Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 34
`Entered: May 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
` MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`v.
`POZEN INC. and HORIZON PHARMA USA, INC.,
`Patent Owners.
`_______________
`
`Case IPR2017-01995
`Patent 9,220,698 B2
`_______________
`
`
`Before TONI R. SCHEINER, MICHELLE N. ANKENBRAND, and
`DEBRA L. DENNETT, Administrative Patent Judges.
`
`DENNETT, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owners’ Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 34
`Entered: May 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
` MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`v.
`POZEN INC. and HORIZON PHARMA USA, INC.,
`Patent Owners.
`_______________
`
`Case IPR2017-01995
`Patent 9,220,698 B2
`_______________
`
`
`Before TONI R. SCHEINER, MICHELLE N. ANKENBRAND, and
`DEBRA L. DENNETT, Administrative Patent Judges.
`
`DENNETT, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owners’ Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`
`I. INTRODUCTION
`On March 22, 2018, Pozen Inc. and Horizon Pharma USA, Inc. (“Patent
`Owners”) filed a Request for Rehearing (Paper 24, “Rehearing Request” or “Reh’g
`Req.”) of our Decision instituting an inter partes review (Paper 18, “Decision” or
`“Dec.”) of claims 1–7 of U.S. Patent No. 9, 220,698 (Ex. 1001, “the ’698 patent”).
`In the Decision, we found that Patent Owners failed to show that Petitioner was
`barred from filing its petition by 35 U.S.C. §§ 315(a) or (b). Dec. 12–15.
`We deny the Rehearing Request for the reasons set forth below.
`
`II. STANDARD OF REVIEW
`When considering a request for rehearing, we review the Decision for an
`abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears
`the burden of showing that the Decision should be modified, and “[t]he request
`must specifically identify all matters the party believes [we] misapprehended or
`overlooked.” 37 C.F.R. § 42.71(d).
`
`III. ANALYSIS
`Patent Owners argue that we misapprehended the facts surrounding
`Petitioner’s alleged continued assertion of counterclaims of invalidity and non-
`infringement of the ’698 patent from February 19, 2016 to present, and based our
`decision on an erroneous interpretation of the law regarding 35 U.S.C. §§ 315(a)
`and (b). Req. Reh’g 2. In particular, Patent Owners argue that Petitioner’s
`counterclaims of noninfringement and invalidity of the ’698 patent in Civil Action
`No. 2:15-cv-03327 (“Case II”) were consolidated into Civil Action 2:16-cv-04921
`(“Case III”), thus “there was never a period of time in which the ’698 patent was
`not at issue” after Petitioner filed counterclaims on the ’698 patent. Reh’g Req. 4.
`Patent Owners further argue that we failed to consider the decision in Apple Inc. v.
`
` 2
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`IPR2017-01995
`Patent 9,220,698 B2
`
`Rensselaer Polytechnic Institute, Case IPR2014-00319 (PTAB June 12, 2014)
`(Paper 12) (“Apple”), in which the Board determined that Apple’s petition for inter
`partes review was time-barred under 35 U.S.C. § 315(b) based on facts allegedly
`similar to those of the instant case. Reh’g Req. 2, 5.
`The facts of record in this proceeding regarding the district court litigation
`between the parties involving the ’698 patent prior to the Petition’s filing date are
`as follows. In response to Patent Owners’ second amended complaint alleging
`infringement of patents not including the ’698 patent (Case II), Petitioner filed an
`answer on February 19, 2016 that included counterclaims of invalidity and
`noninfringement of the ’698 patent. Ex. 2005. Patent Owners’ March 7, 2016
`answer to Petitioner’s counterclaim did not assert that Petitioner infringed the ’698
`patent. See generally Ex. 2006. Patent Owners also did not file an amended
`complaint asserting infringement of the ’698 patent in Case II. On August 25,
`2016, Patent Owners served a complaint on Petitioner alleging infringement of the
`’698 patent and related patents (Case III). Paper 16, 1. On September 19, 2016,
`Petitioner answered the complaint in Case III, and asserted counterclaims of
`invalidity and noninfringement of the ’698 patent. On February 23, 2017, the
`district court in Case II issued an order dismissing without prejudice Petitioner’s
`sixth and twelfth counterclaims (declaratory judgment of noninfringement and
`invalidity of the ’698 patent). Ex. 1047. The order states, “[t]he parties stipulate to
`dismiss [Petitioner’s] sixth and twelfth counterclaims [the counterclaims involving
`the ’698 patent] in . . . Case II, without prejudice. This stipulation of dismissal
`does not apply to the claims or counterclaims related to the ’698 . . . patent[] in
`Case III.” Id. at 3.
`Contrary to Patent Owners’ assertion, the evidence before us does not
`support that Petitioner’s ’698 patent-related counterclaims in Case II were
`
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`IPR2017-01995
`Patent 9,220,698 B2
`
`consolidated with Case III. Rather, the evidence confirms that the counterclaims
`were dismissed without prejudice. As we explained in our Decision, “[d]ismissal
`without prejudice places the parties in a position as if the action was never filed.”
`Dec. 13. In so finding, we followed Oracle Corp. v. Click-to-Call Technologies,
`LP, in which the Board determined that a dismissal without prejudice does not bar
`a petitioner from pursuing an inter partes review. Oracle Corp. v. Click-to-Call
`Techs. LP, Case IPR2013-00312, slip op. at 17 (PTAB Oct. 24, 2014) (Paper 26)
`(Precedential) (“Oracle”).
`Patent Owners request that we reverse our decision based on the (non-
`precedential) Apple decision, urging that our facts and those in Apple “are very
`similar,” and the Board’s reasoning in Apple should apply here. Reh’g Req. 5. In
`Apple, patent owner Dynamic Advances, LLC filed a complaint against Apple for
`infringement of the ’798 patent (Dynamic I), and Apple counterclaimed. Apple,
`IPR2014-00319, Paper 12, 3. Subsequently, Rensselaer Polytechnic Institute and
`Dynamic Advances, LLC jointly filed another complaint against Apple for
`infringement of the same patent (Dynamic II). Id. The district court consolidated
`Dynamic I with Dynamic II, and dismissed Dynamic I without prejudice, ordering
`that the “parties will proceed to litigate their claims and defenses in [Dynamic II],
`the discovery from Dynamic I will be treated as if it was filed in Dynamic II, and
`the parties are bound to positions taken in Dynamic I.” Id. at 6–7. The Board
`concluded, based on those facts, “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.” Id. at 7.
`The facts before us are distinguishable from those in Apple. As explained
`above, Patent Owners in this case did not file a complaint against Petitioner
`
` 4
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`IPR2017-01995
`Patent 9,220,698 B2
`
`alleging infringement of the ’698 patent in the earlier case (Case II), but rather,
`only in the latter case (Case III). See, e.g., Paper 16 at 1; Ex. 2006 ([Patent
`Owners’] Answer to [Petitioner’s] Counterclaims to Second Amended Complaint);
`Ex. 1047 (Stipulation and Order to Dismiss Certain Counterclaims in Case II). The
`district court’s order in Case II dismissing Petitioner’s counterclaims of
`noninfringement and invalidity of the ’698 patent does not mention any claim for
`infringement of the ’698 patent, but only Petitioner’s counterclaims related to the
`’698 patent. See Ex. 1047. The order does not indicate that Case II is consolidated
`with Case III, or that any claims or counterclaims asserted in Case II are
`consolidated with claims asserted in Case III. See id. Instead, the order merely
`states that the stipulation of dismissal does not apply to claims or counterclaims
`related to the ’698 patent in Case III. The order does not require the parties to
`litigate any claims from Case II in Case III, does not require discovery from Case
`II to be treated as if filed in Case III, and does not bind the parties in Case III to
`positions taken in Case II. See id.
`Unlike in Apple, Petitioner’s counterclaims of noninfringement and
`invalidity in Case II ceased to exist when those claims were dismissed without
`prejudice. See Oracle, Paper 26, 17. Patent Owners fail to demonstrate that we
`abused our discretion in reaching our conclusion that Petitioner is not time barred
`under 35 U.S.C. §§ 315(a) or (b).
`
`IV. ORDER
`
`It is
`ORDERED that Patent Owners’ Request for Rehearing is denied.
`
`
`
` 5
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`IPR2017-01995
`Patent 9,220,698 B2
`
`PETITIONER:
`
`Brandon M. White
`Emily Greb
`PERKINS COIE LLP
`bmwhite@perkinscoie.com
`egreb@perkinscoie.com
`
`
`PATENT OWNER:
`Thomas A. Blinka, Ph.D.
`COOLEY LLP
`TBlinka@cooley.com
`
`Margaret J. Sampson, Ph.D.
`BAKER BOTTS LLP
`Margaret.Sampson@bakerbotts.com
`
`
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