UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner
`
`Inter Partes Review No. IPR2018-00080
`U.S. Patent No. 9,320,716 B2
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S OPPOSITION TO
`MOTION FOR JOINDER
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner
`
`Inter Partes Review No. IPR2018-00080
`U.S. Patent No. 9,320,716 B2
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S OPPOSITION TO
`MOTION FOR JOINDER
`
`
`
`IPR2018-00080
`
`U.S. Patent No. 9,320,716
`
`Petitioner Argentum Pharmaceuticals LLC (“Argentum”) submits this reply
`
`to Owner Cosmo Technologies Ltd. (“Cosmo”). Argentum seeks to step into the
`
`shoes of Mylan Pharmaceuticals Inc. (Mylan), the petitioner in IPR2017-01035.
`
`I.
`
`THE MOTION FOR JOINDER SHOULD BE GRANTED
`
`A.
`
`Previous Decisions Favor Joinder
`
`Cosmo and Mylan moved to terminate IPR2017-01035 nearly a month after
`
`Argentum’s joinder motion was filed. Several decisions involved similar factual
`
`scenarios to those of the present case in which (i) the joinder motion was filed
`
`before a motion to terminate (based on settlement) was filed in the instituted review,
`
`(ii) a petition was filed with a timely joinder motion, (iii) the joinder petition relies
`
`on identical grounds as the instituted petition, and (iv) the expert declarations have
`
`identical, substantive content. Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00314,
`
`Paper 21 (Nov. 16, 2015); Nintendo of America, Inc. v. Babbage Holdings, LLC,
`
`IPR2015-00568, Paper 12 (Mar. 18, 2015); AT&T Services, Inc. v. Convergent
`
`Media Solutions, LLC, IPR2017-01237, Paper 10 (May 10, 2017). Joinder was
`
`granted in each of these cases. Cosmo cites Ubisoft, Inc. v. Uniloc USA, Inc.,
`
`IPR2016-00414, Paper 16 at 5 (June 2, 2016) to urge denial of joinder if IPR2017-
`
`01035 is terminated. However, Ubisoft involved the extenuating circumstance of
`
`joinder being pursued in the petitioner’s third attempt at a review proceeding with
`
`grounds that were previously denied and could have been brought in one of the
`
`1
`
`
`
`IPR2018-00080
`
`U.S. Patent No. 9,320,716
`
`earlier petitions. Id. at 5–6.
`
`B.
`
`Experts Have Submitted Identical Testimony
`
`Cosmo does not dispute the above-listed facts shared with Nintendo, AT&T,
`
`and Qualcomm. Notably, Cosmo does not dispute that Argentum’s expert, Dr.
`
`Derendorf, repeats verbatim the declaration testimony of Mylan’s expert, Dr.
`
`Palmieri, regarding the ’716 patent, with the exception of the discussion of their
`
`backgrounds and qualifications. See Ex. 1006, ¶ 1. Before filing its petition,
`
`Argentum contacted Mylan regarding retention of Dr. Palmieri. Ex. 1063.
`
`Permission was not granted because, as Cosmo now admits (Paper 7 at 2, 4), Cosmo
`
`contractually prohibited Mylan from allowing Dr. Palmieri “to assist Argentum or
`
`any other Petitioner” from challenging the ’716 patent as a condition of its
`
`settlement. Due to Cosmo’s great lengths to “tie up” Dr. Palmieri, Argentum
`
`retained its own expert, Dr. Derendorf. The Board should not permit Cosmo to
`
`thwart joinder (and reap an unjustified 7-month delay of an IPR final written
`
`decision) by using the tactics Cosmo has employed here.
`
`While the lead and joinder petitions in Qualcomm, Nintendo, and AT&T
`
`relied on the same experts, the Board has routinely treated declarations as equivalent
`
`from different declarants with identical substantive content. See GEA Process Eng’g
`
`v. Steuben Foods, IPR2014-00041, Paper 24 (Apr. 23, 2014); Corning Gilbert v.
`
`PPC Broadband, IPR2013-00347, Paper 20 (Jan. 2, 2014). Cosmo does not explain
`
`2
`
`
`
`IPR2018-00080
`
`U.S. Patent No. 9,320,716
`
`how any differences in educational and professional backgrounds of Drs. Derendorf
`
`and Palmieri would have altered any of Cosmo’s arguments in its preliminary
`
`response (“POPR”) in IPR2017-01035. Nowhere in the POPR did Cosmo base any
`
`argument on Dr. Palmieri’s qualifications. Dr. Derendorf’s credentials are arguably
`
`even more distinguished than Dr. Palmieri’s because Dr. Derendorf was a full
`
`Professor and Chairman of the same Department at the University of Florida where
`
`Dr. Palmieri worked in positions below Dr. Derendorf. Cosmo cites to ZTE Corp.
`
`v. Adaptix Inc., IPR2015-01184, Paper 10 (July 24, 2015) to assert prejudice from a
`
`different expert witness but fails to note that joinder was denied partly because the
`
`petitioner’s expert in the instituted review had already been deposed and the patent
`
`owner response had been filed. Id. at 5.
`
`C.
`
`Trial Schedule
`
`Cosmo did not depose Mylan’s expert, Dr. Palmieri, or file a response in
`
`IPR2017-01035. Argentum has already contacted Cosmo to offer Dr. Derendorf for
`
`deposition before Due Date 1 in IPR2017-01035 so that the existing trial schedule in
`
`IPR2017-01035 will not be disrupted. (Ex. 1064).
`
`As in every IPR involving joinder, the schedule may be changed or
`
`maintained depending on the filing of the POPR. If Cosmo takes three months to
`
`file its POPR like the Patent Owner in Qualcomm, then the scheduling order may be
`
`vacated and replaced with adjusted dates as in Qualcomm, IPR2015-00314, Paper
`
`3
`
`
`
`IPR2018-00080
`
`
`
`U.S. Patent No. 9,320,716
`
`22 (Nov. 16, 2015). On the other hand, if Cosmo quickly files a POPR like in
`
`Nintendo (slightly over a month after filing date accorded), or waives the
`
`opportunity to file a POPR as in AT&T, then the original schedule may still govern.
`
`No matter what Cosmo chooses, it is unlikely that Mylan will remain involved in
`
`light of the motion to terminate and thus it is unlikely that Argentum will need to
`
`coordinate with Mylan, thereby avoiding disruption. This same scenario contributed
`
`to joinder being granted in Nintendo. Id. at 5. Cosmos’s reliance on Sierra Wireless
`
`Am., Inc. v. M2M Sols. LLC, IPR2016-00853, Paper 16 (Sept. 20, 2016) is
`
`inapposite due to additional issues, grounds, and prior art impacting the schedule.
`
`The 3-month period for a patent owner to file a POPR is “set by the Director”
`
`(35 U.S.C. § 313) and “may be modified by order” (37 C.F.R. § 42.5(c)(1)). Cosmo
`
`should not need more than an abbreviated period, such as two weeks, to respond to
`
`an identical petition and verbatim copy of an expert declaration. During this time,
`
`the motion to terminate IPR2017-01035 should be held in abeyance or granted only
`
`with respect to Mylan. Congress authorized a settled review proceeding to be
`
`terminated only as to the petitioner under 35 U.S.C. § 317(a), and Congress further
`
`envisioned that joinder “will be allowed as of right—if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical
`
`petition will be joined to that proceeding.” 157 Cong. Rec. S1376 (daily ed. Mar. 8,
`
`2011) (statement of Sen. Kyl) (emphases added).
`
`
`
`
`
`4
`
`
`
`IPR2018-00080
`
`
`
`U.S. Patent No. 9,320,716
`
`D.
`
`Prejudice to Argentum
`
`Joinder is favored for promoting efficient resolution of patentability disputes
`
`without unnecessarily requiring an instituted IPR to be started anew. If joinder is
`
`denied, Cosmo would unjustly benefit from up to a 7-month delay in issuance of a
`
`final written decision as measured from Mylan’s institution on Sept. 21, 2017,
`
`versus the likely institution date on Apr. 30, 2018 without joinder based on
`
`Argentum’s petition. This 7-month period would consume over one-fifth of the
`
`remaining term of the ’716 patent (expiring in June 2020). Cosmo’s argument that
`
`“Argentum has never made any drug products related to the challenged patent”
`
`ignores the reality that, absent a license or final cancellation of the challenged
`
`patent, Argentum may not do so without facing potential infringement liability,
`
`which is the reason Argentum has filed its IPR. Also, Cosmo’s argument that
`
`Argentum could have filed its petition sooner, rather than waiting until after
`
`institution (Paper 7 at 6–7), is a familiar refrain by patent owners who have
`
`unsuccessfully opposed
`
`joinder
`
`in similar settlement situations. See, e.g.,
`
`Qualcomm, Nintendo, and AT&T.
`
`II. CONCLUSION
`
`Petitioner has met its burden in its motion by showing why joinder is
`
`appropriate, consistent with the goal of securing the just, speedy, and inexpensive
`
`resolution of every proceeding.
`
`
`
`
`
`5
`
`
`
`IPR2018-00080
`
`U.S. Patent No. 9,320,716
`
`Respectfully submitted,
`
`Date: Nov. 27, 2017
`
`/Kevin B. Laurence/
`
`Kevin B. Laurence, Registration No. 38,219
`Back-up Counsel for Petitioner
`
`6
`
`
`
`IPR2018-00080
`
`U.S. Patent No. 9,320,716
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on Nov. 27, 2017, a copy of the foregoing
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`
`MOTION FOR JOINDER and all documents filed with it were served via email
`
`upon the following counsel of record for the patent owner, as consented to by said
`
`counsel:
`
`Gary N. Frischling: gfrischling@irell.com
`Yite John Lu: yjlu@irell.com
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`
`Respectfully submitted,
`
`Dated: November 27, 2017
`
`/Kevin B. Laurence/
`
`Kevin B. Laurence, Registration No. 38,219
`Back-up Counsel for Petitioner
`
`
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
