UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC
`Petitioner,
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`v.
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`COSMO TECHNOLOGIES, LIMITED
`Patent Owner
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`Patent No. 9,320,716
`Issue Date: April 26, 2016
`Title: Controlled Release and Taste Masking
` Oral Pharmaceutical Composition
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`Case No. IPR2018-00080
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`PETITIONER’S MOTION FOR JOINDER
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`37 C.F.R. § 42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC
`Petitioner,
`
`v.
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`COSMO TECHNOLOGIES, LIMITED
`Patent Owner
`
`
`
`
`
`
`Patent No. 9,320,716
`Issue Date: April 26, 2016
`Title: Controlled Release and Taste Masking
` Oral Pharmaceutical Composition
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`
`
`
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`
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`Case No. IPR2018-00080
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`PETITIONER’S MOTION FOR JOINDER
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`37 C.F.R. § 42.122(b)
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`IPR2018-00080
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`Motion for Joinder
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`I.
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`A STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Argentum Pharmaceuticals LLC (“Argentum” or “Petitioner”) submits,
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`concurrently with this motion, a petition for inter partes review (“Petition”) of
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`claims 1-29 of U.S. Patent No. 9,320,716 (“the ’716 patent”) (EX1001), assigned
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`to Cosmo Technologies, Ltd. (“Cosmo”). Argentum respectfully requests joinder
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`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the concurrently filed
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`Petition with a pending inter partes review filed by Mylan Pharmaceuticals, Inc.
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`(“Mylan”), Mylan Pharmaceuticals, Inc. v. Cosmo Technologies, Ltd., IPR2017-
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`01035 (“Mylan IPR”). Joinder is appropriate because it will promote an efficient
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`and consistent resolution of the validity of a single patent and will not prejudice
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`any of the parties to the Mylan IPR. Argentum’s request for joinder is timely
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`because it was filed “no later than one month after the institution date of any inter
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`partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
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`II. BACKGROUND
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`On March 9, 2017, Mylan filed a petition for inter partes review challenging
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`claims 1-29 of the ’716 patent, which was assigned Case No. IPR2017- 01035. On
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`September 21, 2017, the Board instituted review of claims 1-29 on 5 grounds: (1)
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`claims 1-29 as anticipated under 35 U.S.C. § 102 by U.S. Patent No. 5,681,584; (2)
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`claims 1-29 as obvious under 35 U.S.C. § 103 over U.S. Patent No. 5,681,584; (3)
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`claims 1-7, 9, 11-17, 19, and 21-29 as anticipated under 35 U.S.C. § 102 by U.S.
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`IPR2018-00080
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`Patent No. 5,811,388; (4) claims 1-29 as obvious under 35 U.S.C. § 103 over U.S.
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`Motion for Joinder
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`Patent No. 5,811,388; and (5) claims 8, 10, 18 and 20 as obvious under 35 U.S.C.
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`§ 103 over U.S. Patent Nos. 5,681,584 and 5,811,388. IPR2017- 01035, Paper 17.
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`Today, concurrent with the instant motion for joinder, Argentum filed an
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`IPR petition under Case No. IPR2018-00080, asserting the same grounds of
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`unpatentability against the same patent claims as instituted in the Mylan IPR.
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`III. ARGUMENT
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`A. Legal Standard
`The Board has authority to join as a party any person who properly files a
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`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
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`§ 315(c). A motion for joinder must be filed within one month of institution of any
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`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
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`deciding whether to grant a motion for joinder, the Board considers several factors
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`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
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`joined has presented any new grounds of unpatentability; (3) what impact, if any,
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`joinder would have on the trial schedule for the existing review; and (4) how
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`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v.
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`Am.Vehicular Sciences LLC, IPR2014-01543, Paper 11 at 3 (Oct. 24, 2014);
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`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
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`IPR2018-00080
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`(quoting Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (April 24,
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`Motion for Joinder
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`2013)).
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`The Relevant Factors Weigh in Favor of Joinder
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`B.
`Each of the four factors considered by the Board weighs in favor of joinder.
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`Joinder Is Appropriate
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`1.
`Joinder with IPR2017-01035 is appropriate because the Petition is limited to
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`the same grounds instituted in the IPR2017-01035 petition. It also relies on the
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`same prior art analysis and expert testimony submitted by Mylan. Indeed, the
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`Petition raises grounds identical to those raised in the IPR2017-01035 petition, and
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`does not include any new grounds not raised in that petition.
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`In order to further simplify the proceeding, Argentum will rely on the same
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`expert as Mylan, Dr. Palmieri, should Mylan permit it. If Mylan allows Argentum
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`to retain the same expert, then Argentum will withdraw its expert declaration of
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`Dr. Derendorf and rely solely on the declaration and testimony of Dr. Palmieri.
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`The Board has previously acknowledged that such concessions on the part of a
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`party seeking to join are sufficient to minimize the impact on the original
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`proceeding. See SAP America Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13
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`at 4 (May 19, 2014). Further, Dr. Derendorf’s declaration submitted in support of
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`the present Petition presents substantively identical testimony to that of Dr.
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`IPR2018-00080
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`Palmieri, thus streamlining the issues for trial even if Mylan does not permit
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`Motion for Joinder
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`Argentum to rely directly on Dr. Palmieri.
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`Joinder is also appropriate because it will promote the just, speedy, and
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`inexpensive resolution of patentability issues, including the determination of
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`validity of the challenged claims of the ’716 patent. For example, a final written
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`decision on the validity of the ’716 patent has the potential to minimize issues and
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`potentially resolve any litigation altogether with respect to the ’716 patent.
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`No New Grounds Are Presented
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`2.
`The Petition does not present any new ground of unpatentability. As
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`mentioned above, the Petition presents for review only grounds from the petition in
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`the Mylan IPR that have been instituted. The present Petition is based on the same
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`prior art analysis submitted by Mylan, and Dr. Derendorf’s testimony in support of
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`these grounds is substantively identical to that of Dr. Palmieri’s expert testimony in
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`the Mylan IPR, which further weighs in favor of joinder. See, e.g., Hyundai,
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`IPR2014-01543, Paper 11 at 2-4; Sony Corp. of Am. v. Network-1 Sec. Solutions,
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`Inc., IPR2013-00495, Paper 13 at 5-9 (Sep. 16, 2013); Dell Inc. v. Network-1
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`Solutions, Inc., IPR2013- 00385, Paper 17 at 6-10 (Jul. 29, 2013); Motorola
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`Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 4-10 (June 20, 2013).
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`5
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`IPR2018-00080
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`Motion for Joinder
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`3.
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`Joinder Will Not Negatively Impact the IPR2017-01035
`Trial Schedule
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`Because the Petition essentially copies grounds raised in the IPR2017-01035
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`petition, including the prior art analysis and expert testimony provided by Mylan,
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`joinder will have no substantial effect on the parties, or prevent the Board from
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`issuing a final written decision in a timely manner. Moreover, as discussed below,
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`Argentum anticipates participating in the proceeding in a limited capacity as an
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`understudy, absent termination of Mylan as a party. Accordingly, Argentum does
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`not believe that any extension of the trial schedule will be required as a result of
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`joinder.
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`Discovery and Briefing Can Be Simplified
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`4.
`Given that the Petition is substantively identical to the IPR2017-01035
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`petition, the Board may adopt procedures similar to those used in other cases to
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`simplify briefing and discovery during trial. See e.g., Hyundai, IPR2014-01543,
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`Paper 11 at 5; Dell, IPR2013-00385, Paper 17 at 8-10; Motorola, IPR2013-00256,
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`Paper 10 at 8-10. Specifically, as long as Mylan remains a party, the Board may
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`order petitioners to consolidate filings and to limit Argentum to no additional
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`filings in its understudy role. As long as Mylan remains a party, Argentum will not
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`submit any separate filings unless it disagrees with Mylan’s position, and in the
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`event of such disagreement it will submit a short separate filing directed only to
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`points of disagreement with Mylan. The Board may allow the Patent Owner a
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`IPR2018-00080
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`corresponding number of pages to respond to any separate filings. See Dell,
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`Motion for Joinder
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`IPR2013-00385, Paper 17 at 8-9.
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`Further, so long as Mylan agrees to allow Argentum to retain and rely on Dr.
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`Palmieri, no additional depositions will be needed prior to Due Date 1 of the
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`Mylan IPR, and the depositions will be completed within ordinary time limits. As
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`discussed above, if Mylan allows Argentum to retain the same expert, then
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`Argentum will withdraw its expert declaration of Dr. Derendorf and rely, for
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`purposes of the Petition, solely on the declaration and testimony of Mylan’s expert,
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`Dr. Palmieri. The Board has previously acknowledged that such concessions on the
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`part of a party seeking to join sufficiently simplifies the impact of joinder on the
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`original proceeding. SAP America, IPR2014-00306, Paper 13 at 4.
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`IV. CONCLUSION
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`For the foregoing reasons, Argentum respectfully requests that this motion
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`be granted and inter partes review of the challenged claims 1-29 of the ’716 patent
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`be instituted based on the same grounds authorized and for the same reasons
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`discussed in the Institution Decision of IPR2017-01035, and that this proceeding
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`be joined with IPR2017-01035.
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`Dated: October 20, 2017
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`Respectfully submitted,
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`/Michael Houston/
`Michael Houston
`Registration No. 58,486
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`IPR2018-00080
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`Motion for Joinder
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`FOLEY & LARDNER LLP
`321 North Clark Street, Suite 2800
`Chicago, Illinois 60654
`Telephone: 312-832-4500
`Facsimile: 312-832-4700
`mhouston@foley.com
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`Lead Counsel for Petitioner
`Argentum Pharmaceuticals LLC
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`IPR2018-00080
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`Motion for Joinder
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`CERTIFICATE OF SERVICE
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`I, hereby certify that a true copy of the foregoing PETITIONER’S
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`MOTION FOR JOINDER UNDER 37 C.F.R. § 42.122 (B) ET SEQ., was
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`served in its entirety by Federal Express this 20th day of October, 2017, on the
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`Patent Owner at the following correspondence address of record for the subject
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`patent:
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`Jeffrey L. Ihnen
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
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`A courtesy copy of the foregoing was also served via email on the counsel of
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`record for the Petitioner and Patent Owner in Mylan Pharmaceuticals, Inc. v.
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`Cosmo Technologies, Limited, IPR2017-01035 as follows:
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`Petitioner
`Jitendra Malik, Ph.D.
`Reg. No. 55,823
`Alston & Bird LLP
`4721 Emperor Boulevard, Suite 400
`Durham, North Carolina 27703-8580
`jitty.malik@alston.com
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`Patent Owner
`Gary N. Frischling
`Ref. No. 35,515
`Irell & Manella LLP
`1800 Avenue of the Starts, Suite 900
`Los Angeles, California 90067
`gfrischling@irell.com
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`By: /Joseph P. Meara/
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`Counsel for Petitioner
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