Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper No. 11
`
` Entered: October 11, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01358
`Patent 9,549,938 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, TINA E. HULSE, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
` Paper No. 11
`
` Entered: October 11, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01358
`Patent 9,549,938 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, TINA E. HULSE, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2018-01358
`Patent 9,549,938 B2
`
`
`I. INTRODUCTION
`
`Mylan Pharmaceuticals, Inc. (“Mylan”) filed a Petition requesting an
`
`inter partes review of claims 1–6 of U.S. Patent No. 9,549,938 B2 (Ex.
`
`1001, “the ’938 patent”). Paper 2 (“Pet.”). Along with the Petition, Mylan
`
`filed a Motion for Joinder to join this proceeding with FlatWing
`
`Pharmaceuticals, LLC v. Anacor Pharmaceuticals, Inc., IPR2018-00168.
`
`Paper 3 (“Motion” or “Mot.”). Mylan filed the Petition and Motion on
`
`July 6, 2018, within one month after we instituted trial in IPR2018-00168 on
`
`June 8, 2018. 37 C.F.R. § 42.122(b); see FlatWing, IPR2018-00168,
`
`Paper 9 (PTAB June 8, 2018). Anacor Pharmaceuticals, Inc. (“Patent
`
`Owner”) filed an Opposition to Mylan’s Motion for Joinder1 (Paper 8) and
`
`Mylan filed a Reply (Paper 10). In a subsequent e-mail correspondence to
`
`the Board on September 27, 2018, the parties informed the Board that Patent
`
`Owner “no longer opposes Mylan’s motions for joinder.” Ex. 3001.
`
`As explained further below, we institute trial on the same grounds as
`
`instituted in IPR2018-00168 and grant Mylan’s Motion for Joinder.
`
`II. DISCUSSION
`
`In IPR2018-00168, FlatWing Pharmaceuticals, LLC (“FlatWing”)
`
`challenged claims 1–6 of the ’938 patent on the following grounds:
`
`
`
`1 Patent Owner also filed a motion to request acceptance of its PTAB E2E
`submission due to technical difficulties with filing its Opposition. Paper 9.
`Absent opposition from Mylan, we find good cause exists to grant that
`request for the reasons stated in Patent Owner’s motion. Id. Patent Owner’s
`motion is, therefore, granted.
`
`2
`
`
`
`IPR2018-01358
`Patent 9,549,938 B2
`
`References
`
`Austin2 and Brehove3
`
`Basis
`
`§ 103
`
`Claims challenged
`
`1 and 2
`
`Austin, Brehove, and Samour4 § 103
`
`3–6
`
`Austin and Freeman5
`
`§ 103
`
`1 and 2
`
`Austin, Freeman, and Samour
`
`§ 103
`
`3–6
`
`After considering the Petition (Patent Owner did not file a Preliminary
`
`Response), we instituted trial in IPR2018-00168 on all four grounds.
`
`IPR2018-00168, Paper 9, 15.
`
`Mylan’s Petition is substantively identical to FlatWing’s Petition,
`
`challenging the same claims based on the same art and the same grounds.
`
`Compare IPR2018-00168, Paper 1 with IPR2018-01358, Paper 2. For the
`
`same reasons stated in our Decision on Institution in IPR2018-00168, we
`
`institute trial in this proceeding on the same four grounds. See IPR2018-
`
`00168, Paper 9.
`
`Having determined that institution is appropriate, we now turn to
`
`Mylan’s Motion for Joinder. Based on authority delegated to us by the
`
`Director, we have discretion to join an inter partes review to a previously
`
`instituted inter partes review. 35 U.S.C. § 315(c). Section 315(c) provides,
`
`in relevant part, that “[i]f the Director institutes an inter partes review, the
`
`
`
`2 Austin et al., WO 95/33754, published Dec. 14, 1995 (“Austin,” Ex. 1007).
`3 Brehove, US 2002/0165121 A1, published Nov. 7, 2002 (“Brehove,”
`Ex. 1008).
`4 Samour et al., US 6,224,887 B1, issued May 1, 2001 (“Samour,”
`Ex. 1010).
`5 Freeman et al., WO 03/009689 A1, published Feb. 6, 2003 (“Freeman,”
`Ex. 1009).
`
`3
`
`
`
`IPR2018-01358
`Patent 9,549,938 B2
`
`Director, in his or her discretion, may join as a party to that inter partes
`
`review any person who properly files a petition under section 311.” Id.
`
`When determining whether to grant a motion for joinder we consider factors
`
`such as timing and impact of joinder on the trial schedule, cost, discovery,
`
`and potential simplification of briefing. Kyocera Corp. v. SoftView, LLC,
`
`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`Under the circumstances of this case, we determine that joinder is
`
`appropriate. As Mylan notes, the Petition in this proceeding is substantially
`
`identical to the Mylan Petition with no substantive differences. Mot. 1–2.
`
`Mylan relies on the same expert declarations submitted in IPR2018-00168.
`
`Id. Moreover, Mylan has agreed to assume a “silent understudy” role in the
`
`joined proceedings, as long as FlatWing remains a party to the proceeding
`
`Reply 1–3. Mylan further contends that there will be no impact on the trial
`
`schedule of IPR2018-00168, and that joinder will promote the just, speedy,
`
`and inexpensive resolution of the proceedings without prejudice to the
`
`parties. Mot. 4–8.
`
`In view of the foregoing, we find that joinder based upon the
`
`conditions stated in Mylan’s Motion for Joinder (and its Reply) will have
`
`little or no impact on the timing, cost, or presentation of the trial on the
`
`instituted grounds. Moreover, discovery and briefing will be simplified if
`
`the proceedings are joined. Thus, Mylan’s Motion for Joinder is granted.
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1–6 of the ’938 patent is instituted with respect to all
`
`grounds set forth in the Petition;
`
`4
`
`
`
`IPR2018-01358
`Patent 9,549,938 B2
`
`FURTHER ORDERED that Mylan’s Motion for Joinder with
`
`IPR2018-00168 is granted;
`
`FURTHER ORDERED that IPR2018-01358 is terminated and joined
`
`to IPR2018-00168, pursuant to 37 C.F.R. §§ 42.72 and 42.122, based on the
`
`conditions stated in Mylan’s Motion for Joinder (Papers 3, 10), as discussed
`
`above;
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2018-00168 (Paper 10) shall govern the joined proceedings;
`
`FURTHER ORDERED that all future filings in the joined proceeding
`
`are to be made only in IPR2018-00168;
`
`FURTHER ORDERED that the case caption in IPR2018-00168 for all
`
`further submissions shall be changed to add Mylan as a named Petitioner
`
`with FlatWing, and to indicate by footnote the joinder of IPR2018-01358 to
`
`that proceeding, as indicated in the attached sample case caption; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2018-00168.
`
`
`
`
`
`5
`
`
`
`IPR2018-01358
`Patent 9,549,938 B2
`
`
`PETITIONER:
`
`Steven Parmelee
`sparmelee@wsgr.com
`
`Michael Rosato
`mrosato@wsgr.com
`
`Jad Mills
`jmills@wsgr.com
`
`
`
`PATENT OWNER:
`
`Aaron Maurer
`amaurer@wc.com
`
`David Berl
`dberl@wc.com
`
`Anthony Sheh
`asheh@wc.com
`
`
`
`
`
`6
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper No. 11
`
` Entered: October 11, 2018
`
`
`
`
`
`
`
`
`
`SAMPLE CASE CAPTION
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLATWING PHARMACEUTICALS, LLC and MYLAN
`PHARMACEUTICALS, INC.,
`Petitioners,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-001681
`Patent 9,549,938 B2
`____________
`
`
`
`1 Case IPR2018-01358 has been joined with this proceeding.
`
`
`
`
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