IPR2017-01995
`Patent No. 9,220,698
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________
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`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
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`v.
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`POZEN INC. and HORIZON PHARMA USA, INC.,
`Patent Owners.
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`___________
`
`
`Case IPR2017-01995
`Patent 9,220,698
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`___________
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`PATENT OWNERS POZEN INC. AND HORIZON PHARMA USA, INC.’S
`REQUEST FOR REHEARING OF THE DECISION TO INSTITUTE
`TRIAL PURSUANT TO 37 C.F.R. § 42.71(c), (d)
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`Patent No. 9,220,698
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________
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`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`
`v.
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`
`POZEN INC. and HORIZON PHARMA USA, INC.,
`Patent Owners.
`
`___________
`
`
`Case IPR2017-01995
`Patent 9,220,698
`
`___________
`
`
`PATENT OWNERS POZEN INC. AND HORIZON PHARMA USA, INC.’S
`REQUEST FOR REHEARING OF THE DECISION TO INSTITUTE
`TRIAL PURSUANT TO 37 C.F.R. § 42.71(c), (d)
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`IPR2017-01995
`Patent No. 9,220,698
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`TABLE OF CONTENTS
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`I. INTRODUCTION AND STATEMENT OF RELIEF REQUESTED ......... 1
`II. LEGAL STANDARDS ................................................................................... 3
`III. ARGUMENT .................................................................................................. 3
`A. Mylan’s Petition Is Untimely ...................................................................... 3
`1. The Board’s reasoning in Apple Inc. v. Rensselaer Polytechnic Inst.
`should apply here ............................................................................................... 5
`2. The Board’s reliance on Graves and Oracle is misguided ....................... 8
`B. The deadline for Mylan’s Petition has long passed ................................ 11
`1. Mylan’s Petition is barred under § 315(a)(1) ......................................... 12
`2. Mylan’s Petition is barred under § 315(b) .............................................. 13
`IV. CONCLUSION ............................................................................................. 15
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`TABLE OF AUTHORITIES
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`IPR2017-01995
`Patent No. 9,220,698
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` Page(s)
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`Cases
`Apple Inc. v. Rensselaer Polytechnic Inst.,
`IPR2014-00319, Paper 12 (P.T.A.B. June 12, 2014) ..................................passim
`Bonneville Associates, Ltd. Partnership v. Barram,
`165 F.3d 1360 (Fed. Cir. 1999) ............................................................................ 6
`Click-to-Call Techs., LP, v. Oracle Corp.,
`710 F. App’x 447 (Fed. Cir. 2018) ..................................................................... 10
`Click-to-Call Techs., LP v. Oracle Corp.,
`No. 2015-1242, 2016 WL 6803054 (Fed. Cir. Nov. 17, 2016) .......................... 10
`Graves v. Principi,
`294 F.3d 1350 (Fed. Cir. 2002) ........................................................................ 8, 9
`Macauto U.S.A. v. BOS GmbH & KG,
`IPR2012-00004, Paper 18 (P.T.A.B. Jan. 24, 2013) ........................................ 6, 7
`Motorola Mobility LLC v. Arnouse,
`IPR2013-00010, Paper 20 (P.T.A.B. Jan. 30, 2013) .......................................... 14
`O’Keefe v. U.S. Postal Serv.,
`318 F.3d 1310 (Fed. Cir. 2002) ............................................................................ 3
`Oracle Corp. v. Click-to-Call Techs. LP,
`IPR2013-00312, Paper 16 (P.T.A.B. Sept. 13, 2013) ........................................... 9
`Oracle Corp. v. Click-to-Call Techs. LP,
`IPR2013-00312, Paper 26 (P.T.A.B. Oct. 20, 2013) .......................................... 10
`Oracle Corp. v. Click-to-Call Techs. LP,
`IPR2013-00312, Paper 52 (P.T.A.B. Oct. 28, 2014) ............................................ 8
`Oracle Corp. v. Click-to-Call Techs. LP,
`IPR2013-00312 ..................................................................................................... 9
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`ii
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`IPR2017-01995
`Patent No. 9,220,698
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`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005) ............................................................................ 3
`TRW Automotive US LLC v. Magna Electronics Inc.,
`IPR2014-00869, Paper 8 (P.T.A.B. Dec. 1, 2014) ....................................... 12, 13
`WiFi One, LLC v. Broadcom Corp.,
`878 F.3d 1364 (Fed. Cir. 2018) (en banc) .......................................................... 10
`Statutes
`35 U.S.C. § 315(a) ............................................................................................passim
`35 U.S.C. § 315(b) ............................................................................................passim
`Other Authorities
`37 C.F.R. § 42.71(c) ............................................................................................... 1, 3
`37 C.F.R. § 42.71(d) .............................................................................................. 1, 3
`FED. R. CIV. P. 41 ..................................................................................................... 10
`FED. R. CIV. P. 42 ............................................................................................... 10, 11
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`iii
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`IPR2017-01995
`Patent No. 9,220,698
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`Pursuant to 37 C.F.R. § 42.71(c) and (d), Horizon Pharma USA, Inc.
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`(“Horizon”) and Pozen Inc. (“Pozen”) (collectively, “Patent Owner”) respectfully
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`request a rehearing in response to the Decision, Institution of Inter Partes Review
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`of U.S. Patent No. 9,220,698 (“Decision”) (Paper 18).
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`On March 8, 2018, the Board authorized institution of this inter partes review
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`of claims 1-7 of U.S. Patent No. 9,220,698 (“the ’698 patent”) on the three grounds
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`presented in the petition. (Decision at 29.) Patent Owner respectfully requests
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`reconsideration of the Board’s decision to institute on all three grounds because the
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`Petition was filed more than a year after Mylan first asserted counterclaims related
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`to the ’698 patent in litigation and more than a year after Horizon and Pozen
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`responded to those counterclaims. The Board, however, was led astray by
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`Petitioner’s argument that the underlying district court matter was dismissed without
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`prejudice, when, in fact, Mylan’s claims were consolidated with a later-filed action.
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`(Decision at 13.)
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`The Petition is time barred under both 35 U.S.C. § 315(a)(1) and § 315(b)
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`because Petitioner first asserted invalidity and non-infringement of the ’698 patent
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`in counterclaims filed more than a year before filing the instant Petition. (Patent
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`1
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`Owner Preliminary Response, Paper 10, (“POPR”) at 8-12.) At the time those
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`IPR2017-01995
`Patent No. 9,220,698
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`counterclaims were filed, the ‘698 patent had not been asserted against Mylan. The
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`case in which those counterclaims were filed was subsequently consolidated with a
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`later filed case. (POPR at 12.) As a result of this consolidation—which was initiated
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`at Petitioner’s request solely to promote judicial efficiency—the first case was
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`voluntarily dismissed without prejudice. (Id.)
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`The Board declined to consider the merits of Patent Owner’s arguments
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`relating to § 315(a)(1) and § 315(b), instead concluding that it considered the
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`“litigation landscape” “as if no claims related to the ’698 patent arose in the district
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`court litigation in February 2016.” (Decision at 15.) Patent Owner respectfully
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`submits that the Board overlooked its decision in Apple Inc. v. Rensselaer
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`Polytechnic Inst., IPR2014-00319, Paper 12 at 6-7 (P.T.A.B. June 12, 2014) and
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`based its Decision here on an erroneous interpretation of the law.
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`As in Apple, where the first case is consolidated with a later-filed case, the
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`first case should not be treated as if it had never been filed. Instead, when the cases
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`are consolidated and the claims of the first case are incorporated into the later-filed
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`case, the one-year statutory bar should attach to the filing date of the claims in the
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`first case. Because Mylan first brought the ’698 patent into litigation by asserting
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`declaratory judgment counterclaims of invalidity and non-infringement on February
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`2
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`19, 2016, its untimely Petition is barred by the statutory deadlines set forth in
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`IPR2017-01995
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`§ 315(a)(1) and § 315(b).
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`II. LEGAL STANDARDS
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`Patent Owner “may request rehearing on a decision by the Board on whether
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`to institute a trial.” 37 C.F.R. § 42.71(c). The request must identify “all matters the
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`party believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” § 42.71(d).
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`“When rehearing a decision on petition, a panel will review the decision for
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`an abuse of discretion.” 37 C.F.R. § 42.71(c). An abuse of discretion may be
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`determined if a decision is based on an erroneous interpretation of law, if a factual
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`finding is not supported by substantial evidence, or if the decision represents an
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`unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United
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`States, 393 F.3d 1277, 1281 (Fed. Cir. 2005). “The Board necessarily abuses its
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`discretion when it rests its decision on factual findings unsupported by substantial
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`evidence.” O’Keefe v. U.S. Postal Serv., 318 F.3d 1310, 1314 (Fed. Cir. 2002)
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`(citation omitted).
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`III. ARGUMENT
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`A. Mylan’s Petition Is Untimely
`Mylan’s Petition should be barred by the one-year time limit of § 315(a)(1)
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`and (b). Any other outcome rewards Mylan with an unfair extension of time.
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`There are no factual disputes here. Mylan first brought the ’698 patent into
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`the litigation against Patent Owners Horizon and Pozen by asserting unprovoked
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`declaratory judgment counterclaims of invalidity and non-infringement in Civil
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`Action No. 16-cv-03327 (“Case II”). (Petitioner’s Reply at 1.) Prior to Mylan’s
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`counterclaims, the ’698 patent had not been at issue in the litigation. Horizon and
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`Pozen asserted infringement of the ’698 patent in the later filed matter, Civil Action
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`No. 16-cv-04921 (“Case III”). (Id.) Mylan, not Horizon or Pozen, proposed
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`dismissing the ’698 counterclaims in Case II and consolidating with Case III because
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`“it would be more efficient for the parties and the court to litigate those patents
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`together in the Vimovo III case.” (Ex. 2010 at 3 [2/6/2017 email from Swanson to
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`Artiles et al].)
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`The Board’s Decision is based on its rationale that “a dismissal without
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`prejudice places the parties in a position as if the action was never filed.” (Decision
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`at 15.) But after Mylan’s ’698 counterclaims from Case II were consolidated into
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`Case III, the parties did not act as if the ’698 counterclaims had never been filed.
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`The discovery and legal positions taken by the parties in Case II were continued into
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`Case III. The deadlines related to the ’698 patent carried over from Case II and were
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`not reset in Case III. In fact, after Mylan filed its ’698 counterclaims on February
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`19, 2016, there was never a period of time in which the ’698 patent was not at issue
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`4
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`in either Case II or Case III.
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`IPR2017-01995
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`The Board faced a similar situation in Apple and concluded that where one
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`case was consolidated into a second case, the filing date of the first case started the
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`clock on the one-year time period. Apple Inc. v. Rensselaer Polytechnic Inst.,
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`IPR2014-00319, Paper 12 at 7 (P.T.A.B. June 12, 2014). The Board emphasized the
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`importance of analyzing the particular circumstances of each case to determine if the
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`general rule regarding treatment of dismissals without prejudice should be applied.
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`Id. at 6. The Board in Apple even considered two of the same cases cited in the
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`instant Decision and found them unavailing. The undisputed facts of this case are
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`very similar to Apple and the Board’s reasoning in that case should apply here.
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`1.
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`The Board’s reasoning in Apple Inc. v. Rensselaer Polytechnic
`Inst. should apply here
`As Patent Owner pointed out in its Preliminary Response, this consolidation
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`of the Case II ’698 counterclaims with Case III does not reset the clock for Petitioner.
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`(POPR at 12 n.3.) Under very similar facts, the Board came to this exact conclusion
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`in Apple Inc., IPR2014-00319, Paper 12 at 6-7.
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`In Apple, Patent Owner Dynamic Advances sued Apple for infringement of
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`the ’798 patent in October 2012 (the “Dynamic I” case). Id. at 3. In June 2013,
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`plaintiffs Rensselaer Polytechnic and Dynamic Advances filed a second
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`infringement suit against Apple over the same patent (the “Dynamic II” case). Id.
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`5
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`Shortly after the second lawsuit was filed, the court ordered the two cases
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`IPR2017-01995
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`consolidated and dismissed the Dynamic I case without prejudice. Id. The court
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`noted that “the parties will proceed to litigate their claims and defenses in [the
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`Dynamic II case], pursuant to a joint stipulation of the parties.” Id. (internal
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`quotations and citation omitted).
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`Apple subsequently filed a petition for inter partes review in January 2014—
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`15 months after the Dynamic I case was filed. In its Preliminary Response, Patent
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`Owner argued that Apple’s Petition was time barred because it was not filed within
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`the statutory period set forth in 35 U.S.C. § 315(b). Apple, IPR2014-00319, Paper
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`12 at 2. The Board agreed and declined to institute the IPR. Id.
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`The Board analyzed Bonneville Associates, Ltd. Partnership v. Barram, 165
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`F.3d 1360, 1364 (Fed. Cir. 1999) and Macauto U.S.A. v. BOS GmbH & KG,
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`IPR2012-00004, Paper 18, at 15-16 (P.T.A.B. Jan. 24, 2013) and concluded that the
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`reasoning of those cases did not apply to the facts of Apple. Apple, Paper 12 at 5-7.
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`Bonneville involves an appeal from the General Services Administration
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`Board of Contract Appeals (GSBCA) filed by a government contractor after it
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`received an adverse decision. Bonneville, 165 F.3d at 1362. Two months after filing
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`its appeal, the contractor moved to dismiss the GSBCA appeal to pursue a claim at
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`the Court of Federal Claims. Id. The GSBCA dismissed the contractor’s appeal
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`6
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`without prejudice. Id. The contractor filed its case with the Court of Federal Claims,
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`IPR2017-01995
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`which, in turn, dismissed the case for lack of jurisdiction. Id. After the Federal
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`Circuit affirmed the decision of the Court of Federal Claims, the contractor tried to
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`reinstate its GSBCA appeal. Id. at 1363. The GSBCA held that because the appeal
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`was dismissed without prejudice, it was treated as if it had never been filed, and
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`therefore could not be reinstated. Id. The Federal Circuit affirmed. Id. at 1364.
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`In Macauto, the Board rejected Patent Owner’s argument that the Petition was
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`barred pursuant to § 315(b). There, the Patent Owner first sued Petitioner’s
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`Taiwanese parent company for infringement in May 2011. Macauto, IPR2012-
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`00004, Paper 18 at 8. The Taiwanese parent company moved to dismiss the suit for
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`lack of jurisdiction. Id. The parties agreed to a joint stipulation of dismissal in
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`November 2011. Id.; see also id., IPR2012-0004, Ex. 2016 at 2. The Patent Owner
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`then sued the U.S. subsidiary (the Petitioner) in May 2012. The Petitioner filed an
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`IPR in September 2012. The Patent Owner argued that the Petition was time barred,
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`based on the filing of the 2011 lawsuit. The Board disagreed, finding that the
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`dismissal of the 2011 action against the Taiwanese parent company nullified the
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`effect of the one year statutory bar. Macauto, IPR2012-00004, Paper 18 at 15-16.
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`As the Board in Apple correctly determined, Bonneville and Macauto are both
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`distinguishable from Apple. Bonneville does not involve dismissal of a district court
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`7
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`case. Neither Bonneville nor Macauto describes a scenario in which claims from the
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`IPR2017-01995
`Patent No. 9,220,698
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`initial lawsuit were consolidated into a later suit. And neither case describes a
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`scenario in which claims were continuously pending. The Board emphasized the
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`importance of analyzing the particular facts of the Apple case and found:
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`Given these facts, we conclude that the Dynamic I case did not cease in
`the same sense as a complaint dismissed without prejudice and without
`consolidation—it was consolidated with another case, and its complaint
`cannot be treated as if it never existed.
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`Apple, IPR2014-00319, Paper 12 at 7.
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`The Board’s reasoning should also apply to the instant case: where the first
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`case is consolidated with a second case and dismissed without prejudice, the first
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`case should not be treated as if it were never filed for purposes of the statutory bar
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`of § 315(a)(1) and (b).
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`2.
`The Board’s reliance on Graves and Oracle is misguided
`In the instant Institution Decision, in addition to Bonneville and Macauto,
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`discussed above, the Board also cites Graves v. Principi, 294 F.3d 1350 (Fed. Cir.
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`2002) and Oracle Corp. v. Click-to-Call Technologies LP, IPR2013-00312, Paper
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`52 at 12-13 (P.T.A.B. Oct. 28, 2014). The Board’s reasoning in Apple, however,
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`also applies to these two cases, which are factually distinguishable from and
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`inapposite to the instant case.
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`8
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`Graves, like Bonneville, is irrelevant to the instant case. In Graves, a veteran
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`IPR2017-01995
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`timely appealed an adverse decision of Board of Veterans’ Appeals to the U.S. Court
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`of Appeals for Veterans Claims (Veterans Court). Graves, 294 F.3d at 1353. The
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`claimant then requested that the appeal be dismissed without prejudice, and the
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`Veterans Court granted the claimant’s request. Id. The claimant later asked the
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`Board to reconsider its original adverse decision, which the Board denied. The
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`claimant then appealed both the Board’s original decision and the Board’s denial of
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`reconsideration. The Veterans Court dismissed the appeal as untimely. The Federal
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`Circuit affirmed, finding that after the veteran’s original appeal was dismissed, it
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`was as if it were never filed. Id. at 1356-57.
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`Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312 involves a complex
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`set of corporate reorganizations and proceedings that distinguish it from the instant
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`case. Here, the ’836 patent was originally asserted against Keen in 2001 by an
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`exclusive licensee, Inforocket. Oracle, IPR2013-00312, Paper 16 at 2-3. Keen
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`subsequently acquired Inforocket and in 2003, the parties agreed to dismiss the suit
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`without prejudice. Id. at 2. Keen then changed its name to Ingenio. Id. In May
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`2012, Click-to-Call asserted the ’836 patent against a number of parties including
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`Oracle and Ingenio. Id. at 2-3. These parties subsequently filed a petition for IPR.
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`Click-to-Call argued that the IPR was barred by § 315(b) because Ingenio’s
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`9
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`predecessor-in-interest had been served with a complaint alleging infringement of
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`IPR2017-01995
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`the ’836 patent more than one year before the IPR was filed. Oracle, IPR2013-
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`00312, Paper 26 at 15. The Board summarily rejected Click-to-Call’s argument,
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`concluding that the 2003 dismissal of the infringement suit “nullifies the effect of
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`the service of the complaint and, as a consequence, does not bar Ingenio, LLC or
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`any of the other Petitioners from pursuing an inter partes review of the ’836 patent.”
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`Id. at 17. For support, the Board cited Graves and Bonneville without providing any
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`substantive analysis. Id. at 16-18. The Board’s decision is currently being appealed
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`to the Federal Circuit.1
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`Neither Graves nor Oracle is factually on point. Like Bonneville, Graves
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`involves a voluntary dismissal of an appeal of an administrative decision. Neither
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`1 Click-to-Call has appealed the Board’s determination that the IPR
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`proceeding was not barred by § 315(b). The Federal Circuit initially dismissed
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`Click-to-Call’s appeal for lack of jurisdiction. See Click-to-Call Techs., LP v.
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`Oracle Corp., No. 2015-1242, 2016 WL 6803054 (Fed. Cir. Nov. 17, 2016). In light
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`of its decision in WiFi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018)
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`(en banc), the Federal Circuit granted Click-to-Call’s petition for rehearing en banc.
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`Click-to-Call Techs., LP, v. Oracle Corp., 710 F. App’x 447 (Fed. Cir. 2018).
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`Supplemental briefing is ongoing.
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`10
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`dealt with dismissal under FED. R. CIV. P. 41 or consolidation under FED. R. CIV. P.
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`IPR2017-01995
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`42 of a district court case. Oracle involves a dismissal without prejudice that was
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`granted nearly ten years before the IPR was filed. The Board has cited no legal
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`authority that dealt with facts similar to the instant case. More importantly, the
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`Board failed to consider its analysis in Apple—a factually similar case—that
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`distinguishes the holdings of cases like Bonneville, Macauto, Graves, and Click-to-
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`Call. Under the reasoning of Apple, the ’698 counterclaims asserted by Mylan in
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`Case II and later consolidated into Case III should not be considered a nullity for the
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`purpose of establishing a one-year bar date under § 315(a) or § 315(b).
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`B.
`The deadline for Mylan’s Petition has long passed
`As explained in Patent Owner’s Preliminary Response, Mylan first brought
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`the ’698 patent into litigation against Patent Owners Horizon and Pozen on February
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`19, 2016 by asserting counterclaims of invalidity and non-infringement in Case II.
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`(POPR, Paper 10, at 5-7.) At the time Mylan asserted these counterclaims, there
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`were no claims related to the ’698 patent pending because Horizon and Pozen had
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`not yet asserted the ’698 patent against Mylan. (Id.) On March 7, 2016, Horizon
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`and Pozen answered Mylan’s counterclaims. (Id.)
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`The one-year deadline for Mylan’s Petition under either § 315(a)(1) or §
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`315(b) was, at the latest, March 7, 2017. Mylan, however, waited until August 24,
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`2017 to file its Petition. The Board’s Decision awarded Mylan an extra six months
`11
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`in which to file its Petition, giving Mylan an unfair advantage in challenging the
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`IPR2017-01995
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`validity of the ’698 patent.
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`1. Mylan’s Petition is barred under § 315(a)(1)
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`§ 315(a)(1) states:
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`(1)Inter partes review barred by civil action.—
`An inter partes review may not be instituted if, before the date on which
`the petition for such a review is filed, the petitioner or real party in
`interest filed a civil action challenging the validity of a claim of the
`patent
`There was no claim of infringement of the ’698 patent pending in Case II when
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`Mylan filed its declaratory judgment counterclaims of invalidity and infringement.
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`Mylan thus did not file its counterclaims as affirmative defenses.
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`Further, the plain language of the statute refers to a “civil action.” § 315(a)(1)
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`is not limited to a complaint filed by a petitioner. Thus, the fact that Mylan styled
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`its civil action challenging the validity of the ’698 patent as a counterclaim, instead
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`of filing a new declaratory judgment action, is not significant.
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`Although Mylan argues that § 315(a)(3) excludes all counterclaims from the
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`purview of § 315(a)(1), the only case it cites, TRW Automotive US LLC v. Magna
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`Electronics Inc., IPR2014-00869, Paper 8 at 10-12 (P.T.A.B. Dec. 1, 2014), does
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`not speak to this issue. (Mylan’s Reply, Paper 16 at 2.) In TRW, the Patent Owner
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`12
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`filed, but never served, a complaint alleging infringement of the ’726 patent. (TRW,
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`IPR2017-01995
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`IPR2017-00869, Paper 8 at 10.) Petitioner filed an answer and included a
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`counterclaim of invalidity of the same patent. (Id.) The case apparently proceeded
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`“in normal fashion based on a complaint and Answer with a counterclaim,” with the
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`Patent Owner identified as plaintiff and Petitioner identified as defendant in the case
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`caption. (Id. at 11-12.) Because the district court and the plaintiff treated the
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`counterclaim as such, and not a claim initiating litigation, the Board found that §
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`315(a)(3) applied. (Id.)
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`Here, Horizon and Pozen did not assert the ’698 patent against Mylan before
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`Mylan filed its declaratory judgment counterclaim. Mylan’s counterclaim should
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`not fall within the exemption of § 315(a)(3), and its Petition should be denied as
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`untimely under § 315(a)(1).
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`2. Mylan’s Petition is barred under § 315(b)
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`Alternatively, Mylan’s Petition should be denied as untimely pursuant to
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`§ 315(b), which states:
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`An inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served with
`a complaint alleging infringement of the patent. The time limitation set
`forth in the preceding sentence shall not apply to a request for joinder
`under subsection (c).
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`13
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`After Mylan filed its unprovoked counterclaims with respect to the ’698
`
`IPR2017-01995
`Patent No. 9,220,698
`
`patent, Horizon and Pozen properly served their answers, stating in part that
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`“Plaintiffs do not contest that there is a case or controversy between Plaintiffs and
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`Mylan as to Mylan’s infringement of the patents-in- suit . . . .” (Ex. 2006 at 2-3.)
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`The case proceeded through the normal course of litigation, including the exchange
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`of infringement contentions before Case II was consolidated with Case III. The
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`parties’ actions thus evidence their understanding that infringement of the ’698
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`patent was at issue as of March 7, 2016, the date that Horizon and Pozen answered
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`Mylan’s counterclaims.
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`The Board has previously reviewed the legislative history and intent of
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`§ 315(b) in Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 20 at 3-6
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`(P.T.A.B. Jan. 30, 2013). There, the Board stated:
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`The legislative history of 35 U.S.C. § 315(b) shows that the primary
`concern related to the one-year time period was to provide defendants
`sufficient time to fully analyze the patent claims, but not to create an
`open-ended process. See 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011)
`(statement of Senator Kyl) (“it is important that the section 315(b)
`deadline afford defendants a reasonable opportunity to identify and
`understand the patent claims that are relevant to the litigation”) (Ex.
`2011); see also Meeting of H. Comm. on the Judiciary, Transcript of
`Markup of H.R. 1249, p. 72 (April 14, 2011) (statement of Judiciary
`14
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`IPR2017-01995
`Patent No. 9,220,698
`
`
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`Committee Chairman Lamar Smith) (“The inter partes proceeding in
`H.R. 1249 has been carefully written to balance the need to encourage
`its use while at the same time preventing the serial harassment of patent
`holders”) (Ex. 2012). Therefore, the interpretation of 35 U.S.C. §
`315(b) must be consistent with the legislative intent to provide
`defendants sufficient time to analyze the patent claims so that they can
`decide whether to challenge the patentability of the claims in an inter
`partes review.
`Id. at 4-5 (emphasis added).
`
`Instituting Mylan’s Petition thus frustrates the very intent behind § 315(b).
`
`Mylan’s Petition is barred by § 315(b) and the Board should reconsider its Decision.
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`IV. CONCLUSION
`
`For the foregoing reasons, Patent Owner requests that the Board deny
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`Grounds 1, 2, and 3 in the Petition and decline to institute inter partes review of the
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`’698 patent.
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`Date: March 22, 2018
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`Respectfully submitted,
`
`
`/Thomas A. Blinka/
`Thomas A. Blinka, Ph.D.
`Reg. No. 44,541
`Counsel for Patent Owner
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`15
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`CERTIFICATION OF SERVICE UNDER 37 C.F.R. § 42.6(e)
`
`IPR2017-01995
`Patent No. 9,220,698
`
`
`I, Thomas A. Blinka, hereby certify that on this 22nd day of March 2018, the
`
`foregoing Patent Owners’ Request for Rehearing of the Decision to Institute Trial
`Pursuant to 37 CFR § 42.71 (c), (d) was served electronically via email on the
`following:
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`
`
`Brandon M. White
`bmwhite@perkinscoie.com
`700 13th St., NW Suite 600
`Washington, DC 20005
`
`Emily Greb
`egreb@perkinscoie.com
`One East Main St., Suite 201
`Madison, WI 53703
`
`EsoNaproxen@perkinscoie.com
`
`Date: March 22, 2018
`
`
`BY:
`
`
`/Thomas A. Blinka/
`Thomas A. Blinka, Ph.D.
`Reg. No. 44,541
`Counsel for Patent Owner
`
`16
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`
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