UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.
`Petitioner,
`v.
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`GENENTECH, INC.
`Patent Owner.
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`U.S. Patent No. 6,407,213
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`Inter Partes Review No. IPR2017-02032
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`PETITIONER’S REQUEST FOR PARTIAL REHEARING OF THE BOARD’S
`DECISION “INSTITUTION OF INTER PARTES REVIEW”
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.
`Petitioner,
`v.
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`GENENTECH, INC.
`Patent Owner.
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`U.S. Patent No. 6,407,213
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`Inter Partes Review No. IPR2017-02032
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`PETITIONER’S REQUEST FOR PARTIAL REHEARING OF THE BOARD’S
`DECISION “INSTITUTION OF INTER PARTES REVIEW”
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`I.
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`Introduction
`The Board denied institution of inter partes review of U.S. Patent 6,407,213
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`(“the ’213 patent”) based on Grounds 1-5—grounds that the Board (and even Patent
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`Owner) admits are meritorious in that they are already at issue in other instituted
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`IPRs. The Board found persuasive Patent Owner’s argument that, among other
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`issues, denying these grounds would preserve the Board’s and Patent Owner’s
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`resources. The Board also explained that Petitioner could have sought joinder with
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`the previously instituted IPRs, but since it instead chose to file its own challenges to
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`the ’213 patent, Petitioner lost its chance to argue the patentability of the ’213 patent
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`claims on these grounds.
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`It is respectfully submitted that the Board’s decision is contrary to the purpose
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`of IPR proceedings. The Board’s decision is also in tension with a recently issued
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`decision from the Federal Circuit in which the Court acknowledged that parties may
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`challenge the validity of a single patent on the same basis.
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`While the Board did institute IPR on one other ground (Ground 6), the Board’s
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`decision leaves claim 72 of the ’213 patent unchallenged on any ground in this
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`proceeding. Petitioner therefore requests a rehearing of the Board’s decision not to
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`institute Grounds 1-5.
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`1
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`II. The Board’s Discretion Should Not Be Used to Deny Institution of
`Meritorious Grounds
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`The Board has recently designated several cases regarding its discretion not to
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`institute a post grant review, including IPR and CBM, under 35 U.S.C. § 325(d) as
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`“informative.” Unified Patents, Inc. v. Berman, IPR2016-01517, Paper 10 (PTAB
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`2016), denying institution based on art that had been overcome during prosecution;
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`Hospira, Inc. v. Genentech, Inc., IPR2017-00739, Paper 16 (PTAB 2017) (same);
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`Cultec, Inc. v. Stormtech LLC, IPR2017-00777, Paper 7 (PTAB 2017) (same);
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`Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586 (PTAB
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`2017) (same); Kayak Software Corp. v. International Business Machines, Corp.,
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`CBM2016-00075 (PTAB 2016) (same).1
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`In all of these cases, the grounds that were denied institution had been
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`previously considered by the Office and been found wanting on the merits. This case
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`is entirely different. The grounds that the Board denied institution have already been
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`1 The Board has designated other cases on this topic “Informative.” Those other
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`cases are not relevant here because they concern a petitioner filing a second petition
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`with similar grounds to a first petition filed by that same petitioner. In Unified
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`Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-00702, Paper 13 (PTAB July
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`24, 2014), the Board denied IPR based on a meritorious ground, but, unlike this case,
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`that ground had already been seen to completion in the PTAB and was on appeal to
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`the Federal Circuit at the time that the Board denied institution.
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`2
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`found by the Board to be meritorious, and as noted by the Board, form the basis for
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`institution in IPR2017-01374 and IPR2017-01488. This denial therefore raises
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`issues and implicates policies not present when the Board exercises its discretion to
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`deny grounds that were already adjudged not to be meritorious. Specifically, the
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`denial of institution in this case on the specified grounds has the potential to leave
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`claims in force when those claims have already been found likely to be unpatentable.
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`The IPR process is designed to strengthen the patent system by weeding out
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`weak patents and reaffirming the validity of strong patents. Having previously found
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`that at least one claim of the ’213 patent is likely to be found unpatentable under
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`Grounds 1-5, the Board should make sure that it sees these grounds to completion
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`with a fully developed record. Denying institution on Grounds 1-5 in Petitioner’s
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`petition gives rise to the possibility that if the parties to the other IPRs settle, these
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`grounds will not get fully developed; indeed, the Board may never rule on the
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`patentability of the ’213 patent on these grounds. This is particularly problematic
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`with respect to claim 72, which is not challenged on any ground currently instituted
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`in this proceeding and, in the event of settlement of the other IPRs, may be left in
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`force despite having been found likely to be unpatentable based on grounds raised by
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`Petitioner.
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`For Petitioner, and the entire interested public, this presents real world
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`consequences. Any later litigation between Patent Owner and Petitioner that
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`3
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`involves a product that is accused of infringing the ’213 patent will have to analyze
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`both infringement and validity of the ’213 patent. Because of the realities of patent
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`litigation concerning biologic products, which is governed by the Biologic Price
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`Competition and Innovation Act, any litigation that may include the ’213 patent
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`could also include many other patents. See, e.g., Genentech Inc. v. Pfizer, Inc., No.
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`17-165-GMS (D. Del) (BPCIA litigation concerning forty patents). This type of
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`litigation, with multiple patents at issue, is costly to the parties and to the public.
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`The Board here has a chance to simplify future litigation, and can do so consistent
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`with its mandate by instituting Grounds 1-5. (“What the bill does…is very simple.
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`It says the Patent Office will make an administrative determination before the years
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`of litigation as to whether this patent is a legitimate patent so as not to allow the kind
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`of abuse we have seen.” 157 Cong. Rec. S5437 (statement of Sen. Schumer during
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`Senate consideration of H.R. 1249).)
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`The Federal Circuit has recently acknowledged that one party should not be
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`precluded from arguing a meritorious ground simply because another party had
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`previously raised that ground. In Dell v Acceleron, 884 F.3d 1364 (Fed. Cir. March
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`19, 2018), the court considered an appeal from a PTAB decision that was made on
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`remand from an earlier Federal Circuit appeal. In the original final written decision,
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`the Board had considered evidence that the petitioner raised for the first time during
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`the oral hearing, and found the claims unpatentable. The patent owner appealed,
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`4
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`arguing that the Board’s consideration of this evidence violated due process because
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`it did not have an opportunity to respond to the evidence. The Federal Circuit
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`agreed, and remanded the case to the Board. The Board, on remand, refused to
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`consider the evidence at all, and found the claims not unpatentable. In the second
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`appeal, this one by the petitioner, the petitioner argued that “ignoring evidence of
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`unpatentability is against public policy because it will not improve patent quality.”
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`Id. at 1370. In response, the Federal Circuit explained that public policy would be
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`protected because “our decision does not preclude another party from challenging the
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`validity of claim 3 on the same basis.” Id.2
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`III. The Board Should Reconsider Its Reasoning for Denying Institution
`Of Grounds 1-5
`A. Institution of IPR on Grounds 1-5 Will Not Tax the Board’s or Patent
`Owner’s Resources
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`The Board’s basis for denying institution of Grounds 1-5 should be
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`reconsidered. Precisely because Grounds 1-5 have already been instituted, institution
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`in this proceeding will not tax the resources of the Board and Patent Owner. Both
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`2 Specifically, the Federal Circuit concluded in Dell that under the circumstances
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`presented there, due process and preserving the Board’s discretion outweighed any
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`negative effect of not invalidating a patent claim “especially since our decision does
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`not preclude another party from challenging the validity of claim 3 on the same
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`basis.” Dell, 884 F.3d at 1370.
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`5
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`the Board and Patent Owner must carefully scrutinize these grounds regardless of
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`Petitioner’s IPR. Patent Owner, if it chooses, can simply base any filings here on the
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`Patent Owner Response that it filed in the other IPRs.
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`Patent Owner also argued that Petitioner would have an advantage in seeing
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`others’ arguments in the other instituted IPRs on the ’213 patent before addressing
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`the same issues in this IPR. This logic is backward. If IPR is instituted on Grounds
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`1-5, Petitioner will have no advantage—even without the other IPRs, Petitioner will
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`have three months to review Patent Owner’s Response and develop positions for its
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`Petitioner Reply. It is unlikely that any additional time would significantly affect the
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`contents of the Reply. In contrast, Patent Owner would have the benefit of seeing
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`the replies of the petitioners in the other IPRs before it would have to draft its Patent
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`Owner Response in this IPR.3 Patent Owner could use those replies as an aid in
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`drafting its Patent Owner Response for this IPR. Therefore, if the scheduling
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`provides a benefit to any party, it is Patent Owner who benefits, not Petitioner.
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`In any event, it is respectfully submitted that the primary concern in deciding
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`institution should be to ensure that patents that are truly unpatentable do not remain
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`3 The Patent Owner Response in this proceeding is due on June 26, 2018. The
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`petitioner replies in IPR2017-01373, IPR2017-01374, IPR2017-01488, and
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`IPR2017-01489 are due on May 21, 2018.
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`6
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`in force to stifle competition. To do this, the Board should allow all meritorious
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`challenges to proceed to completion.
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`B. The Board’s Decision Improperly Uses the Joinder Rule as Limiting
`Access to IPR
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`Citing 37 C.F.R. § 42.122, the Board commented that “Petitioner could have
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`sought to join the pending IPRs. It did not do so and the time for requesting joinder
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`has expired.” (Decision at 13.) With this statement, it is respectfully submitted that
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`the Board used § 42.122 in an entirely novel way—to limit the availability of IPR.
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`37 C.F.R. § 42.122 reads, in its entirety, as follows:
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`§ 42.122 Multiple proceedings and Joinder.
`(a)Multiple proceedings. Where another matter involving the patent is
`before the Office, the Board may during the pendency of the inter
`partes review enter any appropriate order regarding the additional matter
`including providing for the stay, transfer, consolidation, or termination
`of any such matter.
`joinder. Joinder may be
`(b)Request
`for
`a
`requested by
`patent owner or petitioner. Any request for joinder must be filed, as
`a motion under § 42.22, no later than one month after the institution
`date of any inter partes review for which joinder is requested. The time
`period set forth in § 42.101(b) shall not apply when the petition is
`accompanied by a request for joinder.
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`Based on its terms and its usage history, this rule is intended to help the Board
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`manage multiple proceedings on the same patent, not to prevent multiple
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`proceedings on the same patent. The rule provides a few options for managing the
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`Board’s docket when multiple proceedings before the Board concern the same
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`patent, and allows both petitioners and patent owners to request joinder.
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`7
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`In the past, the Board has interpreted this rule as broadening the right of a
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`party to seek IPR, by allowing parties who would otherwise be barred from
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`petitioning for IPR under 37 C.F.R. § 42.101(b) to join an existing IPR with a
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`different petitioner. See, e.g., AT&T Services, Inc. v. Convergent Media Solutions,
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`LLC, IPR2017-01237, Paper 10 at 23 (PTAB 2017) (joining a petitioner over patent
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`owner’s objections that the petition and motion for joinder were not properly filed
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`because they were beyond the one-year bar date of section 101(b), explaining that
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`“we find the Petition was properly filed under section 315(c), as that section has been
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`interpreted by the Patent Office.”)4; see also Nidec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co., 868 F.3d 1013, 1020 (Fed. Cir. 2017) (“Section 315(b) ordinarily
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`bars a petitioner from proceeding on a petition if it is filed more than one year after
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`the petitioner is sued for patent infringement. Without the exception to that rule
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`described in the second sentence of 315(b), an untimely petition would still be barred
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`even if it raised the same issues as those involved in an existing proceeding that had
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`4 35 U.S.C. § 315(b) reads: “An inter partes review may not be instituted if the
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`petition requesting the proceeding is filed more than 1 year after the date on which
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`the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent. The time limitation set forth in the
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`preceding sentence shall not apply to a request for joinder under subsection (c).”
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`8
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`been timely initiated by a different petitioner.” (internal citations omitted) (Judges
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`Dyk and Wallach, concurring).5
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`The reliance on § 42.122 to allow multiple parties to challenge a single patent
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`is in line with the stated and obvious intent of this rule that joins the sentence
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`regarding the 30 day limit for joinder to the sentence regarding the rule in 37 C.F.R.
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`§ 42.101(b), and mirrors 35 U.S.C. § 315(b) (see note 4), which also relates the time-
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`bar to the thirty day limit on joinder. In other words, the joinder provision was
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`clearly designed to make IPR available for additional parties, not to limit challenges
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`to a patent. Here, however, the Board has used the 30 day deadline for joinder as a
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`reason to deny BI’s petition.
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`The Board’s comment on joinder is also confusing as it suggests that the
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`Board would have considered and instituted the petition had it been fashioned as a
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`me-too petition to one of the other instituted IPRs and been filed with a motion for
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`joinder. The Board here has instituted Ground 6, which was not raised in the
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`instituted IPRs and is not at issue in those IPRs. Because of this additional ground
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`included in Petitioner’s petition, and based on the Board’s jurisprudence regarding
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`motions for joinder, it is unlikely that the Board would have granted a motion by
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`Petitioner to join one of the other instituted IPRs: the Board normally only joins IPR
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`5 Nidec concerned a single petitioner who sought joinder of its second, time-barred
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`petition with its first instituted petition.
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`9
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`proceedings that are based on the same grounds. See, e.g., Sony Corp. v. Network-1
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`Security Solutions, Inc., IPR2013-00386 (PTAB 2013) (denying joinder because the
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`petitioner “raises numerous substantive issues that are not before the Board” in the
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`first case.); see also, Nidec, 868 F.3d at 1020 (“Thus, the exception to the time bar
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`for requests for joinder was plainly designed to apply where time-barred Party A
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`seeks to join an existing IPR timely commenced by Party B when this would not
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`introduce any new patentability issues.”). Therefore, had Petitioner sought to join
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`another pending IPR, it would have had to file two petitions to replace this single
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`petition, one that included only Grounds 1-5, and another that included Ground 6.
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`The Board’s decision therefore suggests that Petitioner should have filed additional
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`petitions to have meritorious grounds instituted.
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`This result is unnecessary. The Board has many tools with which it can
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`manage its docket, and the Board can therefore institute all of Petitioner’s grounds
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`without requiring Petitioner to file additional petitions. For example, the Board may
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`join two IPRs even if the 30 day deadline that applies to a party’s motion for joinder
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`has passed. See 37 C.F.R. § 42.122(a), permitting the Board to consolidate pending
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`proceedings. Therefore, if the Board finds that joinder is appropriate, the Board may
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`institute and join Petitioner as a petitioner in one of the existing IPRs based on
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`grounds 1-5, and allow the instant proceeding to continue with ground 6. This would
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`satisfy all relevant interests. To the extent that the Board’s and Patent Owner’s
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`10
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`resources would be taxed by instituting grounds 1-5 in this proceeding and managing
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`this proceeding separate from the others, joining on these grounds would prevent
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`that. This solution would also ensure that, in the event that the other petitioners
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`settle, the claims that the Board has already found to be likely unpatentable on these
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`grounds will be fully analyzed by an interested party. And, this solution would allow
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`Petitioner’s Ground 6, which is meritorious on its own right, to be fully developed.
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`Of course, this remedy is not exclusive, and the Board is free to fashion its
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`own remedy. Petitioner here simply asks the Board to consider all relevant interests
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`and not to dismiss meritorious Grounds 1-5 on a perceived scheduling difficulty.
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`IV. Conclusion
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`For all of the reasons discussed above, Petitioner Boehringer Ingelheim
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`respectfully requests that the Board reconsider its decision denying institution of
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`Grounds 1-5, and institute those Grounds in this proceeding.
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`Dated: April 12, 2018
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`
`/Ira J. Levy/
`Ira J. Levy
`Reg. No. 35,587
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`T: (212) 813-8800
`Fax: (212) 355-3333
`ILevy@goodwinlaw.com
`
`11
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`
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`Brian A. Fairchild
`(Reg. No. 48,645)
`Goodwin Procter LLP
`100 Northern Avenue
`Boston, MA 02210
`T: (617) 570-1000
`Fax: (617) 523-1231
`bfairchild@goodwinlaw.com
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`Counsel for Petitioner
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`12
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on this
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`12th day of April, 2018, a copy of this PETITIONER’S REQUEST FOR
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`PARTIAL REHEARING OF THE BOARD’S DECISION “INSTITUTION OF
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`INTER PARTES REVIEW” was served by email on the lead and back up counsel
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`for Patent Owners at:
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`David Cavanaugh (David.Cavanaugh@wilmerhale.com)
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`Lauren Blakely (Lauren.Blakely@wilmerhale.com)
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`Adam Brausa (abrausa@durietangri.com)
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`Robert Gunther (Robert.Gunther@wilmerhale.com)
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`Daralyn Durie (ddurie@durietangri.com)
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`Lisa Pirozzolo (Lisa.Pirozzolo@wilmerhale.com)
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`Kevin Prussia (Kevin.Prussia@wilmerhale.com)
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`Andrew Danford (Andrew.Danford@wilmerhale.com)
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`Dated: April 12, 2018 /Ira J. Levy/
`Ira J. Levy
`Reg. No. 35,587
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`T: (212) 813-8800
`Fax: (212) 355-3333
`
`Counsel for Petitioner
`13
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