UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`PFIZER INC.,
`Petitioner,
`v.
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner
`Case IPR2019-00978
`Patent No. 8,603,044 B2
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22, 42.122(b)
`
`
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`
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via the PTAB E2E System
`
`
`
`
`
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`PFIZER INC.,
`Petitioner,
`v.
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner
`Case IPR2019-00978
`Patent No. 8,603,044 B2
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22, 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via the PTAB E2E System
`
`
`
`
`
`
`IPR2019-00978 Patent No. 8,603,044 B2
`
`TABLE OF CONTENTS
`
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED ...................................... 1
`II. STATEMENT OF MATERIAL FACTS ........................................................... 2
`III.
`STATEMENT OF REASONS FOR RELIEF REQUESTED ...................... 4
`A.
`Joinder is timely. ............................................................................................ 4
`B.
`Joinder is appropriate. .................................................................................... 4
`1. Legal Standard. .......................................................................................... 4
`2.
`Joinder Is Appropriate Because Both IPRs Present Exactly The Same
`Grounds And Substantially the Same Evidence Of Obviousness Concerning
`The Same Claims. .............................................................................................. 5
`3.
`Joinder will not impact the existing trial schedule. ................................... 6
`4.
`Joinder would simplify briefing and discovery. ........................................ 6
`CONCLUSION .............................................................................................. 7
`
`IV.
`
`
`ii
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`IPR2019-00978 Patent No. 8,603,044 B2
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioner Pfizer Inc. (“Petitioner”) respectfully moves for joinder and/or
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`consolidation of its today-filed petition for Inter Partes Review (“IPR”) of claims
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`11, 14, 15, 18, and 19 of U.S. Patent No. 8,603,044 B2 (“the ’044 patent”) with a
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`previously instituted and currently pending IPR, captioned Mylan Pharmaceuticals
`
`Inc. v. Sanofi-Aventis Deutschland GmbH., No. IPR2018-01676 (the “Mylan IPR”).
`
`The Mylan IPR was instituted on April 2, 2019, on the same patent and the
`
`same claims as Petitioner’s Petition (the “Petition”) filed today. Further, Petitioner
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`here asserts that the same claims are obvious over the same prior art based on
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`substantially the same arguments presented in the Mylan IPR.
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`Petitioner has asked Mylan if it consents to joinder. As of the date of this
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`motion, Petitioner and Mylan are in the process of discussing that request, and Mylan
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`has not yet indicated whether it consents to this motion.
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`Joinder will not cause any delay in the resolution of the Mylan IPR. Joinder,
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`therefore, is appropriate because it will promote the efficient and consistent
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`resolution of the same patentability issues with respect to the ’044 patent, it will not
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`delay the Mylan IPR trial schedule, and the parties in the Mylan IPR will not be
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`prejudiced.
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`1
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`IPR2019-00978 Patent No. 8,603,044 B2
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`Petitioner also agrees to abide by and adopt all of the actions and proceedings
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`in the Mylan IPR that may occur prior to the Board reaching its decision on the
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`instant Petition and motion for joinder.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`Sanofi-Aventis Deutschland GmbH (“Patent Owner”) purportedly owns
`1.
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`the ʼ044 patent.
`
`2.
`
`Petitioner identifies the following previous litigation related to the ’044
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`patent:
`
`• The ’044 patent was asserted in Sanofi-Aventis U.S. LLC v. Merck
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`Sharp & Dohme Corp., No. 1:16-cv-00812 (D. Del.), Sanofi-Aventis
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`U.S. LLC v. Eli Lily and Co., No. 1:14-cv-00113 (D. Del.), Sanofi-
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`Aventis U.S. LLC v. Eli Lily and Co., No. 1:14-cv-00884 (D. Del.), and
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`Sanofi-Aventis U.S. LLC, et al. v. Mylan GmbH, et al., No. 1:17-cv-
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`00181 (N.D.W. Va.).
`
`3.
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`Petitioner is not aware of any reexamination certificates or pending
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`prosecution concerning the ’044 patent. The following litigation or inter partes
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`reviews related to the ʼ044 patent are pending:
`
`• On April 2, 2019, the Board granted institution of inter partes review
`
`in the Mylan IPR. Mylan IPR, Paper 20.
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`2
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`IPR2019-00978 Patent No. 8,603,044 B2
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`• On April 2, 2019, the Board also granted institution of inter partes
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`review in Mylan Pharmaceuticals Inc. v. Sanofi-Aventis Deutschland
`
`GmbH., Case IPR2018-01675.
`
`• The ’044 patent has been asserted in Sanofi-Aventis U.S. LLC, et al. v.
`
`Mylan GmbH, et al., No. 2:17-cv-09105 (D.N.J.).
`
`4.
`
`The Board instituted the Mylan IPR on two grounds: (1) Claims 11, 14,
`
`15, 18, and 19 as obvious under 35 U.S.C. § 103(a) over Steenfeldt-Jensen; and (2)
`
`Claims 11, 14, 15, 18, and 19 as obvious under 35 U.S.C. § 103(a) over Mǿller and
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`Steenfeldt-Jensen.
`
`5.
`
`Along with its Motion for Joinder, Petitioner here has simultaneously
`
`filed a Petition for Inter Partes Review, No. IPR2019-00978, which argues, inter
`
`alia, that the same claims of the ’044 patent are obvious over the same grounds and
`
`for substantially the same reasons set forth in the Mylan IPR. The Petition is also
`
`supported by the expert declaration of Charles Clemens. The opinions set forth in
`
`Mr. Clemens’s declaration are nearly identical to the opinions set forth in the
`
`declaration of Mr. Karl R. Leinsing filed in the Mylan IPR (Mylan IPR Ex. 1011).
`
`The grounds proposed in the present Petition are therefore the same grounds
`
`of unpatentability on which the Board instituted the Mylan IPR, and the Petition
`
`does not contain any additional arguments or evidence (except for reliance on a
`
`different expert, as noted above) in support of the unpatentability of claims 11, 14,
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`3
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`
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`IPR2019-00978 Patent No. 8,603,044 B2
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`15, 18, and 19 of the ’044 patent.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`Joinder is timely.
`A.
`Pursuant to 37 C.F.R. §§ 42.22, 42.122(b), this motion for joinder is timely
`
`because it is submitted within one month of the date the Mylan IPR was instituted.
`
`The Mylan IPR was instituted on April 2, 2019, and this motion has been filed on
`
`May 2, 2019.
`
`B.
`
`Joinder is appropriate.
`Legal Standard.
`1.
`The Board has discretion to, and should, join Petitioner’s IPR with the Mylan
`
`IPR. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122; Ariosa Diagnostics v. Isis
`
`Innovation Limited, IPR-2013-00250, 2013 WL 6514079, at *2 (P.T.A.B. Sept. 3,
`
`2013). In considering a motion for joinder, the Board considers the following
`
`factors: (1) the reasons why joinder is appropriate; (2) new grounds of
`
`unpatentability asserted in the petition; (3) the impact (if any) joinder would have on
`
`the trial schedule for the existing review; and (4) how briefing and discovery may
`
`be simplified. See Dell Inc. v Network-1 Security Solutions, Inc., Decision on
`
`Motion for Joinder, IPR2013-00385, Paper 17 at 4 (July 29, 2013); Board’s
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`Frequently Asked Questions, at H5 available at http://www.uspto.gov/ip/
`
`boards/bpai/prps.jsp. All of the foregoing factors here weigh in favor of joinder.
`
`4
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`IPR2019-00978 Patent No. 8,603,044 B2
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`2.
`
`Joinder Is Appropriate Because Both IPRs Present Exactly
`The Same Grounds And Substantially the Same Evidence Of
`Obviousness Concerning The Same Claims.
`Joinder is appropriate here because the Petition asserts exactly the same
`
`grounds and relies on substantially the same evidence for unpatentability that formed
`
`the basis for institution in the Mylan IPR. Specifically, the Petition relies on the
`
`same combinations of prior art references. Also, Mr. Clemens has submitted a
`
`supporting declaration that is substantively nearly identical to the declaration of Mr.
`
`Leinsing submitted in the Mylan IPR. Thus, while Petitioner and Mylan have relied
`
`upon testimony from separate experts in their respective petitions, the conclusions
`
`and underlying reasoning of the experts are congruent, and therefore present no
`
`additional burden on the part of Patent Owner or the Board. The arguments in both
`
`petitions are also nearly identical, and there are no new grounds of unpatentability
`
`asserted in the Petition. Accordingly, the Board will need to decide the same issues
`
`in both IPRs—the Petition will not add any additional dimension to the substantive
`
`issues in the Mylan IPR.
`
`Since the parties will be presenting, and the Board will be determining, the
`
`same issues in both IPRs, joinder is the most efficient and economical manner to
`
`proceed. See, e.g., Ariosa Diagnostics v. Isis Innovation Limited, IPR2013-00250,
`
`2013 WL 6514079, at *1 (P.T.A.B. Sept. 3, 2013) (granting motion for joinder where
`
`5
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`
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`the second petition involved the same parties, the same patent, and much of the same
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`IPR2019-00978 Patent No. 8,603,044 B2
`
`prior art).
`
`Joinder will not impact the existing trial schedule.
`3.
`Joinder will not introduce any new prior art, expert opinions that substantially
`
`differ from those previously filed, or grounds of unpatentability into the Mylan IPR,
`
`so joining Petitioner’s proceeding will not add any procedural complications or
`
`delay the progress of resolving the substantive issues already pending in the Mylan
`
`IPR. Petitioner will not request any alterations to the schedule in the Mylan IPR
`
`based on the requested joinder. Accordingly, joinder will not impact the trial
`
`schedule for existing review of the Mylan IPR or otherwise unfairly prejudice the
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`Patent Owner. Additionally, Petitioner has informed the Mylan IPR petitioner that
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`it will coordinate with the Mylan IPR petitioner, and that it agrees to take an
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`understudy role in these proceedings if joinder is granted.
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`Joinder would simplify briefing and discovery.
`4.
`Since the prior art and bases for unpatentability in the petitions in both this
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`IPR and the Mylan IPR are the same, the same arguments will be made by both
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`groups of petitioners. Without joinder, largely duplicative briefs and other papers
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`would be filed in parallel IPRs. Joinder would thus eliminate duplicative
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`proceedings and reduce the burdens on the Board and the parties.
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`Petitioner will coordinate with the Mylan IPR petitioner here to facilitate the
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`6
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`IPR2019-00978 Patent No. 8,603,044 B2
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`elimination of repetitive briefs and testimony. Petitioner has also informed the
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`Mylan IPR petitioner that Petitioner will maintain a secondary role in the
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`proceeding, if joined. Petitioner will assume a primary role only if the Mylan IPR
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`petitioner ceases to participate in the IPR. Petitioner’s representations remove any
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`potential “complication or delay” caused by joinder, while providing the parties an
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`opportunity to address all issues that may arise and avoiding any undue burden on
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`Patent Owner, the Mylan IPR petitioner, and the Board. See, e.g., Motorola Mobility
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`LLC v. SoftView LLC, IPR2013-00256, Paper 10 at 8-9 (P.T.A.B. June 20, 2013).
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`Therefore, briefing and discovery would be significantly simplified if joinder were
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`granted.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`institute its Petition for Inter Partes Review of U.S. Patent No. 8,603,044 and join
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`this proceeding with Mylan Pharmaceuticals Inc. v. Sanofi-Aventis Deutschland
`
`GmbH., No. IPR2018-01676.
`
`
`
`Dated: May 2, 2019
`
`
`
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`Respectfully submitted,
`
`
` /Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
`
`
`
`7
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`
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, I certify that I caused to be
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`served a true and correct copy of the foregoing: Motion for Joinder with Related
`
`Instituted Inter Partes Review of U.S. Patent 8,603,044 Pursuant to 35 U.S.C.
`
`§ 315(c), 37 C.F.R. §§ 42.22 and 42.112(b) by Federal Express Next Business Day
`
`Delivery on 2 May 2019 on the Patent Owner’s correspondence address of record
`
`for the subject patent as follows:
`
`McDonnell Boehnen Hulbert & Berghoff LLP
`300 S. Wacker Drive 32nd Floor
`Chicago IL 60606
`
`and by email to the service addresses for Patent Owner listed in Paper No. 23 in
`
`IPR2018-01676:
`
`elizabeth.weiswasser@weil.com
`anish.desai@weil.com
`sudip.kundu@weil.com
`kathryn.kantha@weil.com
`adrian.percer@weil.com
`brian.chang@weil.com
`sutton.ansley@weil.com
`matthew.sieger@weil.com
`Sanofi.IPR.Service@weil.com
`
`
`
`
`
`
`
`
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`Dated: May 2, 2019
`
`
`
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`Respectfully submitted,
`
`
` /Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
`
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