From:
`Sent:
`To:
`Cc:
`
`Subject:
`Attachments:
`
`To the Honorable Board,
`
`McCurdy, Barbara <barbara.mccurdy@finnegan.com>
`Thursday, September 26, 2019 10:55 PM
`Precedential_Opinion_Panel_Request
`christopher.ferenc@kattenlaw.com; brian.sodikoff@kattenlaw.com; greb-
`ptab@perkinscoie.com; white-ptab@perkinscoie.com; DAnstaett@perkinscoie.com;
`CProchnow@perkinscoie.com; Mstubbings@perkinscoie.com;
`SBloodworth@perkinscoie.com; MChajon@perkinscoie.com; Greb, Emily J. (Perkins
`Coie) (EGreb@perkinscoie.com); Feldstein, Mark; Sommers, Erin; Holt, Cora; DeRoo, Pier
`IPR2019-00789 (IPR2018-01403): Request for Precedential Opinion Panel Review
`2019.09.26 Patent Owner's Rehearing Request on Institution and Joinder o....pdf
`
`Based on my professional judgment, I believe this case requires an answer to three precedent-setting questions
`of exceptional importance:
`
`1. Whether joinder of a second petitioner under 35 U.S.C. § 315(c) is improper where patent owner
`is precluded from responding to the joined petitioner’s petition, introduce responsive evidence of
`its own, and challenge the joined petitioner’s new evidence.
`
`2. Whether joinder under 35 U.S.C. § 315(c) of an otherwise § 315(b) time-barred petitioner is
`improper where the joined petitioner provides no justification for the late filing of its petition,
`identifies no special circumstances warranting exercise of discretion, and/or relies upon new
`witnesses, new declarations, or otherwise raises new issues.
`
`3. Whether institution is improper when the petitioner fails to identify in the petition all RPIs at the
`time of filing pursuant to 35 U.S.C. § 312(a)(2) and/or when patent owner has brought into
`question the accuracy of petitioner’s initial RPI identification, but the petitioner fails to adduce
`any competent evidence in support of petitioner’s burden to prove compliance with 35 U.S.C. §
`312(a)(2), or the Board fails to rely on any such evidence.
`
`The “Director has an interest in creating binding norms for fair and efficient Board proceedings, and for
`establishing consistency across decision makers.” Patent Trial and Appeal Board (“PTAB”) Standard Operating
`Procedure 2 (Rev. 10) (“SOP2”), 2. To that end, Precedential Opinion Panel (“POP”) review “may be used to . .
`. to promote certainty and consistency” or “to rehear any case it determines warrants the Panel’s attention.”
`SOP2, 4.
`
`I.
`
`POP Review is Needed
`
`The Board’s Institution Decision (Paper 17, “Dec.”) misapprehended, overlooked, and improperly decided the
`issue of joinder for otherwise time-barred Sawai. Contrary to the Decision’s findings (Dec., 10-11, 19-21),
`Sawai’s Petition was not a true “copycat” petition because it relied upon new declarants. See Dec., 5. The
`Decision is inconsistent with other panels and a POP decision establishing that joinder is inappropriate where,
`as here, different experts are relied on and no justification exists for the late filing of the petition. See, e.g.,
`Proppant Express Investments, LLC v Oren Technologies, LLC, IPR2018-00914, Paper 38 at 19 (PTAB Mar.
`13, 2019) (precedential); ZTE Corp. v. Adaptix, Inc., IPR2015-01184, Paper 10 at 5 (PTAB July 24, 2015).
`Further, as a result of the joinder decision and termination of Sawai’s IPR, Patent Owner has been denied the
`
`1
`
`IPR2019-00789
`IPR2018-01403
`Ex. 3001 p. 1 of 3
`
`

`

`opportunity to be heard on and cross-examine the Sawai declarants, including technical experts, relied upon by
`Sawai in its petition—e.g., Dr. Baumhefner (Ex. 1056), Dr. Bainbridge (Ex. 1057), Dr. Marks (Ex. 1058), Ms.
`Rock (Ex. 1059), and Mr. Hiramatsu on RPI (Ex. 1060)—all now insulated from review. IPR2019-00789, Paper
`14 at 2-3, 23-24; 5 U.S.C. §§ 554-556. The joinder of Sawai to the Mylan IPR at this stage—with the
`accompanying sua sponte termination and lack of Biogen discovery from Sawai and its declarants—violates
`Patent Owner’s due process rights. E.g., Goldberg v. Kelly, 397 U.S. 254, 269 (1970); Facebook, Inc. v. Windy
`City Innovations, LLC, IPR2016-01156, Paper 39 at 5 (PTAB Aug. 14, 2017); 28 U.S.C. §§ 554-556; 37 C.F.R.
`§ 42.51(b)(1)(ii). In short, Sawai’s reliance upon new evidence raised issues that cannot properly be addressed
`merely by terminating Sawai’s petition and abandoning the evidence.
`
`The Decision also improperly granted institution by misapprehending, overlooking, and erroneously deciding
`that the Real Party in Interest (“RPI”) was properly named in the petition. 35 U.S.C. § 312(a)(2). The
`Decision’s RPI analysis overlooked the evidence and argument that Sumitomo Corporation and SCOA
`(collectively “Sumitomo”) are unnamed RPIs via an “attorney-in-fact” or “implied litigating agent” relationship
`with Sawai. IPR2019-00789, Paper 15, 7-9, 12-13; Applications in Internet Time, LLC v. RPX Corp., 897 F.3d
`1336, 1351, 1354 (Fed. Cir. 2018) (“AIT”). Rather than assessing this argument and applying the RPI analysis
`of AIT, the Decision only addressed whether “Sumitomo or SCOA exercise[d] control of this proceeding or
`otherwise ‘desires review’ of the patent.’” Dec., 17. The Decision further erred, after finding that Biogen
`“reasonably br[ought] into question the accuracy of a petitioner’s identification of RPIs,” Dec., 13, by holding
`that Patent Owner had “not persuaded” the Board that there were unnamed RPIs. Id., 15, 17. This was contrary
`to the established framework that petitioner always bears the burden of persuasion to establish compliance with
`the statutory requirement to identify all RPIs. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242-46 (Fed. Cir.
`2018).
`
`The Board’s improper grant of institution, joinder, and termination in this proceeding merits POP review.
`
`II.
`
`Patent Owner’s Request for POP Review is Timely
`
`SOP2 requires that this “email be accompanied by a request for rehearing filed with the Board.” SOP2, 5
`(emphasis added). According to SOP2, § II(C), Patent Owner attaches herewith Patent Owner’s Request for
`Rehearing Under 37 C.F.R. § 42.71(d), which was simultaneously filed along with this request and is now
`pending before the Board. See No. IPR2018-01403, Paper 62 and No. IPR2019-00789, Paper 18. Petitioner’s
`request for rehearing satisfies the requirements of 37 C.F.R. § 42.71(d), including compliance with the due
`dates set forth therein. See id.
`
`For the above-stated reasons, Petitioner respectfully requests POP review of the PTAB panel decision.
`
`Respectfully submitted,
`
`/s/ Barbara C. McCurdy
`Reg. No. 32,120
`Lead Counsel for Patent Owner Biogen MA Inc.
`
`cc: All counsel of record
`
`Barbara C. McCurdy
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`+1 202 408 4047 | fax +1 202 408 4400 | barbara.mccurdy@finnegan.com | www.finnegan.com
`
`2
`
`IPR2019-00789
`IPR2018-01403
`Ex. 3001 p. 2 of 3
`
`

`

`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential, proprietary, or otherwise
`exempt from disclosure under applicable law. If you believe you have received this message in error, please advise the sender by return e-mail and delete it from
`your mailbox. Thank you.
`
`3
`
`IPR2019-00789
`IPR2018-01403
`Ex. 3001 p. 3 of 3
`
`