UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DR. REDDY’S LABORATORIES S.A. and
`DR. REDDY’S LABORATORIES, INC.
`Petitioners,
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`v.
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`MONOSOL RX, LLC
`Patent Owner
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`Case No. IPR2017-01582
`Patent No. 8,603,514
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`PETITIONERS’ REPLY IN SUPPORT OF THE MOTION FOR JOINDER
`WITH IPR2017-00200
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DR. REDDY’S LABORATORIES S.A. and
`DR. REDDY’S LABORATORIES, INC.
`Petitioners,
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`v.
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`MONOSOL RX, LLC
`Patent Owner
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`Case No. IPR2017-01582
`Patent No. 8,603,514
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`PETITIONERS’ REPLY IN SUPPORT OF THE MOTION FOR JOINDER
`WITH IPR2017-00200
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`I.
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`INTRODUCTION
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`Monosol RX, LLC (“Patent Owner”) opposed Dr. Reddy’s Laboratories,
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`S.A. and Dr. Reddy’s Laboratories, Inc.’s (collectively, “DRL” or “Petitioners”)
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`Motion for Joinder of its proceeding, IPR2017-01582, with Mylan Technologies
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`Inc.’s (“Mylan”) IPR2017-00200 (“the ’200 IPR”) because, at the time that DRL
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`filed its Motion for Joinder, DRL and Mylan had not yet finalized an agreement to
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`cooperate in a joint IPR proceeding. At the same time, Monosol did not oppose a
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`nearly identical motion for joinder by Par Pharmaceutical, Inc. (“Par”) based on a
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`representation by Par that it had an agreement to cooperate with Mylan. As
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`foreshadowed in DRL’s opening brief, Mylan and DRL have now finalized their
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`agreement to cooperate in a joint IPR proceeding, and Mylan does not oppose
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`DRL’s motion for joinder. DRL’s agreement with Mylan and Par’s agreement
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`with Mylan (as described by Patent Owner) each provides the same conditions for
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`joinder, with DRL and Par each adopting the familiar “understudy” role of a joined
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`petitioner.
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`DRL’s agreement with Mylan addresses every valid concern raised by
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`Patent Owner in its Opposition to Petitioners’ Motion for Joinder, and effectively
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`moots the opposition. The Board should therefore grant Petitioners’ motion.
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`1
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`II. ARGUMENT
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`Patent Owner’s principal argument in opposition to Petitioners’ Motion for
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`Joinder was that, since Mylan and DRL had not agreed on the conditions under
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`which a joined IPR would proceed, joinder of DRL to the ’200 IPR would delay
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`the “just, speedy, and inexpensive” resolution of that proceeding. (Opposition, at
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`12.) DRL’s agreement with Mylan ensures that joining DRL would not interfere
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`with the schedule of the ’200 IPR and would not delay resolution.
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`Under Mylan and DRL’s agreement, DRL will take the familiar
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`“understudy” role of a petitioner joined to an instituted IPR. Specifically, DRL has
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`agreed that, so long as Mylan remains a party to the IPR: (1) DRL will rely on the
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`expert declaration of Mylan’s expert in the ’200 IPR; (2) DRL will not receive any
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`separate cross examination or redirect time during witness depositions, and cross
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`examinations will occur within the timeframe normally allotted by the Board’s
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`rules to one party; and (3) DRL will incorporate its filings with those of Mylan in
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`consolidated filings, subject to the Board’s rules for one party on page limits. DRL
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`further agrees to adopt a silent role in all communications with the Board and at the
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`oral hearing for the joined proceeding.
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`DRL’s Petition presents the same ground of unpatentability that was
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`instituted in the ’200 IPR, and relies on the same documentary evidence, with the
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`exception of the expert declaration. Along with its Petition, DRL relied on the
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`declaration of its own expert who offered testimony that is nearly identical to the
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`testimony offered by Mylan’s expert declarant in the ’200 IPR. DRL understands
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`that, upon joinder with the ’200 IPR, the instant IPR proceeding will be terminated
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`and DRL’s expert declaration will not be of record in the joined proceeding. DRL
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`therefore has received Mylan’s consent to retain Mylan’s declarant, Dr. Buckton,
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`to work with DRL for purposes of the joined IPR. Since DRL will not have any
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`expert that is not also an expert for Mylan, joining DRL will not necessitate any
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`further depositions and will therefore not affect the schedule for the ’200 IPR.
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`Par has also filed a petition challenging the patentability of the ’514 patent,
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`along with a motion for joinder with the ’200 IPR. Patent Owner has stated that it
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`does not oppose Par’s motion for joinder because Par agreed with Mylan to play an
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`understudy role in the joined IPR, and its participation would therefore not affect
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`the schedule of the ’200 IPR. (Opposition, at 9-10 and note 4.) Because DRL has
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`agreed to play an understudy role in the joined proceeding, identical to the
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`understudy role that Par has agreed to play in the joined proceeding (compare the
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`terms listed above with the terms listed in Par’s Motion for Joinder, IPR2017-
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`01557, Paper 4, at 5-6), Patent Owner’s concerns regarding joinder of DRL are
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`addressed.
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`For all of the reasons stated in Petitioner’s Motion for Joinder, joining DRL
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`to the ’200 IPR would further the Board’s “policy preference for joining a party
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`3
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`that does not present new issues that might complicate or delay an existing
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`proceeding.” Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc., IPR2014-
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`00556, Paper 19 at 6 (P.T.A.B. Jul. 9, 2014). The decisions that Patent Owner
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`cites in its Opposition, having entirely different factual patterns than those present
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`here, do not instruct otherwise. In Samsung Elects. Co. v. Affinity Labs of Texas,
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`LLC, IPR2015-00820, Paper 12 (P.T.A.B. May 15, 2015), the Board denied joinder
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`for Samsung’s fourth petition for IPR of the same patent, after having granted each
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`of the first three petitions. In both LG Elects. Inc. v. ATI Techs. ULD, IPR2015-
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`01620, Paper 10 (P.T.A.B. Feb. 2, 2016) and Reloaded Games, Inc. v. Parallel
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`Networks, LLC, IPR2014-00950, Paper 12 (P.T.A.B. Oct. 22, 2014), the Board
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`denied petitioner’s motion to join an IPR in which it was itself the petitioner. The
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`second petition relied on different grounds and concerned different claims than
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`were involved in the already-instituted IPR. Thus, joinder would have added new
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`issues into the instituted IPR. And, in Ubisoft, Inc. v. Uniloc USA, Inc., IPR2016-
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`00414, Paper 16 (P.T.A.B. Jun. 2, 2016), the Board denied joinder to an IPR that
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`had already been terminated (and it was petitioner’s third petition; the first IPR had
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`reached a final written decision and the first CBM had been denied institution).
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`In this case, DRL’s petition presents only challenges identical to those that
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`are already instituted by the Board. Joinder is therefore appropriate because it will
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`4
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`promote efficient and consistent resolution of the unpatentability grounds at issue
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`and will not prejudice any of the parties to the ’200 IPR.
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`III. CONCLUSION
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`DRL’s agreement with Mylan addresses all of Patent Owner’s concerns
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`regarding the schedule for the ’200 IPR, and DRL’s joinder will not, in any way,
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`affect the just, speedy, and inexpensive resolution of the proceeding. Joinder is
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`therefore appropriate under 37 C.F.R. § 42.1(b) and under the Board’s precedent.
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`Petitioners respectfully request that the Board grant their Motion for Joinder with
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`the ’200 IPR.
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`Dated: July 26, 2017
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`5
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`Respectfully submitted,
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`/Ira J. Levy/
`Ira J. Levy (Reg. No. 35,587)
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Tel.: 212-459-7456
`Fax: 646-558-4143
`ILevy@goodwinlaw.com
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`Counsel for Petitioners Dr. Reddy’s
`Laboratories S.A. and Dr. Reddy’s
`Laboratories, Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this “PETITIONERS’ REPLY IN
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`SUPPORT OF THE MOTION FOR JOINDER WITH IPR2017-00200” was
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`served on this 26th day of July 2017 on Patent Owner by email to Patent Owner’s
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`counsel of record at the following addresses provided in Patent Owner’s
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`Mandatory Notices:
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`hfox@steptoe.com
`514MIPR@steptoe.com
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`Courtesy copies of the foregoing were also served on counsel for Mylan in
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`the ’200 IPR by email at the following addresses provided in Mylan’s Mandatory
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`Notices in that proceeding:
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`/Sarah Fink/
`Sarah Fink (Reg. No. 64,886)
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`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
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`Dated: July 26, 2017
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