`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`___________________
`
`Case IPR2018-00080
`U.S. Patent No. 9,320,716
`___________________
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO ARGENTUM
`PHARMACEUTICALS LLC’S MOTION FOR JOINDER
`
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`10028290
`
`
`- 1 -
`
`
`
`
`
`IPR2018-00080
`Patent No. 9,320,716
`
`Patent Owner Cosmo Technologies Limited (“Cosmo”) submits this
`
`opposition to Argentum Pharmaceuticals LLC’s (“Argentum”) motion for joinder of
`
`IPR2018-00080 (the “Argentum IPR”) with IPR2017-01035 (the “Mylan IPR”).
`
`In the Mylan IPR, Petitioner Mylan Pharmaceuticals Inc. (“Mylan”) and Patent
`
`Owner have settled their dispute and filed a joint motion for termination. See IPR2017-
`
`01035, Paper 23. Pursuant to the settlement, Mylan has agreed that neither it nor its
`
`expert, Dr. Anthony Palmieri, will participate in an IPR proceeding challenging the
`
`patent at issue. Id. at 4 (“Petitioner represents that it will no longer participate in this
`
`inter partes review and will file no further papers. Petitioner has also agreed not to
`
`permit its expert witness, Dr. Anthony Palmieri, to assist Argentum or any other
`
`Petitioner in an IPR proceeding challenging the patent at issue.”).
`
`For reasons discussed in the joint motion for termination, the Board should
`
`terminate the Mylan IPR. Termination saves the parties litigation costs and the Board
`
`administrative resources thereby furthering the AIA’s purpose of providing an efficient
`
`and less costly alternative forum for adjudicating patent disputes and encouraging
`
`settlement. If the Mylan IPR is terminated, then Argentum’s joinder request should be
`
`denied as moot. See Ubisoft, Inc. v. Uniloc USA, Inc., IPR2016-00414, Paper 16 at 5
`
`(June 2, 2016) (“Because [the first IPR] is no longer pending, it cannot serve as a
`
`proceeding to which another proceeding may be joined. We, therefore, must deny
`
`Petitioner’s Motion for Joinder.”).
`
`10028290
`
`
`- 2 -
`
`
`
`
`
`IPR2018-00080
`Patent No. 9,320,716
`
`There is no prejudice to Argentum if joinder is denied. Patent Owner has never
`
`brought a patent infringement lawsuit against Argentum and is unlikely to do so
`
`because Argentum has never made any drug products related to the challenged patent.
`
`See Ex. 2001. Argentum is not subject to any statutory bar under 35 U.S.C. § 315(b),
`
`and joinder is unnecessary for the Board to evaluate fully Argentum’s new petition and
`
`supporting evidence.
`
`Joinder should also be denied because, in the event the Mylan IPR has not yet
`
`been terminated, joinder would prejudicially complicate the schedule in the Mylan IPR,
`
`and in fact, cannot work under the current schedule. An institution decision on
`
`Argentum’s IPR petition will not be issued until after January 31, 2018—the deadline
`
`for Patent Owner to file a preliminary response, see 35 U.S.C. § 314(b) (institution
`
`decision is “after” a preliminary response or the last date on which such response may
`
`be filed), 37 C.F.R. § 42.107(b) (“The preliminary response must be filed no later than
`
`three months after the date of a notice….”)—and will most likely be issued
`
`approximately three months later in late April 2018. In contrast, Patent Owner’s
`
`Response in the Mylan IPR is due several months before then, on December 20, 2017,
`
`and oral argument is scheduled for June 15, 2018. See IPR2017-01035, Paper 18 at 7
`
`(Due Dates 1 and 7 in Scheduling Order). Joining the Argentum IPR would prejudice
`
`Patent Owner by injecting critical new evidence, e.g., unpatentability testimony from a
`
`different expert witness, late in the Mylan IPR proceeding without giving Patent Owner
`
`an adequate opportunity to respond. See ZTE Corp. v. Adaptix Inc., IPR2015-01184,
`
`10028290
`
`
`- 3 -
`
`
`
`
`
`IPR2018-00080
`Patent No. 9,320,716
`
`Paper 10 at 5 (July 24, 2015) (denying joinder because a different expert declarant
`
`raises “new issues…[that] would adversely impact the IPR [] trial”).
`
`Argentum’s motion for joinder states that if Mylan’s expert will not participate
`
`in the IPR, then Argentum’s expert, Dr. Hartmut Derendorf, and his accompanying
`
`declaration must be substituted in. See Paper 3 at 7. And as discussed above, Mylan
`
`has agreed in the settlement agreement that its expert will not assist Argentum or
`
`participate in the IPR. Joinder would, therefore, introduce a different expert witness in
`
`the Mylan IPR. While Argentum’s expert makes statements in his declaration similar
`
`to those made by Mylan’s expert, there are notable differences, including his
`
`educational background (Ex. 1006 ¶ 8), his academic work experience (id. ¶¶ 9, 11), his
`
`research interests (id. ¶ 10), his consulting work for industry (id. ¶¶ 12-13), and his
`
`membership in professional organizations and journals (id. ¶ 15, 17). Importantly,
`
`Dr. Derendorf’s prior statements and publications (more than 460 scientific
`
`publications and over 880 presentations in total) concerning targeted-drug-release
`
`pharmaceutical formulations will be critical to the issues in dispute (id. ¶ 16, Ex. 1007).
`
`Argentum’s expert will also inevitably provide new evidence when giving testimony in
`
`deposition. Introducing this new evidence via joinder and substituting in Argentum’s
`
`expert as the primary unpatentability expert would simply not be feasible under the
`
`Mylan IPR schedule. Indeed, because an institution decision in the Argentum IPR will
`
`not be issued until after January 31, 2018, Patent Owner is in the situation of filing its
`
`Patent Owner Response in the Mylan IPR (assuming it has not yet been terminated),
`
`10028290
`
`
`- 4 -
`
`
`
`
`
`IPR2018-00080
`Patent No. 9,320,716
`
`due on December 20, 2017, even before deposing Argentum’s expert. Such an
`
`outcome would unfairly prejudice Patent Owner.
`
`Argentum’s joinder motion remarkably does not propose any modification to the
`
`schedule in the event that Mylan and its expert do not participate in the IPR (which has
`
`turned out to be the situation here), and, therefore, Argentum has failed to meet its
`
`burden of proof in establishing that joinder is appropriate under 37 C.F.R. § 42.20(d).
`
`See Sierra Wireless Am., Inc. v. M2M Sols. LLC, IPR2016-00853, Paper 16 (Sept. 20,
`
`2016) (denying joinder because “Petitioner does not explain specific modifications to
`
`the schedule that would be necessary to account for the additional issues, grounds, and
`
`prior art raised in the Petition”). Argentum should not be allowed to propose any
`
`schedule modifications in its reply brief as that would be improper new argument. See
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir.
`
`2016) (affirming the Board’s decision to reject a reply brief that was “presenting a new
`
`argument for the first time”), citing 37 C.F.R. § 42.23(b) (“All arguments for the relief
`
`requested in a motion must be made in the motion.”).
`
`If trial is instituted in the Argentum IPR, then it should proceed on its own
`
`schedule. A separate trial for the Argentum IPR, if instituted, would not require
`
`additional Board resources because the Mylan IPR should be terminated. Therefore,
`
`even if joinder is denied, only one IPR proceeding on the patent at issue will remain.
`
`It will not prejudice Argentum for this Board to consider Argentum’s new IPR
`
`petition and supporting evidence on its own schedule. Argentum will be afforded full
`
`10028290
`
`
`- 5 -
`
`
`
`
`
`IPR2018-00080
`Patent No. 9,320,716
`
`consideration of the arguments and evidence cited by its Petition, and the same
`
`patentability standards will apply.1 Argentum chose when to file its IPR petition and
`
`cannot now argue that its own decision has caused prejudice because the final decision
`
`will be issued later than it wanted because of non-joinder. Joinder to an earlier
`
`proceeding is discretionary, not a matter of right. See ZTE Corp., IPR2015-01184,
`
`Paper 10 at 5 (“The decision to grant joinder is discretionary, with Petitioner, as the
`
`moving party, bearing the burden to show that joinder is appropriate.”), citing 35
`
`U.S.C. § 315(c). Argentum knew that by waiting until late October 2017 to file its IPR
`
`petition, the soonest an institution decision could be rendered was late January 2018—
`
`after Patent Owner’s Response in the Mylan IPR would have been filed. It knew that
`
`unless Mylan desired to proceed as the primary petitioner, joinder would have been
`
`impossible under the Mylan IPR schedule.
`
`
`1 If instituted, Argentum’s IPR proceeding will still conclude with a final
`
`decision prior to expiration of the patent at issue (June 9, 2020), and therefore the
`
`claim construction standard remains the “broadest reasonable interpretation”
`
`standard. See In re CSB-Sys. Int'l, Inc., 832 F.3d 1335, 1340 (Fed. Cir. 2016)
`
`(“During reexamination proceedings of unexpired patents, however, the Board uses
`
`the ‘broadest reasonable interpretation consistent with the specification’ standard, or
`
`BRI.”). Argentum has not argued otherwise or raised concerns about claim
`
`construction.
`
`10028290
`
`
`- 6 -
`
`
`
`
`
`IPR2018-00080
`Patent No. 9,320,716
`
`There is no prejudice to Argentum if joinder is denied because its Petition,
`
`including its new testimony evidence, will be fully considered by the Board in the
`
`ordinary course. If Argentum had wanted a final written decision sooner, then it should
`
`have filed an IPR petition sooner. Petitioner Argentum’s motion for joinder should be
`
`denied.
`
`Dated: November 20, 2017
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`/s/ Gary N. Frischling
`Gary N. Frischling
`Reg. No. 35,515
`
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
`
`Attorney for Patent Owner
`
`10028290
`
`
`- 7 -
`
`
`
`
`
`IPR2018-00080
`Patent No. 9,320,716
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. 42.6, the undersigned certifies that on November 20,
`
`2017, a copy of the foregoing document was served by electronic mail upon the
`
`following:
`
`Tyler C. Liu
`Reg. No. 72,126
`Argentum Pharmaceuticals LLC
`202-749-8605
`TLiu@agpharm.com
`
`Michael Houston
`Reg. No. 58,486
`FOLEY & LARDNER LLP
`321 North Clark Street, Suite 2800
`Chicago, Illinois 60654
`312-832-4500
`mhouston@foley.com
`
`Joseph P. Meara
`Reg. No. 44,932
`James McParland, Ph.D.
`Reg. 69,440
`FOLEY & LARDNER LLP
`150 East Gilman St.
`Madison, WI 53703-1482
`608-258-4303
`jmeara@foley.com
`
`Kevin Laurence
`Reg. No. 38,219
`LAURENCE & PHILLIPS IP
`LAW LLP
`klaurence@lpiplaw.com;
`
`
`
`
`
`10028290
`
`
`- 8 -
`
`
`
`
`
`IPR2018-00080
`Patent No. 9,320,716
`
`Matthew Phillips
`Reg. No. 43,403
`LAURENCE & PHILLIPS IP
`LAW LLP
`mphillips@lpiplaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Susan Langworthy
`
`
`
`
`
`10028290
`
`
`- 9 -
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
