum Petition is substantively identical to the Acrux
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`petition, the Board may adopt procedures similar to those used in other cases to
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`simplify briefing and discovery during trial. See e.g., Hyundai, IPR2014-01543,
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`Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17 at 8-10; Motorola,
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`IPR2013-00256, Paper 10 at 8-10. Specifically, as long as Acrux remains a party,
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`Acrux and Argentum will consolidate filings and Argentum will not make any
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`separate submissions unless there are issues raised that are unique to Argentum.
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`Moreover, Argentum has agreed to coordinate with Acrux on scheduling in the
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`joined proceedings and Argentum will not request additional time at depositions or
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`at the oral hearing. Contrary to Patent Owner’s allegations, Acrux and Argentum
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`IPR2017-01429
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`have agreed to cooperate, consolidate submissions, jointly retain Dr. Walters, and
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`apportion hearing time. Therefore, joinder will not disrupt the trial schedule.
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`IV. Argentum Agrees with Patent Owner’s Safeguards
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`In its opposition, Patent Owner lays out safeguards that the Board should
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`implement if it grants joinder. Argentum reiterates its intention to only play a
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`secondary role in the Acrux IPR. Argentum will consolidate all submissions and
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`will not submit any separate papers, except to address specific issues unique to
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`Argentum (e.g., settlement, discovery, real party-in-interest). Argentum agrees not
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`to receive any separate cross-examination or re-direct examination time and that all
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`cross-examinations will occur within the timeframe normally allotted by the rules
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`to one party. Thus, Argentum agrees to all of Patent Owner’s safeguards.
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`V. Conclusion
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`For the foregoing reasons, Argentum’s joinder request is proper and will
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`neither complicate nor delay the Acrux IPR. Therefore, the Board should join this
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`IPR with Acrux DDS Jty Ltd. v. Kaken Pharmaceutical Co. Ltd., IPR2017-00190.
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`Dated: July 12, 2017
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`Respectfully submitted,
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`/Teresa Stanek Rea/
`Teresa Stanek Rea
`Reg. No. 30,427
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Ave, NW
`Washington, DC 20004-2595
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`IPR2017-01429
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true copy of the foregoing Reply to Patent
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`Owner’s Opposition to Joinder, was served in its entirety electronically via
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`email on July 12, 2017, on the following:
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`John D. Livingstone
`Reg. No. 59,613
`john.livingstone@finnegan.com; KakenIPR@finnegan.com
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`271 17th Street, NW, Suite 1400
`Atlanta, GA 30363-6209
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`Naoki Yoshida
`Reg. No. 48,108
`naoki.yoshida@finnegan.com
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`901 New York Ave., NW
`Washington, DC 20001-4413
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`Toan P. Vo
`Reg. No. 43,225
`toan.vo@bausch.com
`Valeant Pharmaceuticals North America LLC
`1400 N. Goodman Street
`Rochester, New York 14609
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`By:
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`/Shannon M. Lentz/
`Shannon M. Lentz
`Reg. No. 65,382
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Ave, NW
`Washington, DC 20004-25950
`Counsel for Petitioner
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