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 IPR2017-019951
`Patent 9,220,698 B2
`_______________
`
`
`
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71
`
`
`1 Petitioner Dr. Reddy’s Laboratories, Inc. (“DRL”), from IPR2018-00894, has been
`
`joined as a Petitioner to this proceeding.
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`LEGAL STANDARDS ............................................................................................ 2
`
`BACKGROUND ...................................................................................................... 2
`
`ARGUMENT ............................................................................................................ 6
`
`I. Statutes Must Be Given Their Plain Meaning. ................................................ 7
`
`II. Mylan’s Counterclaim Does Not Trigger the Statutory Bar Under the Plain
`Meaning of 35 U.S.C. § 315(a)(3). .......................................................................10
`
`III. Legislative History Does Not Support the PTAB’s Interpretation. ...........12
`
`IV. Mylan’s Counterclaim Is Not a “Civil Action” Under § 315(a)(1). ..........14
`
`CONCLUSION ...................................................................................................... 15
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`CASES
`
`Amkor Tech., Inc. v. Tessera, Inc.,
`IPR2013-00242, 2014 WL 2864151 (P.T.A.B. Jan. 31, 2014) .......................... 11
`
`Barnhart v. Sigmon Coal Co., Inc.,
`534 U.S. 438 (2002) .............................................................................................. 8
`
`Canfield Scientific, Inc. v. Melanoscan, LLC,
`IPR2017-02125, 2018 WL 1628565 (P.T.A.B. Mar. 30, 2018) ................... 10, 11
`
`Click-to-Call Techs., LP v. Ingenio, Inc.,
`899 F.3d 1321 (Fed. Cir. 2018) ...................................................................passim
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 9
`
`Garcia v. United States,
`469 U.S. 70 (1984) .............................................................................................. 13
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) .......................................................................................... 9
`
`Jimenez v. Quarterman,
`555 U.S. 113 (2009) .......................................................................................... 6, 8
`
`Return Mail, Inc. v. United States Postal Serv.,
`868 F.3d 1350 (Fed. Cir. 2017) .......................................................................... 12
`
`Ruiz Food Prods., Inc. v. MacroPoint LLC,
`IPR2017-02016, -02018, 2019 WL 643108 (P.T.A.B. Feb. 14,
`2019) ................................................................................................................... 10
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ................................................................................ 1, 8, 12
`
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005) ............................................................................ 2
`
`
`
`

`

`Starry Assocs., Inc. v. United States,
`892 F.3d 1372 (Fed. Cir. 2018) ............................................................................ 8
`
`Timex V.I., Inc. v. United States,
`157 F.3d 879 (Fed. Cir. 1998) .............................................................................. 8
`
`TRW Auto. US LLC v. Magna Elecs. Inc.,
`IPR2014-00869, 2014 WL 6808307 (P.T.A.B. Dec. 1, 2014) ........................... 11
`
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 1376 (Fed. Cir. 2016) ............................................................................ 8
`
`STATUTES
`
`35 U.S.C. § 315(a)(1) ........................................................................................passim
`
`35 U.S.C. § 315(a)(3) ........................................................................................passim
`
`35 U.S.C. § 315(b) ............................................................................................passim
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71 ....................................................................................................... 1
`
`37 C.F.R. § 42.71(c) ................................................................................................... 2
`
`37 C.F.R. § 42.71(d) .................................................................................................. 2
`
`157 Cong. Rec. S1036 (daily ed. Mar. 1, 2011) (statement of Sen.
`Klobuchar) .......................................................................................................... 14
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (statement of Sen.
`Kyl) ..................................................................................................................... 14
`
`157 Cong. Rec. S1051 (daily ed. Mar. 1, 2011) (statement of Sen.
`Leahy) ................................................................................................................. 14
`
`157 Cong. Rec. S1361-62 (daily ed. Mar. 8, 2011) (statement of Sen.
`Leahy) ................................................................................................................. 14
`
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen.
`Kyl) ..................................................................................................................... 13
`
`
`
`

`

`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen.
`Kyl) ............................................................................................................... 13, 15
`
`Fed. R. Civ. P. 3 ....................................................................................................... 14
`
`
`
`

`

`Pursuant to 37 C.F.R. § 42.71, Petitioners respectfully submit this request for
`
`rehearing of the Patent Trial and Appeal Board’s (“PTAB”) decision to vacate its
`
`prior institution decision. Paper 71.
`
`The PTAB’s decision turned on its conclusion that 35 U.S.C. § 315(a)(3)
`
`applies only to counterclaims filed in response to allegations of infringement of the
`
`same patent. Paper 71 at 8-11. That novel interpretation runs counter to the
`
`unambiguous language of § 315(a)(3), which prohibits the application of
`
`§ 315(a)(1)’s statutory bar to “counterclaim[s] challenging the validity of a claim of
`
`a patent.” (emphasis added). And, while the PTAB relied on isolated legislative
`
`history to support its interpretation, courts of review have cautioned against turning
`
`to legislative history where, as here, a statute is clear on its face. See SAS Inst., Inc.
`
`v. Iancu, 138 S. Ct. 1348, 1355 (2018) (“Where a statute’s language carries a plain
`
`meaning, the duty of an administrative agency is to follow its commands as written
`
`….” (citation omitted)). By turning to the legislative history of the statute to craft an
`
`exception absent from the words of the statute itself, the PTAB’s decision strays
`
`from the express reasoning of the Federal Circuit’s decision in Click-to-Call
`
`Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). Regardless,
`
`review here of the spartan legislative history does not support the PTAB’s
`
`interpretation of § 315(a)(3), which, on its face, makes clear that Mylan’s Petition
`
`
`
`1
`
`

`

`was not time-barred. For these reasons and those below, Petitioners respectfully
`
`request rehearing of the decision to vacate institution.
`
`LEGAL STANDARDS
`
`“A party dissatisfied with a decision may file a single request for rehearing.”
`
`37 C.F.R. § 42.71(d). The movant bears the burden to “identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each matter
`
`was previously addressed in a motion, an opposition, or a reply.” Id.
`
`A request for rehearing of an institution decision is reviewed for an abuse of
`
`discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs if, inter alia, a
`
`decision is based on an erroneous interpretation of law, a factual finding is not
`
`supported by substantial evidence, or the decision represents an unreasonable
`
`judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393
`
`F.3d 1277, 1281 (Fed. Cir. 2005).
`
`BACKGROUND
`
`The facts relevant to Petitioners’ request for rehearing 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 a counterclaim for a declaration of invalidity 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.
`
`
`
`2
`
`

`

`•
`
`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 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.
`
`• March 8, 2018. The PTAB instituted Mylan’s review over Patent Owners’
`
`objections that the Petition was time-barred under § 315. Paper 18.
`
`• March 27, 2019. After the Federal Circuit decision in Click-to-Call, the
`
`PTAB vacated its prior institution decision, concluding that the Petition was time-
`
`barred under § 315(a)(1). Paper 71.
`
`The reasoning in the March 27 decision does not stand in isolation. Rather, in
`
`its institution decision, the PTAB concluded that the Petition was not time-barred
`
`because Mylan’s counterclaims were dismissed without prejudice. Paper 18 at 12-
`
`13. This “place[d] the parties in a position as if the action was never filed.” Id. at 13.
`
`The PTAB also found the Petition was not time barred under § 315(a): “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
`
`
`
`3
`
`

`

`the PTAB in its prior decision, under § 315(a)(3) a counterclaim challenging validity
`
`simply “is not a civil action” for purposes of § 315(a). Id. at 12.
`
`
`
`The PTAB affirmed its reasoning in denying Patent Owners’ request for
`
`rehearing of its institution decision. Paper 34 at 4-5. In denying that request, the
`
`PTAB 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 34 at 3-5.
`
`
`
`The Federal Circuit later issued its opinion in Click-to-Call, which 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. The reasoning of that decision was simple: § 315(b)
`
`requires only that a “complaint” was “served”—the statute created no express
`
`exception for claims later voluntarily dismissed. Id. at 1330. Accordingly, given the
`
`logic of its initial institution decision—which turned on the voluntary dismissal of
`
`Mylan’s counterclaim—the PTAB requested the parties simultaneously address
`
`whether Click-to-Call warranted reversal of the prior decisions. See Paper Nos. 63
`
`& 65.
`
`
`
`In its Click-to-Call submission, Petitioners pressed that, properly applied,
`
`Click-to-Call does not detract from—but supports—the propriety of institution here.
`
`
`
`4
`
`

`

`First, applying Click-to-Call to the bar under § 315(b), 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). Mylan thus was not “served
`
`with a complaint alleging infringement of a patent” until August 25, 2016, less than
`
`one year before the filing of Mylan’s Petition. Accordingly, the Petition is not barred
`
`under § 315(b). Moreover, under the express language of § 315(a), Mylan’s
`
`counterclaim did not constitute “fil[ing] a civil action challenging the validity of a
`
`claim of the patent.” Indeed, § 315(a)(3) 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). Mylan’s Petition was thus timely, and the PTAB’s institution decision
`
`and denial of rehearing were proper.
`
`
`
`In contrast, Patent Owners’ submission asserted first (and without support)
`
`that their “disclosure of asserted claims” under local district court patent rules
`
`constituted “serv[ing] a complaint alleging infringement of the patent” under
`
`§ 315(b). Paper 63 at 3-4. Second, with regard to § 315(a), Patent Owners argued in
`
`a single paragraph that Mylan’s counterclaim was sufficient to trigger § 315(a)’s
`
`“civil action” bar. See id. at 4-5. That is, according to Patent Owners, despite
`
`§ 315(a)(3)’s explicit prohibition on including within the scope of § 315(a)
`
`“counterclaim[s] challenging the validity of a claim,” Patent Owners nonetheless
`
`
`
`5
`
`

`

`maintained that § 315(a)(3) excluded only counterclaims filed in response to
`
`allegations of infringement of the same patent. See id. at 5. As they had in their
`
`preliminary opposition, Patent Owners again failed to offer citation to any governing
`
`precedent under § 315(a), relying instead on a new and isolated snippet of legislative
`
`history. See id.
`
`
`
`On March 27, 2019, the PTAB issued its decision and vacated the prior
`
`institution decision. Paper 71. Based on only two excerpts of the legislative history
`
`from a single Senator, the PTAB reasoned that § 315(a)(3) carved out only
`
`counterclaims asserting invalidity of a patent in response to allegations of
`
`infringement of the same patent. Id. at 8-11. Thus, according to the PTAB, “Mylan’s
`
`declaratory judgment action, though designated by Mylan as a ‘counterclaim,’ does
`
`not qualify as a counterclaim under § 315(a)(3) that avoids § 315(a)(1).” Id. at 11.2
`
`Petitioners respectfully request reconsideration of that decision.
`
`ARGUMENT
`
`“It is well established that, when the statutory language is plain, [a court] must
`
`enforce it according to its terms.” Jimenez v. Quarterman, 555 U.S. 113, 118 (2009)
`
`(citations omitted). Here, the language of § 315(a)(3) is clear on its face: “[a]
`
`counterclaim challenging the validity of a claim of a patent does not constitute a civil
`
`
`2 The PTAB declined to address the arguments under 35 U.S.C. § 315(b).
`
`
`
`6
`
`

`

`action challenging the validity of a claim of a patent ….” No ambiguity and no
`
`absurd result from the application of the statute compel looking beyond the
`
`unambiguous words of the statute. Yet, the PTAB nonetheless retreated to legislative
`
`history to interpret the statutory language as including a limitation only to
`
`counterclaims filed in response to patent infringement complaints asserting the same
`
`patent. See Paper 71 at 8-11. This interpretation is unsupported in the plain language
`
`of the statute and therefore was legal error that warrants grant of Petitioners’
`
`rehearing request.3
`
`I.
`
`
`
`Statutes Must Be Given Their Plain Meaning.
`
`As the Federal Circuit repeated in its recent Click-to-Call decision, “[t]he first
`
`step [in interpreting statutory language] is to determine whether the language at issue
`
`has a plain and unambiguous meaning with regard to the particular dispute in the
`
`
`3 Petitioners’ arguments pertaining to this Rehearing Request appear at, inter alia,
`
`Paper 16 at 1-2; Paper 65 at 5. Notably, while the PTAB issued its decision to vacate
`
`institution in response to briefing addressing the impact of Click-to-Call on § 315(b),
`
`the PTAB’s decision to vacate institution did not turn on the reasoning of (or
`
`arguments made in response to) that decision, but instead the Board’s sua sponte
`
`reversal of its prior determination that Mylan’s counterclaims do not constitute a
`
`“counterclaim” under § 315(a)(3).
`
`
`
`7
`
`

`

`case.” Click-to-Call, 899 F.3d at 1329 (internal quotation marks and citation
`
`omitted); see also Barnhart v. Sigmon Coal Co., Inc., 534 U.S. 438, 450 (2002);
`
`Jimenez, 555 U.S. at 118; Starry Assocs., Inc. v. United States, 892 F.3d 1372, 1377
`
`(Fed. Cir. 2018). Importantly, “[w]here a statute’s language carries a plain meaning,
`
`the duty of an administrative agency is to follow its commands as written ….” SAS,
`
`138 S. Ct. at 1355 (citation omitted).
`
`
`
`In the face of plain and unambiguous language, and in the absence of an
`
`absurd result from application of that plain and unambiguous language, case law
`
`prohibits retreating to legislative history for further interpretation. Click-to-Call, 899
`
`F.3d at 1332; see also SAS, 128 S. Ct. at 1355; Unwired Planet, LLC v. Google Inc.,
`
`841 F.3d 1376, 1381 (Fed. Cir. 2016). This is “[b]ecause a statute’s text is
`
`Congress’s final expression of its intent, if the text answers the question, that is the
`
`end of the matter.” Click-to-Call, 899 F.3d at 1332 (quoting Timex V.I., Inc. v. United
`
`States, 157 F.3d 879, 882 (Fed. Cir. 1998)) (interpreting § 315(b)’s lack of an express
`
`exception for complaints
`
`later dismissed without prejudice as precluding
`
`interpretation of the statute to include such an exception).
`
`
`
`SAS is instructive. There, the Supreme Court determined that “the plain text
`
`of [the statute] supplies a ready answer,” and “[w]here a statute’s language carries a
`
`plain meaning, the duty of an administrative agency is to follow its commands as
`
`written, not to supplant those commands with others it may prefer.” SAS, 138 S. Ct.
`
`
`
`8
`
`

`

`at 1354-55 (citation omitted); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`2131, 2140 (2016) (“The dissent … would limit the scope of the ‘No Appeal’
`
`provision to interlocutory appeals, leaving a court free to review the initial decision
`
`to institute review in the context of the agency’s final decision …. We cannot accept
`
`this interpretation. It reads into the provision a limitation (to interlocutory decisions)
`
`that the language nowhere mentions and that is unnecessary.” (citation omitted));
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1934-35 (2016) (“[T]he
`
`language Congress reenacted [in the AIA] unambiguously confirmed discretion in
`
`the district courts …. Respondents point to isolated snippets of legislative history
`
`referring to Seagate as evidence of congressional endorsement of its framework, but
`
`other morsels—such as Congress’s failure to adopt a proposed codification similar
`
`to Seagate—point in the opposite direction.”). Applying similar principles, in Click-
`
`to-Call the Federal Circuit held that 35 U.S.C. § 315(b)’s language that “[a]n inter
`
`partes review may not be instituted if the petition requesting the proceeding is filed
`
`more than 1 year after … the petitioner … is served with a complaint alleging
`
`infringement of the patent” plainly and unambiguously did not include an exception
`
`for complaints that were later voluntarily dismissed, refusing to use legislative
`
`history to narrow this plain meaning. See 899 F.3d at 1329-32. Thus, and consistent
`
`with the above, absent ambiguity on the face of the statute, the PTAB must, like
`
`other administrative agencies, apply the law as written.
`
`
`
`9
`
`

`

`II. Mylan’s Counterclaim Does Not Trigger the Statutory Bar Under the
`Plain Meaning of 35 U.S.C. § 315(a)(3).
`
`This precedent compels reconsideration here. By way of background,
`
`§ 315(a)(1) bars a party from petitioning for IPR when, if before filing the petition,
`
`“the petitioner … filed a civil action challenging the validity of a claim of the
`
`patent.” Importantly, however, § 315(a)(3) sets forth a clear exemption from
`
`§ 315(a)(1): “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 this subsection.” There are no exceptions enumerated in the statute—on its face,
`
`all counterclaims challenging the validity of “a patent” are exempted from
`
`§ 315(a)(1). Indeed, this language is plain and unambiguous and does not limit itself
`
`to only certain types of counterclaims, for example, to only those raised in response
`
`to complaints served asserting infringement of the same patent.
`
`
`
`That this provision has a commonly understood meaning has been confirmed
`
`by multiple PTAB panels. Canfield Scientific, Inc. v. Melanoscan, LLC, IPR2017-
`
`02125, 2018 WL 1628565, at *2 (P.T.A.B. Mar. 30, 2018) (“[W]e do not find that
`
`‘counterclaim,’ as employed in § 315(a)(3), is ambiguous or susceptible to multiple
`
`interpretations.”); Ruiz Food Prods., Inc. v. MacroPoint LLC, IPR2017-02016,
`
`-02018, 2019 WL 643108, at *5 (P.T.A.B. Feb. 14, 2019) (“[W]e find no ambiguity
`
`in the term ‘counterclaim’ as used in § 315(a)(3).”). Indeed, and consistent with
`
`these holdings, the PTAB has repeatedly rejected arguments—similar to those made
`
`
`
`10
`
`

`

`here—that attempt to carve out select counterclaims from the “counterclaims”
`
`described in the statute. Canfield, 2018 WL 1628565, at *2 (“The express statutory
`
`language does not parse certain ‘counterclaims,’ such as ‘counterclaims-in-reply,’
`
`from other ‘counterclaims.’”); Decision, TRW Auto. US LLC v. Magna Elecs. Inc.,
`
`IPR2014-00869, 2014 WL 6808307, at *6-7 (P.T.A.B. Dec. 1, 2014) (rejecting
`
`argument that invalidity counterclaim served after Patent Owner’s complaint was
`
`filed, but not served, was actually a “civil action” and not a “counterclaim” under
`
`§ 315(a)(3)); Paper 16 at 2. Notably, Patent Owners cite no contrary authority, as the
`
`PTAB acknowledged in instituting this review. Paper 18 at 12-13 (“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 Owners have mustered
`
`no precedent in support. Paper 63 at 3-5; Paper 71 at 9-11.4
`
`
`4 Patent Owners’ passing reliance on dicta in Amkor Technology, Inc. v. Tessera,
`
`Inc., IPR2013-00242, 2014 WL 2864151 (P.T.A.B. Jan. 31, 2014)—which
`
`addresses whether a patent owner’s counterclaims may trigger the bar under 35
`
`U.S.C. § 315(b)—is misplaced, at least because § 315(b) does not contain the carve
`
`out for counterclaims Congress elected to include in § 315(a). See Paper 65 at 4-5
`
`(distinguishing Amkor).
`
`
`
`11
`
`

`

`
`
`Moreover, that § 315(a)(3) may apply to any counterclaim is clear from the
`
`statute itself. As just one example, while Congress used the phrase “the patent” in
`
`§ 315(a)(1) (emphasis added), Congress specifically chose to use the phrase “a
`
`patent”—and not “the patent”—in § 315(a)(3) (emphasis added). See Paper 16 at 1-
`
`2; Paper 65 at 5; SAS, 138 S. Ct. at 1355 (“Congress’ choice of words is presumed
`
`to be deliberate …” (citation omitted)); Return Mail, Inc. v. United States Postal
`
`Serv., 868 F.3d 1350, 1363 (Fed. Cir. 2017) (“It can be strongly presumed that
`
`Congress will specifically address language on the statute books that it wishes to
`
`change.” (citation omitted)). This express choice indicates that Congress did not
`
`intend to only include certain counterclaims in its § 315(a)(3) exemption. Under the
`
`plain meaning of § 315(a)(3), Mylan’s counterclaims did not start the clock on
`
`§ 315(a)(1)’s bar.
`
`III. Legislative History Does Not Support the PTAB’s Interpretation.
`
`To the extent the legislative history is considered, here it fails to trump the
`
`clear words of the statute. In drafting a limitation on the types of counterclaims
`
`applicable to § 315(a)(3), the PTAB relied upon only two statements from a single
`
`senator. See Paper 71 at 9-10. Neither statement supports Patent Owners’
`
`interpretation. Id.
`
`
`
`First, neither statement limits “counterclaims” to those linked to a particular,
`
`already-asserted patent. Both are general background explanations that § 315(a)
`
`
`
`12
`
`

`

`applies to declaratory judgment civil actions, and not counterclaims where a
`
`defendant has been accused of patent infringement. See 157 Cong. Rec. S1375 (daily
`
`ed. Mar. 8, 2011) (statement of Sen. Kyl); 157 Cong. Rec. S5429 (daily ed. Sept. 8,
`
`2011) (statement of Sen. Kyl). Here, Petitioner fits that bill—Mylan was a defendant
`
`in a patent suit that had been accused of patent infringement, and it filed
`
`counterclaims to rebut the accusation that the filing of its Abbreviated New Drug
`
`Application infringed. The selected statements of Sen. Kyl do not shed any light on
`
`whether the accused infringer’s counterclaim must involve a patent already in the
`
`lawsuit to constitute a “counterclaim” for purposes of § 315(a)(3).
`
`
`
`Second, the Supreme Court has cautioned against relying on the comments of
`
`a single member of Congress to interpret statutory language. Garcia v. United States,
`
`469 U.S. 70, 76 (1984). To illustrate, in Garcia, the Petitioners attempted to rely on
`
`“snippets” from the House floor to support a narrow interpretation of a statute, and
`
`the Supreme Court rejected such an approach. Id. In explaining that Committee
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`Reports on a bill constitute “the authoritative source for finding the Legislature’s
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`intent,” the Court explained that “[w]e have eschewed reliance on the passing
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`comments of one Member.” Id. (citation omitted). So too here.
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`Finally, other policy arguments—supported by legislative history—cut in
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`favor of Petitioners’ interpretation. Numerous Senators expressed that the purpose
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`of the America Invents Act was to weed out inferior patents through the creation of
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`the inter partes review process.5 Petitioners’ interpretation of § 315(a)(3) is more
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`aligned with this overarching policy goal; Patent Owners, in contrast, seek to
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`manufacture yet more bars to review.
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`IV. Mylan’s Counterclaim Is Not a “Civil Action” Under § 315(a)(1).
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`Beyond the PTAB’s misinterpretation of § 315(a)(3), application of § 315(a)’s
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`statutory bar here suffers from a second shortcoming. Namely, 35 U.S.C. § 315(a)(1)
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`bars review only where a petitioner previously filed a “civil action.” As Fed. R. Civ.
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`P. 3 makes clear, a “civil action” is commenced with the filing of a “complaint.”
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`And, as the Federal Circuit held in Click-to-Call, the term “complaint” means “[t]he
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`initial pleading that starts a civil action and states the basis for … the plaintiff’s
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`5 157 Cong. Rec. S1036 (daily ed. Mar. 1, 2011) (statement of Sen. Klobuchar)
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`(“[T]hese low-quality patents clog the system and hinder true innovation.”); 157
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`Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl) (“The present bill
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`… will … create new means for improving patent quality…”); 157 Cong. Rec.
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`S1051 (daily ed. Mar. 1, 2011) (statement of Sen. Leahy) (“An efficient and high-
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`quality U.S. Patent and Trademark Office is essential to maintaining American
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`leadership in innovation.”); 157 Cong. Rec. S1361-62 (daily ed. Mar. 8, 2011)
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`(statement of Sen. Leahy) (“The [AIA] … will improve the quality of patents that
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`are issued ….”).
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`claim.” 899 F.3d at 1330 (citation omitted). In fact, the legislative history supports
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`that § 315(a)(1) was directed to separate declaratory judgment actions allowing the
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`accused infringer choice of forum—not to counterclaims raised in suits brought by
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`patentees in forums of their choosing. See 157 Cong. Rec. S5429 (daily ed. Sept. 8,
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`2011) (statement of Sen. Kyl) (“The purpose of allowing the declaratory-judgment
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`action [of § 315(a)(1)] to be filed is to allow the accused infringer to file the first
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`action and thus be presumptively entitled to his choice of venue.”). Mylan’s
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`counterclaim did not start a new action, was not included in a complaint, and did not
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`provide Mylan with its choice of forum—and neither Patent Owners nor the PTAB
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`have adduced any contrary authority interpreting a “civil action” under § 315(a)(1)
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`so broadly. See Paper 71 at 8-11. For this reason, also, rehearing is proper.
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`CONCLUSION
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`Petitioners thus respectfully submit the PTAB’s interpretation of § 315(a)(3)
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`was erroneous to the extent it deviated from the statute’s plain meaning.
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`April 26, 2019
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`Respectfully submitted,
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`/Brandon M. White/
`Brandon M. White, Esq.
`Reg. No. 52,354
`Perkins Coie LLP
`700 Thirteenth Street, N.W., Suite 600
`Washington, DC 20005-3960
`bmwhite@perkinscoie.com
`Tel: 202-654-6206
`Fax: 202-654-9681
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`Counsel for Petitioner Mylan
`Pharmaceuticals Inc.
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served a true and
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`correct copy of the foregoing: PETITIONERS’ REQUEST FOR REHEARING
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`UNDER 37 C.F.R. § 42.71 by email to the electronic service addresses for Patent
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`Owners:
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`Thomas A. Blinka
`Jonathan G. Graves
`Ellen Scordino
`Cooley LLP
`zIPR2017-01995@cooley.com
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`Margaret J. Sampson
`Stephen M. Hash
`Jeffrey S. Gritton
`Baker Botts LLP
`nuvo-vimovoBB@bakerbotts.com
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`Petitioner Dr. Reddy’s :
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`Alan H. Pollack
`Stuart D. Sender
`Louis H. Weinstein
`Windels Marx Lane & Mittendorf, LLP
`apollack@windelsmarx.com
`ssender@windelsmarx.com
`lweinstein@windelsmarx.com
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`/Maria A. Stubbings/
`Maria A. Stubbings
`Reg. No. 73,486
`Counsel for Petitioner Mylan Pharmaceuticals Inc.
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`Dated: April 26, 2019
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