`Patent No. 9,220,698
`Paper No. 9
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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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
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`_____________________
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`Inter Partes Review IPR2018-00894
`Patent No. 9,220,698 B2
`_____________________
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`PETITIONER’S REPLY TO PATENT OWNERS’ OPPOSITION TO
`MOTION FOR JOINDER WITH IPR2017-01995
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.23 Petitioner Dr. Reddy’s
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`Laboratories, Inc. (“DRL” or “Petitioner”) submits this Reply to Patent Owners
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`Pozen, Inc.’s and Horizon Pharma USA Inc.’s (“Patent Owners”) Opposition to
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`Petitioner’s Motion for Joinder with pending IPR2017-01995 (the “Mylan IPR”)
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`regarding U.S. Patent No. 9,220,698 (the ’698 patent”) (Paper 8). Mylan
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`Pharmaceuticals Inc. (“Mylan”) is the Petitioner in IPR2017-01995.
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`On April 30, 2018 Petitioner informed the Board and all parties to IPR2018-
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`00894 and IPR2017-01995 by email that:
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`Mylan has agreed to share its experts with DRL and that Mylan
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`consents to joinder of IPR2018-00894 with instituted IPR2017-01995
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`(where Mylan is the Petitioner). As already set forth in DRL’s Motion
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`for Joinder in IPR2018-00894, DRL agrees to take a “backseat”
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`position to Mylan if the Motion for Joinder is granted, and to let Mylan
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`take the lead.
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`DRL’s Joinder Motion had already set forth that DRL would not rely on the
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`declarations of its own experts if Mylan agreed to share its experts with DRL.
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`In order to simplify the proceeding further, Petitioner will rely on the
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`same experts as Mylan, should Mylan permit Petitioner to do so. If
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`Mylan allows Petitioner to retain the same experts, Petitioner will
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`withdraw its expert declarations of Drs. Solny and Bergstrom and rely
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`solely on the declarations and testimony of Mylan’s experts, Drs. Metz
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`and Mayersohn.
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`Joinder Motion (Paper 3, at 7) (emphasis added). Though Patent Owners assert that
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`“DRL has made no representation that it would withdraw its own expert declarations
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`or otherwise agree to not rely on the direct testimony of its own experts in any way,”
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`(Paper 8, at 3), DRL’s statement block quoted immediately above is exactly that.
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`Nevertheless, DRL reiterates that based on Mylan’s agreement to share its experts
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`(Drs. Metz and Mayersohn) with DRL, DRL withdraws the declarations of its own
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`experts (Drs. Solny and Bergstrom) and will not rely on them.
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`Patent Owners raise further questions that Petitioner has already answered.
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`DRL has already agreed to the “conditions” set forth set forth in the Conclusion of
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`Patent Owners’ Opposition. See Joinder Motion, Paper 3, at 6-7, n.2-3.
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`Contrary to Patent Owners’ assertion, Petitioner’s Joinder Motion and Petition
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`are timely1 under 37 C.F.R. §§ 42.22 and 42.122(b) because Petitioner submitted
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`1 Indeed, it is Patent Owners’ Opposition that is tardy. Patent Owners filed and
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`served their Opposition to Petitioner’s Joinder Motion on May 9, 2018 – thirty-three
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`(33) days after the April 6, 2018 filing and service of Petitioner’s Joinder Motion.
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`This is not within the requisite one month time period set forth in 37 C.F.R. §
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`42.25(a)(1).
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`both within one month of the March 8, 2018 date of institution of the Mylan IPR.
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`Notwithstanding their assertion to the contrary in n.1 of their Opposition, Patent
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`Owners may not refight the timeliness of the Mylan IPR here.
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`For all the foregoing reasons, Petitioner respectfully requests that the Board
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`institute IPR2018-00894 on the same grounds as in the Mylan IPR, and that this
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`proceeding be joined with the Mylan IPR.
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`Date: May 11, 2018
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`Respectfully submitted,
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`/ Alan H. Pollack /
`Alan H. Pollack (Reg. No. 39,802)
`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, NJ 07078
`apollack@buddlarner.com
`ssender@buddlarner.com
`lweinstein@buddlarner.com
`Telephone: (973) 379-4800
`Facsimile: (973) 379-7734
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, I certify that on this eleventh day
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`of May, 2018, the foregoing REPLY TO PATENT OWNERS’ OPPOSITION
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`TO MOTION FOR JOINDER WITH IPR2017-01995 was served via electronic
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`mail to Lead and Backup Counsel in this IPR and Lead and Backup Counsel for
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`Petitioner in IPR2017-01995 at the following E-mail addresses:
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`BMWhite@perkinscoie.com
`ANero@perkinscoie.com
`RSwanson@perkinscoie.com
`BBeel@perkinscoie.com
`stephen.hash@bakerbotts.com
`escordino@cooley.com
`tblinka@cooley.com
`jgraves@cooley.com
`msampson@bakerbotts.com
`jgritton@bakerbotts.com
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`Dated:
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`May 11, 2018
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` By: /s/ Alan H. Pollack
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` Alan H. Pollack
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` Reg. No. 39,802
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`4
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