UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`
`DR. REDDY’S LABORATORIES S.A. and
`DR. REDDY’S LABORATORIES, INC.
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC
`Patent Owner.
`
`__________________
`
`
`Case IPR2017-01582
`Patent No. 8,603,514
`
`__________________
`
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`__________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`
`DR. REDDY’S LABORATORIES S.A. and
`DR. REDDY’S LABORATORIES, INC.
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC
`Patent Owner.
`
`__________________
`
`
`Case IPR2017-01582
`Patent No. 8,603,514
`
`__________________
`
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`
`Exhibit
`2001
`
`2002
`
`2003
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Description
`Reckitt Benckiser v. Watson Trial Opinion (Ex. 2002 in
`IPR2017-00200)
`Redline comparison of Teva petition and Dr. Reddy’s petition
`(Ex. 2002 in IPR2016-01111)
`Redline comparison of Dr. Panyam’s and Dr. Celik’s
`declarations (Ex. 2003 in IPR2016-01111)
`
`
`
`i
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`
`BACKGROUND ............................................................................................ 2
`
`III. ARGUMENT .................................................................................................. 6
`
`A. DRL does not deserve a “second bite at the apple” ............................. 7
`
`B.
`
`DRL’s joinder would cause undue burden and prejudice, and
`possible delays .................................................................................... 10
`
`II.
`
`CONCLUSION ............................................................................................. 13
`
`
`
`
`
`
`ii
`
`
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`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Ariosa Diagnostics v. Isis Innovation Ltd.,
`IPR2013-00250, Paper 4 (PTAB Apr. 19, 2013) ................................................. 9
`
`Ariosa Diagnostics v. Isis Innovation Ltd.,
`IPR2013-00250, Paper 24 (PTAB Sept. 3, 2013) ................................................. 9
`
`LG Elecs., Inc. v. ATI Techs. ULC,
`IPR2015-01620, Paper 10 (PTAB Feb. 2, 2016) .................................................. 8
`
`Microsoft Corp. v. Proxyconn, Inc.,
`Case IPR2013-00109, Paper 15 (PTAB Feb. 25, 2013) ....................................... 9
`
`Mylan Pharms. Inc. v. Janssen Oncology, Inc.,
`IPR2016-01332, Paper 21 (PTAB Jan. 10, 2017) ...................................... 6, 7, 11
`
`Reloaded Games, Inc. v. Parallel Networks LLC,
`IPR2014-00950, Paper 12 (PTAB Oct. 22, 2014) ................................................ 9
`
`Samsung Elecs. Co., Ltd. v. Affinity Labs of TX, LLC,
`IPR2015-00820, Paper 12 (PTAB May 15, 2015) ......................................passim
`
`Samsung Elecs. Co., Ltd. v. Arendi S.A.R.L.,
`IPR2014-01142, Paper 11 (PTAB Oct. 2, 2014) ................................................ 11
`
`Teva Pharms. USA, Inc., v. ViiV Healthcare Co.,
`IPR2015-00550, Paper 11 (PTAB June 25, 2015) ......................................... 6, 10
`
`Ubisoft, Inc. v. Uniloc USA, Inc.,
`IPR2016-00414, Paper 16 (PTAB June 2, 2016) ................................................. 9
`
`ZTE Corp. v. Adaptix, Inc.,
`IPR2015-01184, Paper 10 (PTAB July 24, 2015) .............................................. 11
`
`Statutes and Regulations
`
`35 U.S.C. § 315(b) ......................................................................................... 1, 4, 6, 7
`
`iii
`
`
`
`
`
`35 U.S.C. § 315(c) ............................................................................................. 1, 6, 8
`35 U.S.C. § 315(c) ........................................................................................... ..1, 6, 8
`
`37 C.F.R. § 42.1(b) .............................................................................................. 6, 12
`37 CPR. § 42.1(b) ............................................................................................ ..6, 12
`
`37 C.F.R. § 42.20(c) ................................................................................................... 7
`37 CPR. §42.20(c) ................................................................................................. ..7
`
`37 C.F.R. § 42.25(a)(1) .............................................................................................. 1
`37 CPR. § 42.25(a)(1) ............................................................................................ ..1
`
`37 C.F.R. § 42.101(b) ................................................................................................ 6
`37 CPR. §42.101(b) .............................................................................................. ..6
`
`37 C.F.R. § 42.122(b) ................................................................................................ 6
`37 CPR. §42.122(b) .............................................................................................. ..6
`
`
`
`iv
`
`iV
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`
`
`
`
`I.
`
`
`
`INTRODUCTION
`
`On June 12, 2017, Petitioner, Dr. Reddy’s Laboratories S.A. and Dr.
`
`Reddy’s Laboratories, Inc. (“DRL”) filed a petition for inter partes review of U.S.
`
`Patent No. 8,603,514 (“’514 Patent”), the eleventh overall challenge in district
`
`court and at the PTAB to the ’514 patent in the past four years. DRL also moved
`
`for joinder of the instant proceeding with IPR2017-00200 (“’00200 IPR.”) Paper 3
`
`(DRL’s motion). Patent Owner, MonoSol Rx, LLC, opposes DRL’s motion, and
`
`this opposition is timely filed under 37 C.F.R. § 42.25(a) (1), less than one month
`
`from the date of DRL’s motion.
`
`
`
`The Board has discretion under 35 U.S.C. § 315(c) to deny joinder. DRL’s
`
`petition is its second against the ’514 patent and, absent joinder, the petition is
`
`time-barred under 35 U.S.C. § 315(b). Further, DRL’s petition relies on declaration
`
`testimony of a new expert witness, which will mean more discovery and related
`
`activity in this proceeding and in the ’00200 trial. DRL’s motion also concedes that
`
`the petitioner in the ’00200 IPR, Mylan Technologies Inc. (“Mylan”), has not
`
`agreed to DRL’s joinder, foretelling possible complications that could burden the
`
`parties and the Board and affect the ’00200 trial schedule. The Board has exercised
`
`its discretion to deny joinder under similar circumstances, and should do so here as
`
`well.
`
`
`
`1
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`
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`
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`II. BACKGROUND
`
`
`
`
`
`Previous Challenges to the ’514 Patent
`
`The ’514 patent discloses a breakthrough in the art of pharmaceutical film
`
`technology. See Ex. 2001 at 41 (in a related proceeding, the court stating “[t]he
`
`praise that MonoSol and Reckitt received once they began publishing their work
`
`on film technology does suggest that the asserted claims of the ’514 patent were
`
`not obvious.”).1 Specifically, the field has “credit[ed] the ’514 patent inventors
`
`with discovering that the agglomeration of active particles that led to non-
`
`uniformity was caused by relatively long drying times, which facilitated
`
`intermolecular attractive forces, convection forces, and air flow which aided in the
`
`formation of such conglomerates.” Id. (internal quotations omitted).
`
`
`
`The ’514 patent covers the Suboxone® sublingual film (“Suboxone film”), a
`
`pharmaceutical film containing buprenorphine and naloxone, used for the
`
`treatment of opioid addiction. Ex. 1027 at 5–6 (¶23, ¶26); Ex. 2001 at 4. Suboxone
`
`film is a highly successful drug product, and multiple generic drug manufacturers
`
`have sought to test the validity of the ’514 Patent. The first challengers, Watson
`
`Laboratories, Inc. (Case 1-13-cv-01674-RGA (D. Del.), complaint served October
`
`8, 2013) and Par Pharmaceutical, Inc. (“Par”) (Case 1-14-cv-00422-RGA (D.
`
`Del.), complaint served April 4, 2014), were defendants in Hatch-Waxman
`
`1 Ex. 2001 is entered as “Ex. 2002” in the ’00200 IPR.
`
`2
`
`
`
`
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`litigations filed in federal court in Delaware by Patent Owner in response to their
`
`filing of Abbreviated New Drug Applications (“ANDAs”) with the Food and Drug
`
`Administration (“FDA) seeking approval to market their own version of Suboxone
`
`film. On June 3, 2016, the Delaware court affirmed the validity of the ’514 patent.
`
`See Ex. 2001 at 42 (stating that the asserted prior art did not render the claims
`
`obvious and noting that “Plaintiffs showed that the ’514 patent and its drug content
`
`uniformity limitation garnered praise in the industry.”).
`
`
`
`Next, the ’514 patent was challenged by Teva Pharmaceuticals USA, Inc.
`
`(“Teva”) in another Hatch-Waxman litigation (Case 1-14-cv-01451-RGA (D.
`
`Del.), complaint served December 2, 2014.) During that litigation, DRL purchased
`
`the rights to Teva’s drug product and its associated ANDAs. DRL was substituted
`
`for Teva on September 22, 2016. See DRL’s motion at 1–2. Trial occurred in
`
`November 2016, and the parties await the court’s decision.
`
`
`
`The ’514 patent has also been challenged in the Delaware court by Alvogen
`
`Pine Brook, Inc. (“Alvogen”) (Case 1-15-cv-00477-RGA (D. Del.), complaint
`
`served June 10, 2015), Mylan (Case 1-15-cv-01016-RGA (D. Del.), complaint
`
`served November 4, 2015) and Sandoz, Inc. (“Sandoz”) (Case 1-15-cv-01051-
`
`RGA (D. Del.), complaint served November 13, 2015). Of those, Sandoz withdrew
`
`its challenge and the case was dismissed. See Case 1:15-cv-01051-RGA,
`
`3
`
`
`
`
`
`Document 43 (granting dismissal on August 22, 2016). Cases against Mylan and
`
`Alvogen are ongoing. See Case 1:15-cv-01016-RGA, Document 151.
`
`
`
`The patentability of the ’514 patent has also been challenged at the PTAB.
`
`The first petitioner was Teva, which had its petition denied as time-barred under 35
`
`U.S.C. § 315(b). IPR2016-00281, Paper 21 at 4–7 and 9–13 (denying Teva’s
`
`petition on May 23, 2016). Within days, on May 31, 2016, DRL filed a petition
`
`which was essentially verbatim to Teva’s time-barred petition. Ex. 2002 (redline
`
`comparison of the petitions).2 The petition was also supported by an essentially
`
`verbatim expert opinion, but proffered by a different expert. Ex. 2003 (redline
`
`comparison of the declarations).3 The Board denied institution on the merits.
`
`IPR2016-01111, Paper 14.
`
`
`
`
`
`The ’00200 IPR
`
`The Board instituted trial in the ’00200 IPR on May 12, 2017. See ’00200
`
`IPR, Paper 8 (“institution decision”). The institution decision has elicited two
`
`essentially verbatim petitions and motions for joinder, from Par (and Intelgenx)
`
`and once again, from DRL. Paper 2 (“DRL’s petition”), Paper 3 (“DRL’s
`
`motion”); IPR2017-01557 (“’01557 proceeding”), Paper 1 (“Par’s petition”), Paper
`
`4 (“Par’s motion”).
`
`
`2 Ex. 2002 is entered as “Ex. 2002” in IPR2016-01111.
`3 Ex. 2003 is entered as “Ex. 2003” in IPR2016-01111.
`
`4
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`
`
`
`
`
`
`Par indicates that it reached agreement with the petitioner in the ’00200 IPR,
`
`Mylan, and defers an active role in discovery, oral arguments and papers filed with
`
`the Board, unless Mylan withdraws. Par’s motion at 1 (“Mylan has indicated that it
`
`does not oppose Petitioners’ motion.”), 5–6 (describing Par’s role if it were
`
`joined). Par agrees to rely on the same expert declaration and shall act as a “silent
`
`understudy.” Par’s petition at 1 (“This petition relies on the testimony of Dr.
`
`Buckton (Ex. 1002) submitted with IPR2017-00200.”); Par’s motion at 5 (“[Par]
`
`will assume an “understudy” role if they are joined to the [’00200 IPR].”).
`
`
`
`Although DRL also asserts its intent to be a “silent understudy” (DRL’s
`
`motion at 8), its petition and motion suggest otherwise. First, unlike Par, DRL’s
`
`motion explains that “Mylan indicated that it would agree to joinder under certain
`
`circumstances, however, the parties were unable to finalize the agreement by the
`
`deadline to file the instant motion.” DRL’s motion at 1. Second, unlike Par, DRL
`
`agrees only to not “materially” participate in “calls with the Board, depositions, or
`
`hearings.” DRL’s motion at 7–8, fn. 1; Par’s motion at 5. Finally, unlike Par,
`
`DRL’s petition relies on the declaration testimony of a new expert witness who is
`
`not currently involved in the ’00200 IPR. DRL’s motion at 4–5; Ex. 1002
`
`(“Declaration of Bozena Michniak-Kohn, Ph.D.”).
`
`
`
`Under the current trial schedule in the ’00200 IPR, Patent Owner’s Response
`
`is due July 24. ’00200 IPR, Paper 9 at 7.
`
`5
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`
`
`
`
`III. ARGUMENT
`35 U.S.C. § 315(b) bars institution of inter partes review when the petition
`
`
`
`is filed more than one year after the petitioner, or petitioner’s real party in interest
`
`or privy, was served with a complaint alleging infringement of the challenged
`
`patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). That one-year time bar,
`
`however, does not apply to a request for joinder. 35 U.S.C. § 315(b); 37 C.F.R.
`
`§ 42.122(b).
`
`
`
`Joinder may be authorized when warranted, but the decision to grant joinder
`
`is discretionary. 35 U.S.C. § 315(c) (“the Director, in his or her discretion, may
`
`join as a party to that inter partes review”); 37 C.F.R. § 42.122(b); Mylan Pharms.
`
`Inc. v. Janssen Oncology, Inc., IPR2016-01332, Paper 21 at 8 (PTAB Jan. 10,
`
`2017) (“Mylan Pharms.”). Motions for joinder are considered on a case-by-case
`
`basis, taking into account the particular facts of each proceeding. Teva Pharms.
`
`USA, Inc., v. ViiV Healthcare Co., IPR2015-00550, Paper 11 at 3 (PTAB June 25,
`
`2015) (“Teva Pharms.”). The patent trial regulations, including the rules for
`
`joinder, must always be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding. 37 C.F.R. § 42.1(b); Samsung Elecs. Co., Ltd. v.
`
`Affinity Labs of TX, LLC, IPR2015-00820, Paper 12 at 4–5 (PTAB May 15, 2015)
`
`(“Samsung v. Affinity”).
`
`6
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`
`
`
`
`
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`In the present case, DRL was substituted for its predecessor in interest, Teva,
`
`as defendant in a litigation where the ’514 patent was asserted, and its validity
`
`challenged, in 2014. DRL’s motion at 1–2. Therefore, absent joinder, DRL’s new
`
`petition is time-barred under 35 U.S.C. § 315(b).
`
`
`
`As movant, DRL bears the burden to prove it is entitled to the relief
`
`requested. 37 C.F.R. § 42.20(c); Samsung v. Affinity, Paper 12 at 3. DRL’s motion
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`must (1) set forth reasons why joinder is appropriate; (2) identify any new grounds
`
`of unpatentability asserted in the petition; and (3) explain what impact (if any)
`
`joinder would have on the trial schedule for the existing review. Mylan Pharms.,
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`Paper 21 at 8. Because DRL’s petition is time-barred under U.S.C. § 315(b), DRL
`
`must also provide a reasonable explanation for being allowed a “second bite at the
`
`apple.” See Samsung v. Affinity, Paper 12 at 4–5.
`
`A. DRL does not deserve a “second bite at the apple”
`The Board has denied joinder of time-barred petitions that utilize institution
`
`
`
`decisions to rectify deficiencies in earlier Petitions that were denied institution. For
`
`example, in Samsung v. Affinity, joinder was denied where the movant previously
`
`filed a petition against the same patent, its new petition was time-barred under
`
`U.S.C. § 315(b), and despite allegedly identifying new prior art during the course
`
`of litigation with the Patent Owner, the movant provided no explanation why
`
`reasonable diligence could not have uncovered the new prior art before its first
`
`7
`
`
`
`
`
`petition was timely filed. Samsung v. Affinity, Paper 12 at 3–5. The Board observed
`
`that the movant “seeks to use our Decision to Institute . . . as a guide to remedy
`
`deficiencies in the earlier filed petition, i.e., a ‘second bite at the apple.’” Id. at 4;
`
`see also LG Elecs., Inc. v. ATI Techs. ULC, IPR2015-01620, Paper 10 at 10 (PTAB
`
`Feb. 2, 2016) (joinder denied where the movant’s petition “uses our Decision to
`
`Institute in [the instituted proceeding] as a guide to remedy deficiencies in
`
`[movant’s] First Petition”).
`
`
`
`Similarly, DRL’s petition is a multiple or “serial” petition, namely, its
`
`second petition, and the eleventh court or agency challenge overall to the ’514
`
`patent. DRL’s motion approaches the relief requested—joinder and institution—as
`
`if this relief should be “granted as a matter of right where the later petitioner files
`
`an identical petition with identical grounds of unpatentability.” See DRL’s motion
`
`at 4 (citing legislative history to suggest joinder should be a matter of right if the
`
`petitions are identical). However, as the statute clearly recites joinder is
`
`discretionary, not a matter of right. See U.S.C. 315(c).
`
`
`
`To the extent that DRL’s latest petition relies on new arguments not made in
`
`its earlier petition, no reason is provided why the new arguments based on different
`
`grounds could not have been identified using reasonable efforts and relied upon in
`
`its earlier petition. Samsung v. Affinity, Paper 12 at 4 (noting that the movant
`
`articulated no persuasive reason why, using reasonable efforts, the new reference
`
`8
`
`
`
`
`
`could not have been identified and relied upon in the earlier, timely-filed petitions);
`
`see also Ubisoft, Inc. v. Uniloc USA, Inc., IPR2016-00414, Paper 16 at 6 (PTAB
`
`June 2, 2016) (joinder denied where movant did not sufficiently explain why its
`
`first petition “did not contain the grounds and arguments set forth in the Petition in
`
`this proceeding”); Reloaded Games, Inc. v. Parallel Networks LLC, IPR2014-
`
`00950, Paper 12 at 4–5 (PTAB Oct. 22, 2014) (joinder denied where movant failed
`
`to raise grounds of unpatentability “that could not have been raised when filing [its
`
`first] Petition”). Thus, this is not a case of “changed circumstances” that would
`
`make joinder appropriate. Cf. Ariosa Diagnostics v. Isis Innovation Ltd., IPR2013-
`
`00250, Paper 4 at 3 (new product was launched, leading to a threat of new
`
`assertions of infringement); Paper 24 at 5 (PTAB Sept. 3, 2013) (joinder granted);
`
`Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, Paper 15 at 3–5 (PTAB
`
`Feb. 25, 2013) (joinder granted where new claims from the same patent were
`
`asserted by Patent Owner during concurrent litigation). Instead, as in Samsung v.
`
`Affinity, DRL has used the Board’s institution decision in the ‘00200 IPR as a
`
`roadmap to attempt to remedy deficiencies in its earlier filed petition.
`
`
`
`DRL’s motion also explains that joinder would ensure the ’00200 IPR is
`
`pursued to finality. DRL’s motion at 5–6. Patent Owner, however, does not oppose
`
`9
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`
`
`
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`Par’s joinder,4 and therefore even if Mylan were to settle with Patent Owner, Par
`
`would remain in the trial.
`
`
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`Finally, DRL’s apparent desire to present new grounds does not itself justify
`
`another go-round—especially when DRL’s latest petition is directed to claims that
`
`have already been the subject of multiple court challenges and inter partes review
`
`petitions.
`
`B. DRL’s joinder would cause undue burden and prejudice, and
`possible delays
`
`
`
`Time-barred petitions have been denied joinder where the original petitioner
`
`did not consent to joinder, raising the possibility of additional filings and discovery
`
`and possible disruption to the trial schedule. As the Board in Teva Pharms.
`
`explained, “Petitioner in this proceeding, Teva, has not obtained the agreement of
`
`Petitioner in IPR2014-00876, Apotex, to consolidate filings. Thus every paper filed
`
`by Petitioner in any joined proceeding” could lead to additional filings by
`
`Petitioner in the original proceeding and by Patent Owner in the joined proceeding.
`
`Teva Pharms., Paper 11 at 5–6. Time-barred petitions have also been denied
`
`
`4 Although Par’s petition is also time-barred, Par came to agreement with Mylan on
`
`joinder to “minimize any complication or delay to the [’00200] IPR” including
`
`relying on the same expert declaration. Par’s petition at 1; Par’s motion at 1, 5–6.
`
`10
`
`
`
`
`
`joinder where the introduction of a new testifying expert could disrupt the trial
`
`schedule. Mylan Pharms., Paper 21 at 9–11 (joinder denied where it would require
`
`adjusting the schedule to allow Patent Owner additional discovery regarding the
`
`new expert’s testimony); see also Samsung Elecs. Co., Ltd. v. Arendi S.A.R.L.,
`
`IPR2014-01142, Paper 11 at 4–7 (PTAB Oct. 2, 2014) (joinder denied where new
`
`petition involved the same ground of unpatentability but was supported by
`
`different expert declaration); ZTE Corp. v. Adaptix, Inc., IPR2015-01184, Paper 10
`
`at 4–5 (PTAB July 24, 2015) (same).
`
`Here, DRL has introduced a new testifying expert witness, but has been
`
`unable to agree to “certain circumstances” (DRL motion at 1) required by
`
`petitioner in the ’00200 IPR. See Ex. 1002, Michniak-Kohn declaration; compare
`
`’00200 IPR, Ex. 1002 (“Declaration of Graham Buckton, Ph.D.”). DRL’s motion
`
`provides no explanation why, unlike Par, its petition could not rely on Dr.
`
`Buckton’s declaration. DRL’s joinder would require Patent Owner to face a new
`
`expert, resulting in at least one additional expert witness deposition and possible
`
`collateral discovery issues associated with that deposition.
`
`DRL’s motion cites a single Board decision, Apotex, Inc. v. Novartis AG, to
`
`support the proposition that, “while [DRL] and [petitioner in the ’00200 IPR] have
`
`relied upon testimony from separate experts in their respective petitions, the
`
`analysis and rationale of the experts are the same, and therefore present no
`
`11
`
`
`
`
`
`additional burden on the part of the Patent Owner to address.” DRL’s motion at 5
`
`(citing IPR2015-00518, Paper 8 at 3–4). In Apotex, however, the movant’s petition
`
`was its first (id., Paper 2 at 1–2), it was not time-barred (id., Paper 8 at 3), and the
`
`movant had reached agreement with the original petitioner on the logistics of
`
`joinder, to avoid burdens on the parties or the Board, or undue delays to the trial
`
`schedule. Id., Paper 8 at 2–4. In contrast, no such agreement exists between DRL
`
`and Mylan, raising the specter of additional discovery, additional filings, and
`
`potential disruption to the ’00200 IPR trial schedule.
`
`In particular, while DRL attempts to assure the Board that briefing and
`
`discovery in a joined proceeding will not be enlarged, joinder here could interfere
`
`with the just, speedy, and inexpensive resolution of the ’00200 IPR. See 37 C.F.R.
`
`§ 42.1(b); Samsung v. Affinity, Paper 12 at 4–5. The lack of any agreement by
`
`Mylan to joinder may lead to additional filings by one or more of the Petitioners
`
`and by Patent Owner, and, will certainly require participation of additional counsel
`
`at the new expert’s deposition, in telephone conferences with the Board, and at the
`
`oral hearing.
`
`
`
`All of this activity will occur under the ’00200 IPR trial schedule, where
`
`Patent Owner’s Response is due in less than two weeks. Thus, if joinder is granted
`
`before then, Patent Owner will either (i) file its Response, then take the deposition
`
`of the new expert witness, and seek leave to file a supplemental Response after the
`
`12
`
`
`
`
`
`deposition; or, (ii) pursue a stipulated extension of Due Date 2 (so that the
`
`deposition of the new expert can occur before Patent Owner files its Response),
`
`then take the deposition, and file the Response at the stipulated, later date, which in
`
`turn could affect the remaining Due Dates. If joinder is granted after Patent Owner
`
`files its Response in the ’00200 IPR, Patent Owner will thereafter take the
`
`deposition of the new expert witness, and then seek leave to file a supplemental
`
`Response. None of these options will be speedy or inexpensive for the parties, and
`
`all of these options could ultimately impose greater burdens on the Board.
`
`II. CONCLUSION
`
`DRL is a serial petitioner challenging the ’514 patent, with a new testifying
`
`expert, but without agreement from Petitioner to the joinder. In light of these
`
`circumstances, which will create additional burden on the parties and potential
`
`disruption to the trial schedule in the ’00200 IPR, the Board should exercise its
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`discretion to deny joinder, and deny institution of DRL’s new petition as time-
`
`barred.
`
`
`
`Date: July 11, 2017
`
`
`
`Respectfully submitted,
`
`/Harold H. Fox/
`
`
`
`
`
`Harold H. Fox
`Reg. No. 41,498
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, N.W.
`
`13
`
`
`
`
`
`Washington, DC 20036-1795
`Telephone: (202) 429-6284
`
`John L. Abramic
`Registration No. 51,031
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Tel: (312) 577-1264
`
`Charanjit Brahma
`Registration No. 46,574
`TROUTMAN SANDERS
`580 California Street, Suite 1100
`San Francisco, CA 94104
`Tel: (415) 477-5713
`
`Dustin B. Weeks
`Registration No. 67,466
`TROUTMAN SANDERS
`600 Peachtree Street, NE
`Suite 5200
`Atlanta, GA 30308
`Tel: (404) 885-3446
`
`Counsel for MonoSol Rx, LLC
`
`14
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S OPPOSITION TO MOTION FOR JOINDER was served on July 11,
`2017 by filing this document through the Patent Trial Appeal Board End to End
`System as well as by delivering a copy via electronic email to the attorneys of
`record for the Petitioner’s as follows:
`Ira J. Levy
`ILevy@goodwinlaw.com
`
`Robert V. Cerwinski
`RCerwinski@goodwinlaw.com
`
`
`July 11, 2017 By:
`
`
`
`
`/Harold H. Fox/
`
`
`
`
`
`
`
`
`
`
`
`
`Harold H. Fox
`
`Counsel for MonoSol Rx, LLC
`
`
`
`
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