`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`SUN PHARMACEUTICAL INDUSTRIES, LTD., SUN PHARMACEUTICAL
`INDUSTRIES, INC. and SUN PHARMA GLOBAL FZE
`Petitioners,
`
`v.
`
`NOVARTIS A.G.,
`Patent Owner
`
`_____________________
`
`Case No.: IPR2017-01929
`Patent No.: 9,187,405
`_____________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Page
`
`TABLE OF CONTENTS
`
`
`I. STATEMENT OF PRECISE RELIEF REQUESTED ....................................... 2
`II. GOVERNING LAW, RULES AND PRECEDENT .......................................... 2
`III. STATEMENT OF MATERIAL FACTS ........................................................ 4
`IV. ARGUMENT ................................................................................................... 7
`A. No New Grounds of Unpatentability Are Asserted in the Petition ....... 7
`B.
`Joinder is Appropriate Under the Governing Law, Rules, and
`Precedent ............................................................................................... 7
`Joinder Will Have Minimal Impact on the Trial Schedule and Costs
`for the Existing IPR ............................................................................... 9
`Procedures to Simplify Briefing and Discovery ................................. 10
`D.
`V. CONCLUSION ................................................................................................. 10
`
`
`
`
`C.
`
`i
`
`
`
`
`
`Sun Pharmaceutical Industries, Ltd., Sun Pharmaceutical Industries, Inc.,
`
`and Sun Pharma Global FZE, (collectively “Petitioners”) move for joinder of the
`
`accompanying
`
`Inter Partes Review
`
`(“IPR”) Petition
`
`filed
`
`today, Sun
`
`Pharmaceutical Industries, Ltd., Sun Pharmaceutical Industries, Inc., and Sun
`
`Pharma Global FZE v. Novartis A.G., Case No. IPR2017-01929, with Apotex, Inc.
`
`and Apotex Corp. v. Novartis AG, IPR2017-00854, for at least the following
`
`reasons: (1) joinder is appropriate under the governing law, rules, and precedent of
`
`this Board; (2) this Motion for Joinder is timely filed; (3) the two proceedings
`
`concern the same patent, and same prior art; (4) Petitioner relies in whole on the
`
`same evidence and the same declaration testimony in both proceedings; (5) joinder
`
`would neither complicate the issues nor unduly delay the existing schedule of
`
`IPR2017-00854; (6) joinder would significantly simplify briefing and discovery in
`
`the two IPRs, and will have no impact on the existing schedule; and (7) joinder
`
`will not prejudice any party. Finally, joinder here will secure a just, speedy, and
`
`inexpensive resolution in both proceedings, more so than in the absence of joinder,
`
`by avoiding having the Board preside over two separate proceedings involving
`
`identical and duplicative filings and reviews of the same issues.
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioners request joinder under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22
`
`and 42.122(b) of the concurrently-filed petition for IPR of claims 1-6 of U.S.
`
`1
`
`
`
`
`
`Patent No. 9,187,405 (“the ’405 patent”) with the related and instituted IPR,
`
`Apotex, Inc. and Apotex Corp. v. Novartis AG, Case No. IPR2017-00854 (“the
`
`Apotex IPR”).
`
`Petitioners have notified counsel for Apotex, Inc. and Apotex Corp.
`
`(“Apotex”), petitioner in the Apotex IPR, of this Motion. Apotex has indicated
`
`that it does not oppose Petitioners’ request for joinder.1 Further, Apotex and
`
`Petitioner have agreed to coordinate in discovery should joinder be granted, with
`
`Apotex leading in all discovery matters and hearings before the Board.
`
`II. GOVERNING LAW, RULES AND PRECEDENT
`
`Title 35 U.S.C. § 315(c) states:
`
`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
`
`
`1 Petitioners have notified and requested consent from counsel for Patent Owner, Novartis A.G.
`
`Counsel for Patent Owner have informed Petitioners that they are discussing Petitioners’ request
`
`with their client. Petitioners have also notified counsel for Argentum Pharmaceuticals LLC,
`
`petitioner in related IPR Argentum Pharmaceuticals LLC v. Novartis, A.G., Case No. IPR2017-
`
`01550, which was joined with the Apotex IPR on August 9, 2017. Argentum has indicated that it
`
`does not oppose Petitioners’ request for joinder with the Apotex IPR.
`
`2
`
`
`
`
`
`response, determines warrants the institution of an inter partes
`review under section 314.
`
`Title 37 C.F.R. § 42.122(b) states:
`
`Joinder may be requested by a patent owner or petitioner. Any
`request for joinder must be filed, as a motion under §42.22, no
`later than one month after the institution date of any inter partes
`review for which joinder is requested. The time period set forth
`in §42.101(b) shall not apply when the petition is accompanied
`by a request for joinder.
`
`The Board has repeatedly allowed joinder of IPR proceedings when a second
`
`petition raises the same ground(s) of unpatentability as those instituted in a first
`
`proceeding. See, e.g., Argentum Pharmaceuticals LLC v. Novartis, A.G., Case No.
`
`IPR2017-01550, Paper 10 (PTAB August 9, 2017); Wockhardt Bio AG v. Jazz
`
`Pharms., Inc., IPR2015-01813, Paper 10 (PTAB Oct. 30, 2015); Mylan Pharms.
`
`Inc. v. Novartis AG, et al., IPR2015-00268, Paper 17 (PTAB Apr. 10, 2015);
`
`Apple, Inc. v. Smartflash LLC, CBM2015-00119, Paper 11 (PTAB Aug. 6, 2015);
`
`LG Elec., Inc. v. Innovative Display Techs. LLC, IPR2015-00493, Paper 10 (July
`
`15, 2015); Cisco Sys., Inc., et al. v. Straight Path IP Grp., Inc., IPR2015-01006,
`
`Paper 12 (PTAB June 5, 2015).
`
`Indeed, there is a “policy preference for joining a party that does not present
`
`new issues that might complicate or delay an existing proceeding.” See Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 at 10 (PTAB July 29,
`
`3
`
`
`
`
`
`2013) (citing 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
`
`Kyl) (“The Office anticipates that joinder will be allowed as of right – if an inter
`
`partes review is instituted on the basis of a petition, for example, a party that files
`
`an identical petition will be joined to that proceeding, and thus allowed to file its
`
`own briefs and make its own arguments.”) (emphasis added)).
`
`That is precisely the situation here. In accordance with the Board’s
`
`governing law and rules, each of the factors supporting joinder are present in this
`
`Motion for Joinder: (1) reasons why joinder is appropriate; (2) the lack of any new
`
`grounds of unpatentability being raised in the subsequent petition; (3) what impact
`
`(if any) there will be on the trial schedule for the existing review; and (4) how
`
`briefing and/or discovery may be simplified to minimize schedule impact.
`
`Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24,
`
`2013); see also Samsung Elecs. Co. Ltd. v. Unifi Sci. Batteries, LLC, IPR2013-
`
`00236, Paper 22 at 3 (PTAB Oct. 17, 2013).
`
`Each of these factors is addressed below.
`
`III.
`
`STATEMENT OF MATERIAL FACTS
`
` On February 3, 2017, Apotex requested IPR of claims 1-6 of the ’405
`
`patent under three grounds of unpatentability. See IPR2017-00854,
`
`Paper 2;
`
`4
`
`
`
`
`
` On May 3, 2017, Novartis filed its Patent Owner Preliminary Response.
`
`See id., Paper 8;
`
` On July 18, 2017, the Board instituted the Apotex IPR on each of the
`
`three grounds asserting that claims 1-6 of the ’405 patent would have
`
`been obvious and/or anticipated over the prior art pursuant to 35 U.S.C.
`
`§§ 102 and 103. See id., Papers 11 and 12. These grounds are:
`o Claims 1–6 under 35 U.S.C. § 103 as unpatentable over the
`
`combination of Kovarik and Thomson;
`o Claims 1–6 under 35 U.S.C. § 103 as unpatentable over the
`
`combination of Chiba, Kappos 2005, and Budde; and
`o Claims 1–6 under 35 U.S.C. § 102 as anticipated by Kappos 2010.
`
` The Petition that accompanies the present Motion for Joinder was filed
`
`within one month of the July 18, 2017 decision to institute the Apotex
`
`IPR, and includes only the same grounds of unpatentability that were
`
`instituted in the Apotex IPR; and
`
` The Petition that accompanies the present Motion for Joinder is
`
`substantially identical to the instituted Apotex IPR Petition, and the
`
`accompanying evidence is the same as that relied upon in the Apotex IPR
`
`Petition. Sun has added one additional exhibit (EX1041) which is a copy
`
`of the Federal Circuit Decision of April 12, 2017 affirming the Final
`
`5
`
`
`
`Written Decision in IPR2014-00784, an IPR related to the present
`
`
`
`proceeding.
`
`IV. ARGUMENT
`
`This Motion for Joinder addresses the criteria identified by the Board in
`
`Kyocera Corp., IPR2013-00004, Paper 15. Each factor is addressed below and all
`
`compel granting the instant motion.
`
`A. No New Grounds of Unpatentability Are Asserted in the Petition
`The Petition does not assert any new grounds of unpatentability additional to
`
`those asserted in the Apotex IPR. It challenges the same ’405 patent claims based
`
`on the same arguments, evidence, expert testimony, and grounds of unpatentability
`
`on which the Board instituted review in the Apotex IPR.
`
`B.
`
`Joinder is Appropriate Under the Governing Law, Rules, and
`Precedent
`
`The Board has authority to join a properly-filed IPR petition to an instituted
`
`IPR proceeding. See 35 U.S.C. § 315(c). Sun’s Petition is properly filed under 35
`
`U.S.C. § 311 and timely under 37 C.F.R. § 42.122(b), that is, within one month of
`
`the Board’s July 18, 2017 decision to institute the Apotex IPR. See IPR2017-
`
`00854, Paper 11.
`
`Further, joinder is appropriate under the Board’s rationale for permitting
`
`joinder in previous cases. As discussed above, the Board has granted another
`
`request for joinder of IPR proceedings involving the same Apotex IPR and under
`
`6
`
`
`
`
`
`circumstances identical to the instant proceeding. On August 9, 2017, the Board
`
`granted request of joinder of Argentum Pharmaceutical’s petition challenging the
`
`same claims on the same grounds as that instituted in the Apotex IPR. Argentum
`
`Pharmaceuticals LLC v. Novartis, A.G., Case No. IPR2017-01550, Paper 10
`
`(PTAB August 9, 2017). As discussed above, the Board has also granted
`
`numerous other requests for joinder of IPR proceedings under circumstances
`
`similar to the instant proceeding. For example, in LG Elec., the Board granted
`
`joinder of a second petition challenging the same claims on the same grounds as
`
`that instituted in the first proceeding. See LG Elec., IPR2015-00493, Paper 10.
`
`This rationale has been applied by the Board in other cases. See, e.g., ION
`
`Geophysical, et al. v. WesternGeco LLC, IPR2015-00565, Paper 14 at 4-5 (PTAB
`
`Apr. 23, 2015) (granting joinder when both patent owner and previous petitioner
`
`opposed because it “facilitates scheduling of the joined actions and minimizes
`
`delay”); Wockhardt Bio AG, IPR2015-01813, Paper 10; Mylan Pharms., IPR2015-
`
`00268, Paper 17; Apple, Inc., CBM2015-00119, Paper 11; Cisco Sys., IPR2015-
`
`01006, Paper 12.
`
`And the Board’s consistent reasoning is equally applicable here: the Petition
`
`that accompanies the present Motion for Joinder challenges the same claims at
`
`issue in the existing trial; relies on the same prior art as the existing trial; and relies
`
`on the same testimony from the same expert witness as in the existing trial. Thus,
`
`7
`
`
`
`
`
`in accordance with the Board’s previously applied rationale, joinder of these
`
`proceedings is appropriate and will “secure the just, speedy, and inexpensive
`
`resolution in every proceeding.” 37 C.F.R. § 42.1(b).
`
`C.
`
`Joinder Will Have Minimal Impact on the Trial Schedule and
`Costs for the Existing IPR
`
`Joinder will have no impact on the trial schedule and costs for the existing
`
`Apotex IPR by agreement between Apotex and Petitioners, as well as because
`
`Sun’s petition is substantially identical to the Apotex IPR and no new expert
`
`testimony or evidence is presented. Based on Petitioners’ review of the papers
`
`Apotex has submitted to date in the instant IPR, Petitioners’ substantive interests
`
`completely align with Apotex’s, and Petitioners’ foresee no substantive issues or
`
`arguments on which it would depart from Apotex’s submissions going forward.
`
`To the extent that a modest schedule adjustment might be required—and
`
`Petitioners foresee no such need—Title 35 U.S.C. § 316(a)(11) allows the Director
`
`to “adjust the time periods ... in the case of joinder.” See also, 37 C.F.R. §
`
`42.100(c). Accordingly, the Board has granted extensions in other trial schedules
`
`to accommodate joinder. See Ariosa Diagnostics v. Isis Innovation Ltd., IPR2013-
`
`00250, Paper 24 at 5 (PTAB Sept. 3, 2013) (“while some adjustments to the
`
`schedule have been necessary, there is not undue delay.”); see also Microsoft Corp.
`
`v. Proxyconn, Inc., IPR2013-00109, Paper 15 at 4-5 (PTAB Feb. 25, 2013);
`
`8
`
`
`
`
`
`Samsung Elec. Co., Ltd. v. Virginia Innovation Sci., Inc., IPR2014-00557, Paper 10
`
`at 18 (PTAB June 13, 2014).
`
`Finally, any alleged prejudice or burden to Novartis and Apotex—to the
`
`extent any exists at all—is outweighed by the public interest in obtaining a speedy
`
`and efficient resolution of all the patentability issues of the ’405 patent in a single
`
`proceeding, with minimal burden on this Board.
`
`Procedures to Simplify Briefing and Discovery
`
`D.
`Because the Sun 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,
`
`IPR2013-00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-
`
`10. In those proceedings, the Board required the petitioners to make consolidated
`
`filings, for which the first petitioner was responsible, and allowed the new
`
`petitioner to file an additional seven-page paper addressing only points of
`
`disagreement with points asserted in the consolidated filing. See Dell, IPR2013-
`
`00385, Paper 17 at 11; SAP Am., IPR2014-00306, Paper 13 at 5. The Board also
`
`permitted the patent owner 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 13 at 5. Adopting similar procedures in this case will
`
`minimize any delay that could arise from briefing submitted by each party, while at
`
`9
`
`
`
`
`
`the same time providing all parties an opportunity to be heard. See Dell, IPR2013-
`
`00385, Paper 17 at 8.
`
`Moreover, as in the above cases, Sun will coordinate with Apotex regarding
`
`questioning at depositions and at the oral hearing, which will not exceed the time
`
`allotted by the rules for one party, or as otherwise agreed between Apotex and
`
`Patent Owner or as ordered by the Board. See Dell, IPR2013-00385, Paper 17 at
`
`12; SAP Am., IPR2014-00306, Paper 13 at 6.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioners request that the Petition for IPR of the
`
`’405 patent be granted, and that the Board grant this Motion and join this
`
`proceeding with the Apotex IPR. Joinder will ensure a just, speedy, and
`
`inexpensive resolution in both proceedings, and it will promote efficiency by
`
`avoiding duplicative filings and reviews of the same issues.
`
`Dated: August 16, 2017
`
`
`
`Respectfully submitted,
`
`/s/ Samuel S. Park
`Samuel S. Park
`Registration No. 59,656
`
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`Telephone: (312) 558-7931
`Fax: (312) 558-5700
`Email: spark@winston.com
`
`Lead Counsel for Petitioners
`
`10
`
`
`
`
`
`Sun Pharmaceutical Industries, Ltd.,
`Sun Pharmaceutical Industries, Inc.,
`and Sun Pharma Global FZE
`
`
`11
`
`
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned hereby
`
`certifies that the above-captioned MOTION FOR JOINDER UNDER 35 U.S.C.
`
`§ 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) was served via overnight
`
`courier (Federal Express) in its entirety on August 16, 2017, on the Patent Owner
`
`by serving the corresponding address of record for the ’405 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
`
`
`Dated: August 16, 2017
`
`
`
`/Samuel S. Park/
`Samuel S. Park
`Reg. No. 59,656
`
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`Telephone: (312) 558-7931
`Fax: (312) 558-5700
`Email: spark@winston.com
`
`
`
`
`
`
`Lead Counsel for Petitioners Sun
`Pharmaceutical Industries, Ltd.,
` Sun Pharmaceutical Industries, Inc.,
`and Sun Pharma Global FZE
`
`
`
`
`
`
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