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
`_______________
`
`
`
`PETITIONER MYLAN’S REQUEST FOR REHEARING OF DENIAL
`OF REFUND UNDER 37 C.F.R. § 42.71
`
`
`
`
`1 Petitioner Dr. Reddy’s Laboratories, Inc. (“DRL”), from IPR2018-00894, was
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`previously joined as a Petitioner to this proceeding.
`
`
`________________
`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
`_______________
`
`
`
`PETITIONER MYLAN’S REQUEST FOR REHEARING OF DENIAL
`OF REFUND UNDER 37 C.F.R. § 42.71
`
`
`
`
`1 Petitioner Dr. Reddy’s Laboratories, Inc. (“DRL”), from IPR2018-00894, was
`
`previously joined as a Petitioner to this proceeding.
`
`
`
`Pursuant to 37 C.F.R. § 42.71, Petitioner Mylan Pharmaceuticals Inc.
`
`(“Mylan”) respectfully submits this request for rehearing of the Patent Trial and
`
`Appeal Board’s (“PTAB”) denial of Mylan’s Request for Refund of Post-Institution
`
`Fees. Paper 78. For the reasons described below, given that institution here was
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`vacated, refund of Mylan’s post-institution fee is proper.
`
`BACKGROUND
`On August 24, 2017, Mylan petitioned for inter partes review of the ’698
`
`patent. Paper 2. Mylan’s request was accompanied with two distinct fees, as required
`
`by 37 C.F.R. § 42.15 (2017): a “request fee” ($9,000) and a “post-institution” fee
`
`($14,000).
`
`On March 8, 2018, the PTAB instituted Mylan’s review over Patent Owners’
`
`objections that the Petition was time-barred. Paper 18. However, on March 27, 2019,
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`the PTAB vacated its institution decision. Paper 71. Petitioners timely moved for
`
`rehearing, Paper 73, which the PTAB denied on August 12, 2019. Paper 77.
`
`On August 13, 2019, because the Petition was not instituted, Mylan promptly
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`submitted a request for refund of its $14,000 post-institution fee.2 Paper 78. On
`
`
`2 While Mylan requested a refund of $15,000 in post-institution fees, upon further
`
`investigation, this request more accurately should have been made for only $14,000,
`
`the statutory post-institution fee at the time of Mylan’s Petition.
`
`1
`
`
`
`October 23, 2019, the PTAB denied Mylan’s request. Paper 79. The PTAB provided
`
`two justifications for its denial. See id. at 1. First, the PTAB claimed denial of
`
`Mylan’s post-institution fee refund was appropriate because “vacation of institution
`
`was based on a post-institution change in the law, not an error on the panel’s part.”
`
`Id. Second, the PTAB noted that “the case involved bankruptcy of one of the patent
`
`owners, necessitating considerable additional work by the judges.” Id. The PTAB
`
`provided no authority supporting its ability to withhold Mylan’s refund on either
`
`ground. See id.
`
`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.
`
`ARGUMENT
`Mylan’s Petition was not instituted. Paper 71, 13-14. That decision was
`
`affirmed on rehearing. Paper 77. Accordingly, Mylan has no right to appeal (see 35
`
`U.S.C. § 314(d)), the PTAB will not conduct an oral hearing, and Mylan will not
`
`receive a final written decision.
`
`Under such circumstances, Mylan is entitled to a refund of its $14,000 post-
`
`institution fee. See, e.g., Setting and Adjusting Patent Fees During Fiscal Year 2017,
`
`2
`
`
`
`82 Fed. Reg. 52,780, 52,790, 2017 WL 5259547 (Nov. 14, 2017). Indeed, a party
`
`requesting inter partes review must pay upfront both the “request fee” and the “post-
`
`institution fee.” 37 C.F.R. § 42.15 (2017). Although the request fee is non-
`
`refundable, the Patent Office has repeatedly made clear that “[t]he USPTO will
`
`refund the post-institution fee if the inter partes review proceeding is not instituted
`
`by the PTAB.” 82 Fed. Reg. 52,790, 2017 WL 5259547; Setting and Adjusting
`
`Patent Fees During Fiscal Year 2017, 81 Fed. Reg. 68,150, 68,164, 2016 WL
`
`5607912 (Oct. 3, 2016) (“The USPTO will refund the post-institution fee if the IPR
`
`proceeding is not instituted by the PTAB.”); Setting and Adjusting Patent Fees, 78
`
`Fed. Reg. 4212, 4256, 2013 WL 179704 (Jan. 18, 2013) (“Further, many of these
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`services, including post-grant review and inter partes review, provide for refunds if
`
`the Office does not elect to institute a proceeding, which could significantly lower
`
`the cost.”); Setting and Adjusting Patent Fees, 77 Fed. Reg. 55,028, 55,076, 2012
`
`WL 3838932 (Sept. 6, 2012) (“With inter partes review, for instance, the Office
`
`proposes to return fees for post-institution services should a petition not be
`
`instituted.”); PTAB E2E Frequently Asked Questions at E7, available at
`
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`
`board/ptab-e2e-frequently-asked-questions (last visited Oct. 29, 2019) (“[I]n such a
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`situation, the petitioner may file in PTAB E2E a request for a refund of any post-
`
`institution fee paid.”); see also Special Tactical Servs., LLC v. Hagedorn, No.
`
`3
`
`
`
`IPR2019-00240, 2019 WL 1503792, at *1 (PTAB Apr. 3, 2019) (“As indicated
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`above, an inter partes review was not instituted in this proceeding. Thus, the Office
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`will refund Petitioner's post-institution fees.”).
`
`The justifications provided by PTAB to deny Mylan’s refund are unsupported.
`
`See Paper 79. PTAB provides no authority for the notion that the basis for denial of
`
`institute bears on the refundability of Mylan’s post-institution fee. See id. Regardless
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`of the reason for the PTAB’s decision—whether because of a panel error or a change
`
`in law—the end result is the same: the PTAB denied institution, no final written
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`decision will issue, no hearing will be held, and Mylan cannot appeal. And that a
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`patent owner declared bankruptcy is equally immaterial to Mylan’s right to a refund.
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`Mylan has no control over patent owner’s financial management, which caused a
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`delay in these proceedings. Yet, on this basis Mylan (and not patent owner) is now
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`being ordered to pay post-institution expenses for a review that was not instituted.
`
`To be sure, Mylan is appreciative of any additional effort undertaken by the
`
`PTAB in denying institution in this matter. But, to the extent effort was required,
`
`Mylan has paid (and PTAB has retained) the required $9,000 request fee. In contrast,
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`its $14,000 post-institution fee is refundable where, as here, institution was denied.
`
`CONCLUSION
`Mylan respectfully submits that the PTAB’s decision denying Mylan’s refund
`
`
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`was in error and requests refund of its post-institution fee of $14,000.
`
`4
`
`
`
`November 6, 2019
`
`
`
`
`
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`
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`Respectfully submitted,
`
`
`
`
`
`/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
`
`Counsel for Petitioner Mylan
`Pharmaceuticals Inc.
`
`
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served a true and
`
`correct copy of the foregoing: PETITIONER MYLAN’S REQUEST FOR
`
`REHEARING OF DENIAL OF REFUND UNDER 37 C.F.R. § 42.71 by email to
`
`the electronic service addresses for Patent Owners:
`
`Thomas A. Blinka
`Jonathan G. Graves
`Ellen Scordino
`Cooley LLP
`zIPR2017-01995@cooley.com
`
`Margaret J. Sampson
`Stephen M. Hash
`Jeffrey S. Gritton
`Baker Botts LLP
`nuvo-vimovoBB@bakerbotts.com
`
`Petitioner Dr. Reddy’s :
`Alan H. Pollack
`Stuart D. Sender
`
`Louis H. Weinstein
`
`Windels Marx Lane & Mittendorf, LLP
`
`apollack@windelsmarx.com
`
`ssender@windelsmarx.com
`
`lweinstein@windelsmarx.com
`
`/Brandon M. White/
`Dated: November 6, 2019
`Counsel for Petitioner Mylan Pharmaceuticals Inc.
`
`
`
`
`
`
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