UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`ACTAVIS ELIZABETH LLC and TEVA PHARMACEUTICALS USA, INC.
`Petitioners,
`v.
`NOVARTIS A.G.,
`Patent Owner.
`_______________
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`Case No. IPR2017-01946
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`U.S. Patent No. 9,187,405
`_______________
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.22, AND 42.122(b)
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`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`ACTAVIS ELIZABETH LLC and TEVA PHARMACEUTICALS USA, INC.
`Petitioners,
`v.
`NOVARTIS A.G.,
`Patent Owner.
`_______________
`
`Case No. IPR2017-01946
`
`U.S. Patent No. 9,187,405
`_______________
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.22, AND 42.122(b)
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`Actavis Elizabeth LLC and Teva Pharmaceuticals USA, Inc. (collectively,
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`“Petitioners”) respectfully request that their Petition for Inter Partes Review of
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`U.S. Patent No. 9,187,405 (the “’405 patent”) (“Petition”) be granted and joined
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`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) with the
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`petition for inter partes review filed by Apotex, Inc. and Apotex Corp.
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`(collectively, “Apotex”) concerning the ’405 Patent: Apotex, Inc. and Apotex
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`Corp. v. Novartis AG, No. IPR2017-00854 (“Apotex IPR”).
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`On February 3, 2017, Apotex filed a petition for inter parties review of the
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`’405 Patent. See Apotex Inc. v. Novartis A.G., IPR2017-00854, Paper No. 2,
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`February 3, 2017. Having only been instituted on July 18, 2017, the Apotex IPR is
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`at an early stage. On June 9, 2017, Argentum Pharmaceuticals LLC (“Argentum”)
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`filed a petition for inter parties review of the ’405 Patent and a concurrent motion
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`for joinder. See Argentum Pharms. LLC v. Novartis A.G., IPR2017-01550, Paper
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`No. 2, June 2, 2017. The Argentum IPR was instituted and the accompanying
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`motion for joinder was granted August 9, 2017. See Argentum Pharms. LLC v.
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`Novartis A.G., IPR2017-01550, Paper No. 10, August 9, 2017. Petitioners
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`concurrently file this motion with a petition for inter partes review of the ’405
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`patent. Apotex has represented to Petitioners that it will not oppose this Motion for
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`Joinder.
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`In accordance with the Board’s Representative Order identifying matters to
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`be addressed in a motion for joinder (Kyocera Corp. v. Softview LLC, IPR2013-
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`00004, Paper 15, April 24, 2013), Petitioners submit that:
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`(1)
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`joinder is appropriate because it will promote efficient determination
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`of the validity of the ’405 Patent without prejudice to Apotex,
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`Argentum or patent owner Novartis A.G. (“Novartis”);
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`(2) Petitioners challenge the same claims of the ’405 patent using the
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`same grounds as Apotex and Argentum;
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`(3)
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`joinder need not affect the schedule in the Apotex IPR—as the instant
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`petition is substantially identical to the Apotex petition and the
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`Argentum petition and can be addressed concurrently—nor increase
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`the complexity of that proceeding, minimizing costs; and
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`(4) Petitioners are willing to agree to consolidated filings with Apotex to
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`eliminate burden and schedule impact.
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`Accordingly, joinder should be granted. See, e.g., id. at 4 (Apr. 24, 2013)
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`(noting factors considered in granting joinder requests).
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`I.
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`PETITIONERS’ MOTION FOR JOINDER IS TIMELY
`As discussed below, Petitioners’ motion for joinder is timely pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) because it is being filed no
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`later than one month from the institution of the petition in the Apotex’s IPR.
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`The Board may join any party who has properly filed a petition to a
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`proceeding following institution of an inter partes review. 35 U.S.C. § 315(c). If
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`a petitioner seeks to be joined as a party to another inter partes review of the same
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`patent, it is required to file a request “no later than one month after the institution
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`date of any inter partes review for which joinder is requested.” 37 C.F.R.
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`§ 42.122(b).
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`Here, Petitioners have moved for joinder “no later than one month after the
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`institution date” of inter partes review in the Apotex IPR, which was instituted on
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`July 18, 2017. Therefore, Petitioners’ request to be joined as a party to the Apotex
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`IPR is timely.
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`II.
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`PETITIONERS SHOULD BE JOINED AS
`PARTIES TO THE APOTEX IPR
`The Board has provided that a motion for joinder should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule of the existing proceeding; and (4) address specifically how briefing
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`and discovery may be simplified. See, e.g., Kyocera, IPR2013-00004, Paper 15 at
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`4. Analysis of these factors here warrants the grant of the requested joinder.
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`A.
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`Joinder of Petitioners Will Promote an Efficient Determination of
`the Validity of the ’405 Patent Without Prejudice to Any Party
`If Petitioners were joined as parties, the validity of the grounds raised in
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`Apotex’s and Argentum’s IPRs and Petitioners’ concurrently filed Petition could
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`be determined in a single proceeding. Petitioners’ petition challenges the validity
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`of the same claims of the ’405 Patent on the same grounds as in Apotex’s and
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`Argentum’s Petitions. Petitioners also rely on substantially the same supporting
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`evidence1 in their Petition as in Apotex’s Petition and Argentum’s Petition,
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`including the same expert and expert declaration. See Apotex, Paper No. 2. A
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`consolidated proceeding, including Petitioners, Apotex and Argentum, will
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`therefore be more efficient and less wasteful, as only a single trial on these
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`common grounds would be required. See, e.g., Oracle Am., Inc. v. Realtime Data
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`LLC, IPR2016-01672, Paper No. 13 at 7, March 7, 2017.
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`1 Petitioners have added one additional exhibit (EX1041), which is a copy of the
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`Federal Circuit Decision of April 12, 2017 affirming the Final Written Decision
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`in Torrent Pharms. Ltd. v. Novartis A.G., IPR2014-00784, an IPR related to the
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`present proceeding.
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`4
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`Joining Petitioners as parties to the Apotex IPR would also not cause any
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`prejudice to Apotex, Argentum, or Novartis. Novartis, as the patent owner, must
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`respond to the common invalidity grounds identified in Petitioners’, Apotex’s and
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`Argentum’s petitions regardless of joinder. In fact, a single trial would reduce the
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`burden on Novartis by limiting duplication of effort as it would have to address
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`these common invalidity grounds once. As Petitioners’ petition raises substantially
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`the same grounds as Apotex’s and Argentum’s petitions, Petitioners would still be
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`able to pursue the same invalidity arguments if joinder were not granted. For
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`Novartis, Apotex, and Argentum, Petitioners’ petition has been filed sufficiently
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`early so that joinder would affect neither the schedule of the inter partes review
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`nor the costs associated with a full trial. See Oracle Am., Paper No. 13 at 7.
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`B. No New Grounds of Unpatentability Are Asserted
`The Petitioners’ IPR does not present any new grounds of unpatentability.
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`As mentioned above, the Petitioners’ IPR presents only the asserted grounds from
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`the Apotex IPR and the Argentum IPR. Additionally, the Petitioners’ IPR is based
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`on the same prior art analysis and expert testimony submitted by Apotex (and
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`Argentum).
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`C.
`Joinder Would Not Affect the Schedule in the Apotex IPR
`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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`5
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`final written decision within the one-year timeframe because the Petitioners’ IPR is
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`substantively identical to the Apotex IPR and the Argentum IPR and no new expert
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`testimony or evidence is presented.
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`D.
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`Petitioners Will Agree to Consolidated Filings
`to Eliminate Burden and Schedule Impact
`To further prevent joinder from imposing any burden on Apotex, Argentum,
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`or Novartis and to further ensure that there are no changes in the potential trial
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`schedule, Petitioners will agree to submit consolidated filings for all substantive
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`papers in the respective proceedings with Apotex and to incorporate its filings with
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`those of Apotex in a consolidated filing, subject to the ordinary rules for one party
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`on page limits. See, e.g., Torrent Pharms. Ltd. v. UCB Pharma GMBH, IPR 2016-
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`01636, Paper No. 10 at 5, December 7, 2016 (granting joinder where petitioner
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`agreed to consolidated filings). Petitioners are also willing to let Apotex take the
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`lead at the hearing and depositions and will agree that cross examinations will
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`occur within the timeframe normally allotted to one party without a need for
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`extension in light of the joinder. See, e.g., id.
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`By consolidating filings with Apotex, Novartis will only need to respond to
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`one principal set of papers. No further time to address additional arguments would
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`be required by either Apotex or Novartis, and the consolidated trial could thus
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`proceed at the same pace as if Petitioners were not joined. See id.; Am. Pharms.
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`Ltd. v. UCB Pharma GMBH, IPR2016-01665, Paper No. 8 at 6, December 7, 2016.
`6
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`III. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the Board
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`grant its concurrently filed Petition for inter partes review of the ’405 patent and
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`consolidate the grounds of invalidity therein raised with the Apotex IPR.
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`The undersigned attorney may be reached by telephone at (312) 862-2000.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
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`required for this Motion to Deposit Account No. 506092.
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`*
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`*
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`*
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`Date: August 15, 2017
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`Respectfully submitted,
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`/s/ Amanda Hollis
`Amanda Hollis (Reg. No. 55,629)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, IL 60654
`P: (312) 862-2000
`F: (312) 862-2200
`amanda.hollis@kirkland.com
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`Attorney For Petitioners
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`7
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing Motion for Joinder
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`Under 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, AND 42.122(b) by overnight courier
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`(Federal Express), on this 15th day of August, 2017, on the Patent Owner at the
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`correspondence address of the Patent Owner as follows:
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`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
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`record for the Petitioner and Patent Owner in the Apotex IPR, IPR2017-00854, and
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`the Argentum IPR, IPR2017-01550 as follows:
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`IPR2017-00854 Petitioner
`Steve Parmelee
`Michael Rosato
`Jad A. Mills
`Wilson Sonsini Goodrich & Rosati
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
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`IPR2017-01550 Petitioner
`Terry Rea
`Deborah H. Yellin
`Shannon Lentz
`1001 Pennsylvania Avenue, NW
`Washington, DC 20004-2595
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`Patent Owner
`Jane M. Love
`Robert W. Trenchard
`Gibson, Dunn & Crutcher LLP
`200 Park Avenue
`New York, NY 10166-0193
`jlove@gibsondunn.com
`rtrenchard@gibsondunn.com
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`trea@crowell.com
`dyellin@crowell.com
`slentz@crowell.com
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`Tyler C. Liu
`Argentum Pharmaceuticals, LLC
`tliu@agpharm.com
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`Dated: August 15, 2017
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`Respectfully submitted,
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`/s/ Amanda Hollis
`Amanda Hollis (Reg. No. 55,629)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`amanda.hollis@kirkland.com
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`Attorney for Petitioners
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`9
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