UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner,
`
`v.
`
`NOVARTIS A.G.,
`Patent Owner.
`
`
`
`
`
`U.S. Patent No. 9,187,405
`Issue Date: November 17, 2015
`Title: S1P Receptor Modulators for Treating Relapsing-Remitting Multiple
`Sclerosis
`
`Inter Partes Review No. IPR2017-01550
`
`MOTION FOR JOINDER
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner,
`
`v.
`
`NOVARTIS A.G.,
`Patent Owner.
`
`
`
`
`
`U.S. Patent No. 9,187,405
`Issue Date: November 17, 2015
`Title: S1P Receptor Modulators for Treating Relapsing-Remitting Multiple
`Sclerosis
`
`Inter Partes Review No. IPR2017-01550
`
`MOTION FOR JOINDER
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)
`
`
`
`
`
`U.S. Patent No. 9,187,405
`
`
`
`TABLE OF CONTENTS
`STATEMENT OF PRECISE RELIEF REQUESTED .............................. 1
`I.
`BACKGROUND ............................................................................................ 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ................... 3
`A.
`Joinder is Appropriate .......................................................................... 4
`B. No New Grounds of Unpatentability Are Asserted ........................... 5
`C.
`Joinder Will Not Impact the Existing Schedule ................................. 5
`D. Discovery and Briefing Can Be Simplified ......................................... 6
`IV. CONCLUSION .............................................................................................. 7
`
`
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`
`
`-i-
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`
`
`U.S. Patent No. 9,187,405
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`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`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.
`
`§ 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
`
`invalidity in Apotex, Inc. and Apotex Corp. v. Novartis AG, IPR2017-00854
`
`(“Apotex IPR”), which was filed on February 3, 2017. Joinder is appropriate
`
`because it will promote efficient and consistent resolution of two related
`
`proceedings involving the same patent in a single inter partes review.
`
`This Motion for Joinder is timely because it was filed before the institution
`
`date of the Apotex IPR and, therefore, “no later than one month after the institution
`
`date of any inter partes review for which joinder is requested.” 37 C.F.R.
`
`§ 42.122(b). See Mercedes-Benz USA, LLC v. Innovative Display Techs. LLC, Case
`
`IPR2015-00360, slip. op. at 4 (PTAB May 22, 2015) (Paper 22) (holding joinder
`
`motion timely, as it was filed more than one month before institution decision);
`
`Taiwan Semiconductor Mfg. Co. v. Zond, LLC, Case IPR2014-00781, slip. op. at 4
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`(PTAB May 29, 2014) (Paper 5) (explaining that preinstitution joinder movant
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`“should indicate whether it would withdraw noninstituted grounds of unpatentability
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`should the Board institute an inter partes review with less than all of the asserted
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`grounds of unpatentability in [the earlier filed, not-yet-instituted IPR] proceedings”).
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`-1-
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`U.S. Patent No. 9,187,405
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`II. BACKGROUND
`
`On February 3, 2017, Apotex filed a Petition for inter partes review
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`challenging claims 1-6 of United States Patent No. 9,187,405 (the “’405 patent”),
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`which was assigned Case No. IPR2017-00854.
`
`The Apotex IPR Petition asserts the following grounds of unpatentability:
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`(1) Claims 1-6 are unpatentable under 35 U.S.C. § 103 as obvious over
`
`Kovarik in view of Thomson.
`
`(2) Claims 1-6 are unpatentable under 35 U.S.C. § 103 as obvious over
`
`Chiba in view of Kappos 2005 and Budde.
`
`(3) Claims 1-6 are unpatentable under 35 U.S.C. § 102 as anticipated by
`
`Kappos 2010.
`
`The Petition filed by Argentum concurrently with the instant Motion for
`
`Joinder asserts the same grounds of unpatentability against the same patent claims
`
`as the Apotex IPR. Argentum is willing to withdraw any grounds of unpatentability
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`that the Board does not institute in the Apotex IPR. See Taiwan Semiconductor,
`
`IPR2014- 00781, Paper 5 at 4.
`
`Argentum’s IPR Petition is substantively identical to Apotex’s IPR Petition
`
`and includes all the same exhibits as those filed in the Apotex IPR. Argentum has
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`added one additional exhibit (EX1041) which is a copy of the Federal Circuit
`
`Decision of April 12, 2017 affirming the Final Written Decision in IPR2014-00784,
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`-2-
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`
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`U.S. Patent No. 9,187,405
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`
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`an IPR related to the present proceeding.
`
`Apotex has represented to Argentum that it will not oppose this Motion for
`
`Joinder.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of inter
`
`partes review proceedings. The statutory provision governing joinder of inter partes
`
`review proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(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.
`
`In exercising its discretion to grant joinder, the Board considers the impact of
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`
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`substantive and procedural issues on the proceedings, as well as other
`
`considerations, while being “mindful that patent trial regulations, including the rules
`
`for joinder, must be construed to secure the just, speedy, and inexpensive resolution
`
`of every proceeding.” Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-
`
`00385, Paper No. 17 (July 29, 2013) at 3. The Board should consider “the policy
`
`preference for joining a party that does not present new issues that might complicate
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`or delay an existing proceeding.” Id. at 10. Under this framework, joinder of the
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`present Argentum IPR with the Apotex IPR is appropriate.
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`-3-
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`U.S. Patent No. 9,187,405
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`
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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 petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for the
`
`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” Id. at 4. Each of these factors is addressed fully below.
`
`A.
`Joinder is Appropriate
`Joinder with the Apotex IPR is appropriate here because the Argentum IPR is
`
`limited to the same grounds asserted in the Apotex IPR and relies on the same prior
`
`art analysis and expert testimony submitted by Apotex. The Argentum IPR is
`
`identical with respect to the grounds raised in the Apotex IPR, and does not include
`
`any grounds not raised in that proceeding. As stated above, Argentum is also
`
`willing to withdraw any grounds that the Board does not institute in Apotex’s IPR.
`
`See Taiwan Semiconductor, IPR2014- 00781, Paper 5 at 4.
`
`Joinder is also appropriate because it will promote the just, speedy, and
`
`inexpensive resolution of patentability issues, including the determination of
`
`validity of the challenged claims of the ’405 patent. For example, a final written
`
`decision on the validity of the ’405 patent has the potential to minimize issues and
`
`resolve any litigation with respect to the ’405 patent.
`
`Absent joinder, Argentum is not otherwise time-barred from filing a separate
`
`IPR petition that would potentially burden the Board with two separate IPR trials
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`-4-
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`U.S. Patent No. 9,187,405
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`
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`based on different grounds and evidence. This fact weighs in favor of joinder.
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`Lupin Ltd. v. Horizon Therapeutics, Inc., Case IPR2016-00283, Motion at 7 (PTAB
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`Dec., 2015) (Paper 4) (joinder motion granted which argued “Lupin would not be
`
`time-barred from filing the present Petition without a corresponding motion for
`
`joinder”); Teva Pharms. USA, Inc. v. AstraZeneca AB, Case IPR2016-01122,
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`Motion at 11 (PTAB June 1, 2016) (Paper 6) (joinder motion arguing “Teva has an
`
`independent right to file an IPR, having not been previously sued for allegedly
`
`infringing AstraZeneca’s . . . patent” and thus the “Board may otherwise be
`
`burdened with two proceedings.”)
`
`B. No New Grounds of Unpatentability Are Asserted
`The Argentum IPR does not present any new grounds of unpatentability. As
`
`mentioned above, the Argentum IPR presents only the asserted grounds from the
`
`Apotex IPR. Additionally, the Argentum IPR is based on the same prior art analysis
`
`and expert testimony submitted by Apotex. As stated above, Argentum will also
`
`withdraw any grounds the Board does not institute in Apotex’s IPR. See Taiwan
`
`Semiconductor, IPR2014- 00781, Paper 5 at 4.
`
`C.
`Joinder Will Not Impact the Existing Schedule
`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 a
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`final written decision within the one-year timeframe because the Argentum IPR is
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`-5-
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`U.S. Patent No. 9,187,405
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`
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`substantively identical to the Apotex IPR and no new expert testimony or evidence
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`is presented.
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`D. Discovery and Briefing Can Be Simplified
`Because the Argentum IPR is substantively identical to the Apotex IPR, the
`
`Board may adopt procedures similar to those used in other cases to simplify briefing
`
`and discovery during trial. See Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell,
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`IPR2013-00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10.
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`In those proceedings, the Board required the petitioners to make consolidated
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`filings, for which the first petitioner was responsible, and allowed the new petitioner
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`to file an additional seven-page paper addressing only points of disagreement with
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`points asserted in the consolidated filing. See Dell, IPR2013-00385, Paper 17 at 11;
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`SAP Am., IPR2014-00306, Paper 13 at 5. The Board also permitted the patent owner
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`to respond to any separate filing, limiting the page limit to that used in the separate
`
`filing. See Dell, IPR2013-00385, Paper 17 at 11; SAP Am., IPR2014-00306, Paper
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`13 at 5. Adopting similar procedures in this case will minimize any delay that could
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`arise from briefing submitted by each party, while at the same time providing all
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`parties an opportunity to be heard. See Dell, IPR2013-00385, Paper 17 at 8.
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`Moreover, as in the above cases, Argentum will coordinate with Apotex
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`regarding questioning at depositions and at the oral hearing, which will not exceed
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`the time allotted by the rules for one party, or as otherwise agreed between Apotex
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`-6-
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`U.S. Patent No. 9,187,405
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`and Patent Owner or as ordered by the Board. See Dell, IPR2013-00385, Paper 17 at
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`12; SAP Am., IPR2014-00306, Paper 13 at 6.
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`IV. CONCLUSION
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`For the foregoing reasons, Argentum respectfully requests that the Argentum
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`IPR be instituted and joined with the Apotex IPR.
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`Dated: June 9, 2017
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`
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`Respectfully submitted,
`
`
`/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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`-7-
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`U.S. Patent No. 9,187,405
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
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`June 9, 2017, a complete copy of the foregoing Motion for Joinder was served via
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`FedEx® on the Patent Owner by serving the correspondence address of record for
`
`the ʼ405 Patent:
`
`Novartis Pharmaceutical Corporation
`Intellectual Property Department
`One Health Plaza 433/2
`East Hanover, NJ 07936-1080
`
`A courtesy copy of the foregoing was also served via email on the counsel of
`record for the Petitioner and Patent Owner in the Apotex IPR, IPR2017-00854 as
`follows:
`
`Petitioner
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`Patent Owner
`jlove@gibsondunn.com
`rtrenchard@gibsondunn.com
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`Respectfully submitted,
`
`
`
`
`
`/Shannon M. Lentz/
`Shannon M. Lentz
`Reg. No. 65,382
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Ave, NW
`Washington, DC 20004-25950
`
`Dated: June 9, 2017
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`-8-
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