IPR2017-02140
`Patent Owner’s Opposition to Motion for Joinder
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`Filed on behalf of Patent Owner Genentech, Inc. by:
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`David L. Cavanaugh (Reg. No. 36,476)
`Owen K. Allen (Reg. No. 71,118)
`Robert J. Gunther, Jr. (Pro Hac Vice to be filed)
`Lisa J. Pirozzolo (Pro Hac Vice to be filed)
`Kevin S. Prussia (Pro Hac Vice to be filed)
`Andrew J. Danford (Pro Hac Vice to be filed)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`Adam R. Brausa (Reg. No.
`60,287)
`Daralyn J. Durie (Pro Hac
`Vice to be filed)
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`SAMSUNG BIOEPIS CO., LTD,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`
`Case IPR2017-02140
`Patent 6,407,213
`____________________________________________
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Filed on behalf of Patent Owner Genentech, Inc. by:
`
`David L. Cavanaugh (Reg. No. 36,476)
`Owen K. Allen (Reg. No. 71,118)
`Robert J. Gunther, Jr. (Pro Hac Vice to be filed)
`Lisa J. Pirozzolo (Pro Hac Vice to be filed)
`Kevin S. Prussia (Pro Hac Vice to be filed)
`Andrew J. Danford (Pro Hac Vice to be filed)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`Adam R. Brausa (Reg. No.
`60,287)
`Daralyn J. Durie (Pro Hac
`Vice to be filed)
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`SAMSUNG BIOEPIS CO., LTD,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`
`Case IPR2017-02140
`Patent 6,407,213
`____________________________________________
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`
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` IPR2017-02140
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`Patent Owner’s Opposition to Motion for Joinder
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`Patent Owner Genentech Inc. (“Genentech”) submits this Opposition to
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`Petitioner Samsung Bioepis Co., Ltd.’s (“Bioepis’s”) Motion for Joinder with
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`IPR2017-01489 (“Motion for Joinder”) (Paper 3).
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`Bioepis seeks to join this inter partes review with IPR2017-01489, filed by
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`Pfizer, Inc. (“Pfizer”), and for which the Board has not yet issued an institution
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`decision (the “Pfizer IPR”). Bioepis asserts that joinder will not impact trial or
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`otherwise prejudice Genentech because its petition is “essentially a copy” of the
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`one filed by Pfizer and that Bioepis is willing to take a “limited capacity” role
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`where it “will not submit any separate filings unless it strongly disagrees with a
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`position adopted by Pfizer” (IPR2017-02140, Paper 3 at 6 (Sept. 29, 2017)), “will
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`try to coordinate with Pfizer . . . to consolidate and minimize additional filings,
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`manage questions at depositions, and avoid redundancies” (id. at 7), and
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`“anticipates participating only in a secondary role.” (Id.)
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`Bioepis has filed this same Motion for Joinder in four other proceedings, in
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`which Bioepis likewise admits that its petition is “essentially a copy” of a petition
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`filed by a third party. (See Samsung Bioepis Co., Ltd., v. Genentech, Inc.,
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`IPR2017-01958, Paper 1 at 1 (Aug. 25, 2017); Samsung Bioepis Co., Ltd. v.
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`Genentech, Inc., IPR2017-01959, Paper 1 at 1 (Aug. 25, 2017); Samsung Bioepis
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`Co., Ltd. v. Genentech, Inc., IPR2017-01960, Paper 1 at 1 (Aug. 25, 2017);
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`Samsung Bioepis Co., Ltd. v. Genentech, Inc., IPR2017-02139, Paper 3 at 1 (Sept.
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` IPR2017-02140
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`Patent Owner’s Opposition to Motion for Joinder
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`29, 2017).) When Bioepis filed this same Motion for Joinder in its first three
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`proceedings (IPR2017-01958; IPR2017-01959; IPR2017-01960), Genentech
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`opposed because Bioepis’s assertions that it would try to coordinate and work with
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`the original petitioner provided no real assurance that joinder would in fact create
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`no additional burden for the Board, the original petitioner, or Genentech.
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`(IPR2017-01958, Paper 7; IPR2017-01959, Paper 7; IPR2017-01960, Paper 7.)
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`However, recognizing that joinder could promote economy and efficiency,
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`Genentech proposed certain conditions to ensure that Bioepis maintained its
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`“understudy” role unless and until the original petitioner entered into a settlement
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`with Genentech. (Id.)
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`In IPR2017-01960, the Board granted joinder without any conditions,
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`reasoning that those proposed by Genentech may discourage petitioners from
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`seeking joinder and may otherwise “be at odds with [the Board’s] discretion to
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`managing this case.” (IPR2017-01960, Paper 8 at 5-6.) Certainly, Genentech does
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`not mean to suggest limitations on the Board’s management of this or any
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`proceeding. But Genentech does believe that some conditions are appropriate to
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`ensure that Bioepis maintains its “understudy” role.
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`Indeed, even Bioepis invited the Board to enter conditions to Bioepis’s
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`joinder, noting that “[t]he Board may simplify discovery and briefing procedures
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`via procedures it has used in the past.” (IPR2017-02140, Paper 3 at 6.) Beyond
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` IPR2017-02140
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`Patent Owner’s Opposition to Motion for Joinder
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`the proceedings cited by Bioepis (see id.), numerous examples exist where the
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`Board has exercised its discretion to impose conditions on joinder. For example, in
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`Argentum Pharm. LLC v. West-ward Pharm. Int’l, Ltd., IPR 2017-01063, Paper 11
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`(PTAB Sept. 25, 2017) the Board found that adopting certain proposed
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`requirements of the patent owner was “appropriate and in keeping with procedures
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`followed by the Board in other cases of joinder where the joining parties filed
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`identical Petitions with identical evidence.” (Id. at 7.) These conditions included
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`that (1) “any paper, except for a motion that does not involve the other Petitioners,
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`shall be filed by the [original petitioner] as a single, consolidated filing on behalf
`
`of [all petitioners] pursuant to the page limits set forth in 37 C.F.R. § 42.24;” (2)
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`counsel for the original petitioner “will conduct cross-examination and other
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`discovery on behalf of [the joining petitioner], and [the patent owner] is not
`
`required to provide separate discovery responses or additional deposition time as a
`
`result of the joinder;” and (3) the petitioners “will designate attorneys to present at
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`the oral hearing (if requested and granted) as a consolidated presentation.” (Id. at
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`7-8; see also, e.g., Torrent Pharm Ltd. v. UCB Pharma GMBH, IPR2016-01636,
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`Paper 10 at 7-8 (PTAB Dec. 7, 2016) (requiring that (1) all filings by the joining
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`party be consolidated with the original petitioner “unless the filing involves an
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`issue unique to [the joining party] or states a point of disagreement related to the
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`consolidated filing,” and the party receives authorization from the Board; (2) “the
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` IPR2017-02140
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`Patent Owner’s Opposition to Motion for Joinder
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`page limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated filings”;
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`and (3) the joining party “is bound by any discovery agreements, including
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`deposition arrangements between the Patent Owner and [original party], and shall
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`not seek any discovery beyond that sought by the [original petitioner]”); SL Corp.
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`v. Adaptive Headlamp Techs., Inc., IPR2016-01368, Paper 9 at 9 (PTAB Nov. 16,
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`2016) (adopting conditions proposed in motion by petitioner that it shall not
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`“actively participate,” “file additional written submissions,” “pose questions at
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`depositions,” or “argue at oral hearing” absent prior leave from the Board).
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`Genentech believes that similar conditions in this proceeding will ensure that
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`it runs efficiently, that any prejudice to Genentech is minimized, and that
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`misunderstandings regarding Bioepis’s role are kept to a minimum. Accordingly,
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`if the Board grants joinder, Genentech respectfully requests that the Board impose
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`the following conditions:
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`1.
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`For so long as the Pfizer IPR remains pending following joinder,
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`Bioepis agrees to incorporate its filings with those of Hospira into a consolidated
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`filing in the Pfizer IPR, including being subject to the ordinary rules for one-party
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`page limits, unless Bioepis receives prior authorization from the Board. See
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`Argentum Pharm. LLC, IPR 2017-01063, Paper 11 at 7-8 (imposing same
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`condition on joining party); Torrent Pharm., IPR2016-01636, Paper 10 at 7-8
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`(same); see also IPR2017-02140, Paper 3 at 6 (acknowledging that “the Board may
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` IPR2017-02140
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`Patent Owner’s Opposition to Motion for Joinder
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`order petitioners to consolidate filings, and limit Bioepis to no additional filings in
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`its understudy role”).
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`2.
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`Pfizer will conduct cross-examination and other discovery on behalf
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`of Bioepis, and Genentech is not required to provide separate discovery responses
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`or additional deposition time as a result of the joinder. See Argentum Pharm. LLC,
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`IPR 2017-01063, Paper 11 at 7-8 (imposing condition that counsel for the original
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`petitioner “will conduct cross-examination and other discovery on behalf of [the
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`joining petitioner], and [the patent owner] is not required to provide separate
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`discovery responses or additional deposition time as a result of the joinder”).
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`3.
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`Bioepis is bound by all discovery agreements, including deposition
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`arrangements between the Genentech and Pfizer, and shall not seek any discovery
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`beyond that sought by Pfizer. Torrent Pharm., IPR2016-01636, Paper 10 at 7-8
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`(imposing condition that the joining party “is bound by any discovery agreements,
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`including deposition arrangements between the Patent Owner and [original party],
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`and shall not seek any discovery beyond that sought by the [original petitioner]”)
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`4.
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`Bioepis agrees to rely solely on the testimony of Pfizer experts and
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`that no additional discovery is permitted by Bioepis so long as the Pfizer IPR
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`remains pending following joinder. (IPR2017-02140, Paper 3, at 6-7 (“Bioepis
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`will not rely on expert testimony beyond that submitted by Pfizer, unless Pfizer is
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`terminated from the case prior to any necessary expert deposition.”).)
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` IPR2017-02140
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`Patent Owner’s Opposition to Motion for Joinder
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`In sum, should the Board grant Bioepis’s Motion for Joinder, Genentech
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`respectfully requests that the Board enter the above conditions.
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`Date: October 27, 2017
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`Respectfully submitted,
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`
`
`
`
`
`/David L. Cavanaugh/
`David L. Cavanaugh
`Registration No. 36,476
`Counsel for Patent Owner
`
`
`
`WILMER CUTLER PICKERING HALE AND DORR LLP
`1875 PENNSYLVANIA AVENUE NW
`WASHINGTON, DC 20006
`TEL: 202-663-6000
`FAX: 202-663-6363
`EMAIL: david.cavanaugh@wilmerhale.com
`
`
`
`6
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`IPR2017-02140
`Patent Owner’s Opposition to Motion for Joinder
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on October 27, 2017, I caused a true and correct copy
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`of the following materials:
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` Patent Owner’s Opposition to Motion for Joinder
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`to be served via electronic mail on the following attorneys of record:
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`Dimitrios T. Drivas
`White & Case LLP
`ddrivas@whitecase.com
`1221 Avenue of the Americas, New York, NY 10020
`
`Scott T. Weingaertner
`White & Case LLP
`scott.weingaertner@whitecase.com
`1221 Avenue of the Americas, New York, NY 10020
`
`/Rebecca A. Whitfield/
`Rebecca A. Whitfield
`Reg. No. 73,756
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`(617) 526-5566
`
`7
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