Trials@uspto.gov
`571-272-7822
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`
`
`
`
`
`
`Paper 14
`Date: June 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BRISTOL-MYERS SQUIBB COMPANY and PFIZER INC.,
`Patent Owner.
`
`
`
`Case IPR2018-00892
`Patent 9,326,945 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 14
`Date: June 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BRISTOL-MYERS SQUIBB COMPANY and PFIZER INC.,
`Patent Owner.
`
`
`
`Case IPR2018-00892
`Patent 9,326,945 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`I.
`
`IPR2018-00892
`Patent 9,326,945 B2
`
`INTRODUCTION
`Petitioner Mylan Pharmaceuticals Inc. filed a Petition requesting inter
`partes review of claims 1–38 of U.S. Patent No. 9,326,945 B2 (Ex. 1001).
`Paper 2 (“Pet.”). The Petition identifies Mylan Pharmaceuticals Inc., Mylan
`Inc., and Mylan N.V. as the only real parties-in-interest. Pet. 1. The
`relationship between the entities is described in the Petition as follows:
`
`The real parties-in-interest are Mylan Pharmaceuticals
`Inc., the Petitioner in this matter and a wholly owned
`subsidiary of Mylan Inc.; Mylan Inc., which is an indirectly
`wholly owned subsidiary of Mylan N.V.; and Mylan N.V.
`
`Id.
`
`In an email correspondence sent to the Board on June 8, 2018, counsel
`for Patent Owner requested a conference call seeking permission to file a
`motion for additional discovery related to the questions of:
`whether Mylan N.V. is properly listed as a real-party-in-interest; and
`whether at least Mylan Holdings Ltd. and Mylan Holdings Inc. are
`real-parties-in-interest.
`A telephone conference was held among respective counsel for the
`parties and Judges Snedden, Yang, and Sawert on June 11, 2018. During the
`conference call, Patent Owner argued that it was in possession of
`information purporting to show that two other companies, Mylan Holdings
`Ltd. and Mylan Holdings Inc., sit between Mylan Pharmaceuticals Inc.
`and/or Mylan Inc. in the corporate group structure. Patent Owner noted that
`Petitioner named Mylan N.V. as a real-party-in-interest and argued that the
`two identified holding companies must also be real-parties-of-interests as a
`matter of corporate law, unless an agreement was in place between Mylan
`
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`2
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`IPR2018-00892
`Patent 9,326,945 B2
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`N.V. and Mylan Pharmaceuticals Inc. and/or Mylan Inc. that accounts for
`the indirect ownership.
`Petitioner stated that Mylan N.V. exerts no influence or control over
`this proceeding, was only added as a real-party-in-interest out of an
`abundance of caution, and done so specifically in an attempt to avoid
`harassment with discovery requests. Petitioner further noted that Mylan
`Holdings Ltd. and Mylan Holdings Inc. are merely non-operational holding
`companies and have no ability to exert influence or control over this
`proceeding.
`
`II. DISCUSSION
`A. Additional discovery
`Our procedures are designed “to secure the just, speedy, and
`inexpensive resolution of every proceeding” and thus provide for limited
`discovery during inter partes reviews. 37 C.F.R. §§ 42.1(b), 42.51. “The
`test for a party seeking additional discovery in an inter partes review is a
`strict one.” Symantec Corp. v. Finjan, Inc., Case IPR2015-01545, slip op. at
`4 (PTAB Dec. 11, 2015) (Paper 9). Additional discovery may be ordered if
`the party moving for the discovery shows “that such additional discovery is
`in the interests of justice.” 37 C.F.R. § 42.51(b)(2). The Board has identified
`five factors (“the Garmin factors”) important in determining whether
`additional discovery is in the interests of justice. Garmin Int’l, Inc. v.
`Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB
`Mar. 5, 2013) (Paper 26) (informative). These factors are: (1) more than a
`possibility and mere allegation that something useful will be discovered; (2)
`requests that do not seek other party’s litigation positions and the underlying
`basis for those positions; (3) ability to generate equivalent information by
`3
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`IPR2018-00892
`Patent 9,326,945 B2
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`other means; (4) easily understandable instructions; and (5) requests that are
`not overly burdensome to answer. Id.
`B. Real parties-in-interest
`Pursuant to 35 U.S.C. § 312(a)(2), a petition for inter partes review
`“may be considered only if . . . the petition identifies all real parties in
`interest” (emphases added). The identification of all real parties-in-interest
`assists the Board in identifying potential conflicts of interest, helps identify
`any potential estoppel issues with respect to 35 U.S.C. § 315(e)(1), and may
`affect the credibility of evidence presented in a proceeding. See Rules of
`Practice for Trials before the Patent Trial and Appeal Board and Judicial
`Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed.
`Reg. 48,612, 48,617 (Aug. 14, 2012). Identification of all real parties-in-
`interest also enables the Board to determine whether inter partes review may
`be barred under 35 U.S.C. §§ 315(a)(1) or 315(b).
`Whether an entity is a “real party-in-interest” for purposes of an inter
`partes review proceeding is a “highly fact-dependent question” that takes
`into account how courts generally have used the term to “describe
`relationships and considerations sufficient to justify applying conventional
`principles of estoppel and preclusion.” Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”). In
`general, a “real party-in-interest” is “the party that desires review of the
`patent” and “may be the petitioner itself, and/or it may be the party or parties
`at whose behest the petition has been filed.” Id. Depending on the
`circumstances, various factors may be considered, including whether the
`non-party “exercised or could have exercised control over [the petitioner’s]
`participation in a proceeding,” the non-party’s “relationship with the
`
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`IPR2018-00892
`Patent 9,326,945 B2
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`petitioner,” the non-party’s “relationship to the petition itself, including the
`nature and/or degree of involvement in the filing,” and “the nature of the
`entity filing the petition.” Id. at 48,759–60. Another potentially relevant
`factor is whether the non-party is funding or directing the proceeding. Id.
`For example, “a party that funds and directs and controls an IPR . . . petition
`or proceeding constitutes a ‘real party-in-interest,’ even if that party is not a
`‘privy’ of the petitioner.” Id. at 48,760. Complete funding or control is not
`required for a non-party to be considered a real party-in-interest, however;
`the exact degree of funding or control “requires consideration of the
`pertinent facts.” Id.
`C. Analysis
`In determining whether an entity is a real party-in-interest, “[a]
`common consideration is whether the non-party exercised or could have
`exercised control over a party’s participation in a proceeding.” Trial
`Practice Guide at 48,759. Significantly, the first Garmin factor requires that
`“[t]he party requesting discovery should already be in possession of
`evidence tending to show beyond speculation that in fact something useful
`will be discovered.” Garmin Int’l, Inc., Case No. IPR2012-00001, Paper 26,
`slip op. at 7. Thus, to establish that its discovery requests are in the interests
`of justice, Patent Owner must “provide evidence in its possession tending to
`show beyond speculation that a non-party exercised or could have exercised
`control over a party’s participation in a proceeding.” CaptionCall, LLC, v.
`Ultratec, Inc., IPR2015-00636, slip op. at 5 (Feb. 23, 2015) (Paper 42).
`After hearing the respective positions of the parties, the panel
`conferred and concluded that Patent Owner did not demonstrate that it was
`already in possession of some information to show beyond mere speculation
`
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`IPR2018-00892
`Patent 9,326,945 B2
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`that something useful will be uncovered. Patent Owner’s request for
`additional discovery relied solely on its understanding of Petitioner’s
`corporate group structure, however, this information alone is insufficient to
`explain how Mylan Holdings Ltd. and Mylan Holdings Inc. could have any
`influence or control in this specific proceeding. Accordingly, Patent Owner
`failed to demonstrate that it is already in possession of evidence tending to
`show beyond speculation that in fact something useful will be discovered by
`the grant of additional discovery.
`
`III. ORDER
`Accordingly, it is
`ORDERED, that Patent Owner’s request for authorization to file a
`motion for additional discovery is denied.
`
`
`
`
`
`
`
`
`6
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`IPR2018-00892
`Patent 9,326,945 B2
`
`PETITIONER:
`Robert L. Florence
`Karen L. Carroll
`Michael L. Binns
`Sharad K. Bijanki
`PARKER POE ADAMS & BERNSTEIN LLP
`robertflorence@parkerpoe.com
`karencarroll@parkerpoe.com
`michaelbinns@parkerpoe.com
`sharadbijanki@parkerpoe.com
`
`PATENT OWNER:
`Heather Petruzzi
`Timothy Cook
`Kevin Yurkerwich
`Michael Nelson
`WILMER CUTLER PICKERING HALE AND DORR LLP
`heather.petruzzi@wilmerhale.com
`tim.cook@wilmerhale.com
`kevin.yurkerwich@wilmerhale.com
`michael.nelson@wilmerhale.com
`
`
`
`
`7
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