IPR2018-00894
`Patent No. 9,220,698
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`DR. REDDY’S LABORATORIES, INC.,
`Petitioner,
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`v.
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`POZEN INC. and HORIZON PHARMA USA, INC.,
`Patent Owners.
`
`___________
`
`
`Case No. IPR2018-00894
`Patent No. 9,220,698
`______________
`
`
`
`PATENT OWNERS’ OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
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`
`
`
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`
`
`
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`Patent No. 9,220,698
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`DR. REDDY’S LABORATORIES, INC.,
`Petitioner,
`
`
`v.
`
`
`POZEN INC. and HORIZON PHARMA USA, INC.,
`Patent Owners.
`
`___________
`
`
`Case No. IPR2018-00894
`Patent No. 9,220,698
`______________
`
`
`
`PATENT OWNERS’ OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`
`
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`I.
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`IPR2018-00894
`Patent No. 9,220,698
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`STATEMENT OF FACTS
`On April 6, 2018, Petitioner, Dr. Reddy’s Laboratories, Inc. (“DRL”), filed an
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`IPR petition and a motion to join its petition to IPR2017-01995 (“the Mylan IPR”).
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`The Board granted the Mylan IPR on March 8, 2018 and issued a Scheduling Order
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`setting November 15, 2018 as the date for oral argument.
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`II. ARGUMENT
`A. DRL’s Petition is time-barred
`Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted
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`if the petition requesting the proceeding is filed more than 1 year after the date on
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.”
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`Here, DRL was served with a complaint alleging infringement of the ’698
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`patent on August 25, 2016. 7 months after the deadline to file an inter partes review
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`petition, and 19 months since it was served with a complaint, DRL now requests
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`joinder to circumvent the time-bar on its belated petition. While 37 CFR § 42.122
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`allows for a petition that is accompanied by a request for joinder to circumvent the
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`1
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`one-year time bar, DRL unnecessary delayed filing its petition well past the one year
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`IPR2018-00894
`Patent No. 9,220,698
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`bar.1
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`DRL masks its gamesmanship as “promot[ing] efficient and consistent
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`resolution of the invalidity grounds at issue.” On the contrary, allowing parties to
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`file belated petitions accompanied by motions for joinder well after the one-year
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`time bar creates inefficiencies, as the Board and the Patent Owners are held in
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`indefinite limbo as to whether the statute of limitations has tolled on validity
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`challenges.
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`Here, DRL had plenty of time and opportunity to file its own Petition, yet
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`chose to wait until long after it was sued on the ’698 patent. In the related district
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`court action, DRL served invalidity contentions more than one year ago, in February
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`2017. Expert reports have been exchanged, and expert depositions are set to begin.
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`DRL should not be allowed to game the system, waiting until the last possible
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`moment to file a challenge to the patent in this forum. Such behavior runs afoul of
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`the intent and purpose of the inter partes review.
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`B. DRL Should Be Barred From Relying On New Experts
`There are significant differences between DRL’s petition and Mylan’s petition
`
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`1 The Mylan IPR that Petitioner seeks to join is, itself, time barred. See IPR2017-
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`01995, Paper 24.
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`2
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`in that DRL’s petition includes declarations from two new experts, Dr. Meyer Solny
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`IPR2018-00894
`Patent No. 9,220,698
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`and Dr. Richard Bergstrom rather than relying on the experts in the Mylan IPR.
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`These new expert declarations introduce new arguments. This fact alone supports
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`denial of DRL’s motion for joinder. See IPR2016-01332 Paper 21 (“Granting
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`joinder in view of [Petitioner’s] two different declarations and new evidence would
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`add an additional dimension to the substantive issues.”). Although DRL
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`subsequently informed Patent Owner and the Board that “Mylan has agreed to share
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`its experts with DRL,” DRL has made no representation that it would withdraw its
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`own expert declarations or otherwise agree to not rely on the direct testimony of its
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`experts in any way.
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`If the Board grants DRL’s motion for joinder, the expert declarations of
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`DRL’s experts should be expunged from the record and DRL should be precluded
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`from relying on such new evidence.
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`III. CONCLUSION
`For the foregoing reasons, Patent Owners respectfully request that Petitioner’s
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`Motion for Joinder be denied. In the alternative, if the Board finds the Motion for
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`Joinder to be proper, Patent Owners respectfully request the following conditions:
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`1. DRL agrees to rely solely on Mylan’s expert;
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`2. DRL agrees to consolidated briefing subject to the word count limits for a
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`single party except for motions that involve only DRL;
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`3
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`IPR2018-00894
`Patent No. 9,220,698
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`3. DRL agrees that cross-examination of Patent Owner’s witnesses will occur
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`within the timeframe that the rules allot for one party; and
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`4. DRL agrees that Mylan will conduct the oral argument.
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`Dated: May 9, 2018
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`
`Respectfully submitted,
`
`/Thomas A. Blinka/
`Thomas A. Blinka, Ph.D.
`Registration No. 44,541
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, DC 20004
`Counsel for Patent Owner
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`IPR2018-00894
`Patent No. 9,220,698
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`CERTIFICATE OF SERVICE
`I, Thomas A. Blinka, hereby certify that on this 9th day of May 2018, the
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`
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`
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`foregoing PATENT OWNERS’ OPPOSITION TO PETITIONER’S MOTION
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`FOR JOINDER was served via email on the following:
`
`Alan H. Pollack (Reg. No. 39,802)
`BUDD LARNER, P.C.
`150 John F. Kennedy Parkway
`Short Hills, New Jersey 07078
`Tel: (973) 379-4800
`apollack@buddlarner.com
`
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`Dated: May 9, 2018
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`Dmitry V. Shelhoff
`Stuart D. Sender (Reg. No. 34,248)
`Louis H. Weinstein (Reg. No. 45,205)
`BUDD LARNER, P.C.
`150 John F. Kennedy Parkway
`Short Hills, New Jersey 07078
`Tel: (973) 379-4800
`dshelhoff@buddlarner.com
`ssender@buddlarner.com
`lweinstein@buddlarner.com
`
`
`
`/Thomas A. Blinka/
`Thomas A. Blinka
`Registration No. 44,541
`Counsel for Patent Owner
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