`Filed: February 8, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`MYLAN PHARMACEUTICALS INC.
`
`and
`
`DR. REDDY’S LABORATORIES, INC.,
`
`Petitioners
`
`v.
`
`HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY,
`Patent Owners.
`____________________________
`
`Case No. IPR2017-019951
`U.S. Patent No. 9,220,698
`____________________________
`
`SUPPLEMENTAL BRIEF ON APPLICABILITY OF
`CLICK-TO-CALL TECHNOLOGIES, LP V. INGENIO, INC.
`
`
`
`
`1 Petitioner Dr. Reddy’s Laboratories, Inc. (“DRL”), from IPR2018-00894, has
`
`been joined as a Petitioner to this proceeding.
`
`
`
`
`Mylan respectfully submits this supplemental brief to address whether the
`
`Federal Circuit’s decision in Click-to-Call Technologies, LP v. Ingenio, Inc., 899
`
`F.3d 1321 (Fed. Cir. 2018) warrants reversal of the Board’s repeated prior
`
`decisions concluding that Mylan’s Petition is not time-barred under 35 U.S.C.
`
`§ 315. The answer to that question is unequivocally no. The relevant facts2 are as
`
`follows:
`
` February 19, 2016. Mylan filed an answer and counterclaims to Patent
`
`Owners’ second amended complaint in “Case 2” (Case No. 15-3327
`
`(D.N.J.)), which included counterclaims for declarations of invalidity and
`
`non-infringement of the ’698 patent. Ex. 2005.
`
` March 7, 2016. Patent Owners answered these counterclaims, but did not
`
`assert any affirmative claims or file an amended complaint. Ex. 2006.
`
` August 25, 2016. Mylan was for the first time served with a complaint
`
`alleging infringement of the ’698 patent, filed and served in “Case 3” (Case
`
`No. 16-4921 (D.N.J.)). Paper No. 34 at 3.
`
` February 23, 2017. The district court dismissed without prejudice Mylan’s
`
`counterclaims regarding the ’698 patent in Case 2. Ex. 1047.
`
` August 24, 2017. Mylan petitioned for inter partes review of the ’698
`
`patent and was accorded an August 24, 2017 filing date.
`
`
`2 The dispute here relates only to Petitioner Mylan Pharmaceuticals Inc.
`1
`
`
`
`
`
`
`On the facts above, Patent Owners have twice pressed that Mylan’s Petition
`
`is time barred, first, in their preliminary response (Paper No. 10 at 10), and again in
`
`a request for rehearing of the institution decision (Paper No. 24). The Board has
`
`twice (correctly) rejected that theory. See Paper Nos. 18 & 34.
`
`
`
`In its institution decision, the Board concluded that the Petition was not
`
`time-barred because Mylan’s February 2016 counterclaims were dismissed without
`
`prejudice. Paper No. 18 at 12-13. This without-prejudice dismissal “place[d] the
`
`parties in a position as if the action was never filed.” Id. at 13. While the Board’s
`
`ultimate decision rested on the nature of the dismissal, the Board also noted a
`
`second reason the petition was not time barred: “Patent Owner does not direct us
`
`to any persuasive authority to support the proposition that § 315(a) was intended to
`
`apply to a counterclaim challenging the validity of patent claims where the patent
`
`is not the subject of the complaint.” Id. Indeed, as noted by the Board, a
`
`counterclaim challenging validity simply “is not a civil action.” Id. at 12.
`
`
`
`The Board later affirmed its ruling in denying Patent Owners’ request for
`
`rehearing. Paper No. 34 at 4-5. The crux of Patent Owners’ argument was that the
`
`counterclaims were not dismissed without prejudice, but instead consolidated into
`
`a later-filed case, and thus the bars of both § 315(a) and (b) applied. See Paper No.
`
`24 at 1, 8. In denying the request for rehearing, the Board not only disagreed that
`
`the counterclaims were, in fact, consolidated into the later-filed case, but also
`
`2
`
`
`
`appropriately made clear that the Patent Owners “did not assert that Petitioner
`
`infringed the ’698 patent” and “did not file a complaint against [Mylan] alleging
`
`infringement of the ’698 patent in the earlier case ….” Paper No. 34 at 3-5.3
`
`
`
`Click-to-Call does not warrant a departure from the Board’s repeated prior
`
`decisions. In Click-to-Call, the Federal Circuit held that § 315(b)’s time bar
`
`applies “when an IPR petitioner was served with a complaint for patent
`
`infringement more than one year before filing its petition, but the district court
`
`action in which the petitioner was so served was voluntarily dismissed without
`
`prejudice.” 899 F.3d at 1328 n.3. In other words, under Click-to-Call, while
`
`§ 315(b) requires both (1) a complaint and (2) service of a complaint to start the
`
`time-bar clock, events transpiring after service (e.g., dismissal) do not set the clock
`
`back. See id. at 1330-36. As to what constitutes a complaint and service thereof,
`
`the Click-to-Call court found that the words of the statute were unambiguous. Id.
`
`at 1330. The term “complaint” means “[t]he initial pleading that starts a civil
`
`action and states the basis for . . . the plaintiff’s claim.” Id. (quoting Black’s Law
`
`Dictionary 323 (9th ed. 2009)). The common meaning of “serve” is “[t]o make
`
`legal delivery of (a notice or process).” Id. (quoting Black’s Law Dictionary 1491
`
`(9th ed. 2009)); see also id. (“[t]o present (a person) with a notice or process as
`
`3 Patent Owners also asserted that DRL’s petition is barred, IPR2018-00894, Paper
`
`No. 8 at 1-2; the Board again disagreed, id., Paper No. 10 at 5 n.4.
`
`3
`
`
`
`required by law,” … “[t]he formal delivery of a writ, summons, or other legal
`
`process” (quoting Black’s Law Dictionary 1491 (9th ed. 2009)).
`
`
`
`
`
`Properly applied, Click-to-Call does not detract from—but supports—the
`
`propriety of institution here. Under Click-to-Call, Patent Owners’ answer to
`
`Mylan’s counterclaim was not “serv[ing] a complaint alleging infringement of the
`
`patent” on Mylan, as required under 35 U.S.C. § 315(b). Paper No. 16 at 2; Paper
`
`No. 34 at 3-4. “[T]he phrase ‘served with a complaint’ has a specific legal
`
`connotation synonymous with formal delivery of a complaint in a civil action.”
`
`Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, 2014 WL 2864151 (P.T.A.B.
`
`Jan. 31, 2014), Paper No. 98 (cited with approval in Click-to-Call); Click-to-Call,
`
`899 F.3d at 1330 (“§ 315(b)’s time bar is implicated once a party receives notice
`
`through official delivery of a complaint in a civil action, irrespective of subsequent
`
`events”). Patent Owners’ answer fulfills neither requirement—Patent Owners filed
`
`no complaint, let alone served a complaint on Mylan, as expressly required by
`
`§ 315(b). And, unlike the patent owner in St. Jude Medical, Cardiology Div., Inc.
`
`v. Volcano Corp., IPR2013-00258, Paper 29 (P.T.A.B. Oct. 16, 2013), Patent
`
`Owners here did not file an amended complaint or raise affirmative ’698 patent
`
`counterclaims in Case 2. Paper No. 34 at 3-5. Mylan thus was not “served with a
`
`complaint alleging infringement of a patent” until August 25, 2016, less than one
`
`4
`
`
`
`year before the filing of Mylan’s Petition. Accordingly, the Petition is not barred
`
`under § 315(b).
`
`
`
`Patent Owners are therefore left with only their challenge under 35 U.S.C.
`
`§ 315(a)(1). This too fails. Namely, Mylan’s February 9, 2016 counterclaim does
`
`not constitute “fil[ing] a civil action challenging the validity of a claim of the
`
`patent” under 35 U.S.C. § 315(a)(1). In fact, §315(a) is unequivocal that “[a]
`
`counterclaim challenging the validity of a claim of a patent does not constitute a
`
`civil action challenging the validity of a claim of a patent for purposes of
`
`[§ 315(a)].” 35 U.S.C. § 315(a)(3); see also Paper No. 18 at 13 (“Patent Owner
`
`does not direct us to any persuasive authority to support the proposition that
`
`§ 315(a) was intended to apply to a counterclaim challenging the validity of patent
`
`claims where the patent is not the subject of the complaint.”). Patent Owner’s
`
`reliance on Amkor Technology, Inc., 2014 WL 2864151 (P.T.A.B. Jan. 31, 2014)—
`
`which addresses whether a Patent Owner’s counterclaims may trigger the bar under
`
`§ 315(b)—is thus misplaced.
`
`
`
`Under the reasoning of Click-to-Call, Mylan’s Petition is therefore timely,
`
`and the Board’s institution decision and denial of rehearing were proper.
`
`Accordingly, for the reasons described above and in Mylan’s prior submission
`
`(Paper No. 16), Petitioner respectfully requests the Board again affirm its decision
`
`that the Petition is not time barred under 35 U.S.C. § 315(a) or (b).
`
`5
`
`
`
` Dated: February 8, 2019
`
`
`
`/Brandon M. White/
`
`
`
`
`
`Brandon M. White
`Reg. No. 52,354
`
`PERKINS COIE LLP
`700 13th Street, NW, Suite 600
`Washington, D.C. 20005
`Telephone: (202) 654-6206
`Facsimile: (202) 654-6211
`Email: bmwhite@perkinscoie.com
`
`Attorney for Mylan Pharmaceuticals Inc.
`
`
`
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Supplemental Brief on
`
`the Applicability of Click-to-Call Technologies, LP v. Ingenio, Inc. was served
`
`
`
`
`
`
`electronically via email as follows:
`
`
`Patent Owners:
`
`Thomas A. Blinka
`Jonathan G. Graves
`Susan Krumplitsch
`Ellen Scordino
`Lauren Krickl
`Cooley LLP
`zIPR2017-01995@cooley.com
`
`Margaret J. Sampson
`Stephen M. Hash
`Jeffrey S. Gritton
`Baker Botts LLP
`pozen-
`vimovoBB@bakerbotts.com
`Petitioner Dr. Reddy’s:
`
`Alan H. Pollack
`Dmitry V. Shelhoff
`Stuart D. Sender
`Louis H. Weinstein
`apollack@buddlarner.com
`dshelhoff@buddlarner.com
`ssender@buddlarner.com
`lweinstein@buddlarner.com
`
`
`7
`
`
`
`
`Dated: February 8, 2019
`
`
`
`
`
`
`
`/Brandon M. White/
`Brandon M. White
`
`Attorney for Mylan Pharmaceuticals Inc.
`
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
