`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`SUN PHARMACEUTICAL INDUSTRIES LTD.
`Petitioner,
`v.
`MERCK SHARP & DOHME CORP.
`Patent Owner.
`_________________________
`Case IPR2020-01072
`Patent No. 7,326,708
`_________________________
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22, 42.122(b)
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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
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`IPR2020-01072 (7,326,708)
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`TABLE OF CONTENTS
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`I.
`STATEMENT OF PRECISE RELIEF REQUESTED ...................................... 1
`II. STATEMENT OF MATERIAL FACTS ........................................................... 2
`III.
`STATEMENT OF REASONS FOR RELIEF REQUESTED ...................... 5
`A.
`Joinder is timely. ............................................................................................ 5
`B.
`Joinder is appropriate. .................................................................................... 5
`1. Legal Standard. .......................................................................................... 5
`2.
`Joinder is Appropriate Because Both IPRs Present Exactly the Same
`Grounds for Unpatentability and Substantially the Same Evidence Concerning
`the Same Claims. ................................................................................................ 6
`3.
`Joinder will not impact the existing trial schedule. ................................... 7
`4.
`Joinder would simplify briefing and discovery. ........................................ 7
`CONCLUSION .............................................................................................. 8
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`IV.
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`
`ii
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`IPR2020-01072 (7,326,708)
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioner Sun Pharmaceutical Industries Ltd. (“Petitioner”) respectfully
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`moves for joinder and/or consolidation of its today-filed petition for Inter Partes
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`Review (“IPR”) of claims 1–4, 17, 19, and 21–23 of U.S. Patent No. 7,326,708 (“the
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`ʼ708 patent”) with a previously instituted and currently pending IPR, captioned
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`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., No. IPR2020-00040
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`(the “Mylan IPR”).
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`The Mylan IPR was instituted on May 12, 2020, on the same patent and the
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`same claims as Petitioner’s Petition (the “Petition”) filed today. Further, Petitioner
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`here asserts that the same claims are invalid based on substantially the same
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`arguments presented in the Mylan IPR. Moreover, Petitioner’s declaration is
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`substantively identical to the declaration 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 ’708 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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`IPR2020-01072 (7,326,708)
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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.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1. Merck Sharpe & Dohme Corp. (“Patent Owner”) purportedly owns the
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`ʼ708 patent.
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`2.
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`Petitioner identifies the following previous litigation related to the ’708
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`patent: Merck Sharp & Dohme Corp. v. Macleods Pharmaceuticals, Ltd. et al., 1:19-
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`cv-00316 (D. Del.); Merck Sharp & Dohme Corp. v. Torrent Pharmaceuticals
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`Limited et al., 1:19-cv-00320 (D. Del.); Merck Sharp & Dohme Corp. v. Wockhardt
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`Bio AG et al., 1:19-cv-00321 (D. Del.); Merck Sharp & Dohme Corp. v. Accord
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`Healthcare, Inc., 1:19-cv-02192 (D. Del.).
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`3.
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`Petitioner is not aware of any reexamination certificates or pending
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`prosecution concerning the ’708 patent.
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`4.
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`The following litigation or inter partes reviews related to the ʼ708
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`patent are pending:
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`• On May 12, 2020, the Board granted institution of inter partes review
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`in the Mylan IPR. Mylan IPR, Paper 21.
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`• The following petitions for inter partes have been filed: Mylan IPR;
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`Teva Pharmaceuticals USA, Inc. et al v. Merck Sharp & Dohme Corp.,
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`2
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`IPR2020-01072 (7,326,708)
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`No. IPR2020-01045; Dr. Reddy's Laboratories, Inc. et al v. Merck
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`Sharp & Dohme Corp., No. IPR2020-01060.
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`• The ’708 patent has been asserted in Merck Sharp & Dohme Corp. v.
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`Sun Pharmaceutical Industries Ltd., 1:19-cv-00319 (D. Del.); Merck
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`Sharp & Dohme Corp. v. Mylan Pharmaceuticals Inc. et al., 1:19-cv-
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`00101 (N.D. W. Va.); Merck Sharp & Dohme Corp. v. Alvogen Pine
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`Brook f/k/a Alvogen Pine Brook, Inc. et al., 1:19-cv-00310 (D. Del.);
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`Merck Sharp & Dohme Corp. v. Anchen Pharmaceuticals, Inc. et al.,
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`1:19-cv-00311 (D. Del.); Merck Sharp & Dohme Corp. v. Sandoz, Inc.,
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`1:19-cv-00312 (D. Del.); Merck Sharp & Dohme Corp. v. Apotex Inc.
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`et al., 1:19-cv-00313 (D. Del.); Merck Sharp & Dohme Corp. v. Zydus
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`Pharmaceuticals (USA) Inc. et al., 1:19-cv-00314 (D. Del.); Merck
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`Sharp & Dohme Corp. v. Watson Pharmaceuticals, Inc. et al., 1:19-cv-
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`00317
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`(D. Del.); Merck Sharp & Dohme Corp. v. Teva
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`Pharmaceuticals USA, Inc., 1:19-cv-00318 (D. Del.); Merck Sharp &
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`Dohme Corp. v. Lupin Ltd. et al., 1:19-cv-00347 (D. Del.); Merck
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`Sharp & Dohme Corp. v. Mylan Pharmaceuticals Inc. et al., 1:19- cv-
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`01489 (D. Del.); and In re Sitagliptin Phosphate (ʼ708 & ʼ921) Patent
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`Litigation, C.A. No. 19-md-2902 (D. Del.).
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`3
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`5.
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`The Board instituted the Mylan IPR on claims 1–4, 17, 19, and 21–23
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`IPR2020-01072 (7,326,708)
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`of the ’708 patent.
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`6.
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`Along with its Motion for Joinder, Petitioner here has simultaneously
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`filed a “me too” Petition for Inter Partes Review, No. IPR2020-01072, which
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`argues, inter alia, that the same claims of the ’708 patent are unpatentable for the
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`same reasons set forth in the Mylan IPR. See, e.g., Kingston Tech. Co., Inc. v.
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`Securewave Storage Sols., Inc., IPR2020-00139, 2020 WL 1480468, at *8 (P.T.A.B.
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`Mar. 23, 2020) (granting joinder of “me too” petition). The Petition is also supported
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`by the expert declaration of Dr. Steven Baldwin. The opinions set forth in Dr.
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`Baldwin’s declaration are identical to the opinions set forth in the declaration of Dr.
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`Mukund Chorghade filed in the Mylan IPR (Mylan IPR Ex. 1002). In addition, if
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`Mylan consents to allowing Sun to use Dr. Chorghade, then Sun will withdraw Dr.
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`Baldwin’s declaration and will rely only on Dr. Chorghade.
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`7.
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`The grounds proposed in the present Petition are therefore the same
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`grounds of unpatentability on which the Board instituted the Mylan IPR, and the
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`Petition does not contain any additional arguments or evidence (except for reliance
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`on a different expert, as noted above) in support of the unpatentability of claims 1–
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`4, 17, 19, and 21–23 of the ’708 patent.
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`4
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`IPR2020-01072 (7,326,708)
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Joinder is timely.
`Pursuant to 37 C.F.R. §§ 42.22, 42.122(b), this motion for joinder is timely
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`because it is submitted within one month of the date the Mylan IPR was instituted.
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`The Mylan IPR was instituted on May 12, 2020, and this motion has been filed on
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`June 12, 2020.
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`B.
`
`Joinder is appropriate.
`1.
`Legal Standard.
`The Board has discretion to, and should, join Petitioner’s IPR with the Mylan
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`IPR. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122; Ariosa Diagnostics v. Isis
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`Innovation Limited, IPR2013-00250, 2013 WL 6514079, at *2 (P.T.A.B. Sept. 3,
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`2013). In considering a motion for joinder, the Board considers the following
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`factors: (1) the reasons why joinder is appropriate; (2) new grounds of
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`unpatentability asserted in the petition; (3) the impact (if any) joinder would have on
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`the trial schedule for the existing review; and (4) how briefing and discovery may
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`be simplified. See Dell Inc. v Network-1 Security Solutions, Inc., IPR2013-00385,
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`Decision on Motion for Joinder, Paper 17 at 4 (July 29, 2013); Board’s Frequently
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`Asked
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`Questions,
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`at
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`H5
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`available
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`at
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`http://www.uspto.gov/ip/
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`boards/bpai/prps.jsp. All of the foregoing factors here weigh in favor of joinder.
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`5
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`IPR2020-01072 (7,326,708)
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`2.
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`Joinder is Appropriate Because Both IPRs Present Exactly
`the Same Grounds for Unpatentability and Substantially the
`Same Evidence Concerning the Same Claims.
`Joinder is appropriate here because the Petition asserts exactly the same
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`grounds and relies on substantially the same evidence for unpatentability that formed
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`the basis for institution in the Mylan IPR. Specifically, the Petition relies on the
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`same prior art references. Also, Dr. Baldwin has submitted a supporting declaration
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`that is virtually identical to the declaration of Dr. Mukund Chorghade submitted in
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`the Mylan IPR. Thus, although Petitioner and Mylan have relied upon testimony
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`from separate experts in their respective petitions, the conclusions and underlying
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`reasoning of the experts are congruent, and therefore present no additional burden
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`on the part of Patent Owner or the Board. And as noted above, if Mylan consents to
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`allowing Sun to use Dr. Chorghade, then Sun will withdraw Dr. Baldwin’s
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`declaration and will rely only on Dr. Chorghade. Furthermore, the arguments in
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`both petitions are also nearly identical, and there are no new grounds of
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`unpatentability asserted in the Petition. Accordingly, the Board will need to decide
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`the same issues in both IPRs—the Petition will not add any additional dimension to
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`the substantive issues in the Mylan IPR.
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`Since the parties will be presenting, and the Board will be determining, the
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`same issues in both IPRs, joinder is the most efficient and economical manner to
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`proceed. See, e.g., Kingston Tech., 2020 WL 1480468, at *8 (granting joinder of
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`6
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`
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`IPR2020-01072 (7,326,708)
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`“me too” petition); Mylan Pharmaceuticals Inc. v. Almirall, No. IPR2019-01095,
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`2019 WL 6443934, at *4 (P.T.A.B. Nov. 27, 2019) (same); Ariosa Diagnostics, 2013
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`WL 6514079, at *1 (granting motion for joinder where the second petition involved
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`the same parties, the same patent, and much of the same prior art).
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`3.
`Joinder will not impact the existing trial schedule.
`Joining Petitioner’s proceeding will not add any procedural complications or
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`delay the progress of resolving the substantive issues already pending in the Mylan
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`IPR because it will not introduce any new prior art, expert opinions that substantially
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`differ from those previously filed, or grounds of unpatentability into the Mylan IPR.
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`Petitioner will not request any alterations to the schedule in the Mylan IPR based on
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`the requested joinder. Accordingly, joinder will not impact the trial schedule for
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`existing review of the Mylan IPR or otherwise unfairly prejudice the Patent Owner.
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`Additionally, Petitioner has informed the Mylan IPR petitioner that it will coordinate
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`with the Mylan IPR petitioner, and that it agrees to take an understudy role in these
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`proceedings if joinder is granted.
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`4.
`Joinder would simplify briefing and discovery.
`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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`7
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`IPR2020-01072 (7,326,708)
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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 to facilitate the
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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. 7,326,708 and join
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`this proceeding with Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.,
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`No. IPR2020-00040.
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`
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`8
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`Dated: June 12, 2020
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`
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`IPR2020-01072 (7,326,708)
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`Respectfully submitted,
`
`
` /Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
`
`
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`9
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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 CD containing a true and correct copy of the foregoing: Motion for Joinder
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`with Related Instituted Inter Partes Review of U.S. Patent 7,326,708 Pursuant to 35
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`U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.112(b) by Federal Express Next
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`Business Day Delivery on 12 June 2020 on the Patent Owner’s correspondence
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`address of record for the subject patent as follows:
`
`Philippe Durette
`Merck & Co., Inc.
`P.O. BOX 2000
`Rahway, NJ 07065-0907
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`and by Federal Express Next Business Day Delivery and email to the service
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`addresses for Patent Owner listed in Paper No. 5 in IPR2020-00040:
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`Stanley E. Fisher (sfisher@wc.com)
`Jessamyn S. Berniker (jberniker@wc.com)
`Bruce R. Genderson (bgenderson@wc.com)
`Shaun P. Mahaffy (smahaffy@wc.com)
`Anthony H. Sheh (asheh@wc.com)
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`MerckSitagliptin@wc.com
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`Copies were also served via Federal Express Next Business Day Delivery and
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`email upon counsel of record for Petitioner Mylan in IPR2020-00040 at the
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`following address:
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`
`
`
`
`Jitendra Malik (jitty.malik@kattenlaw.com)
`Alissa M. Pacchioli (alissa.pacchioli@kattenlaw.com)
`Christopher W. West (christopher.west@katten.com)
`Heike S. Radeke (heike.radeke@katten.com)
`Katten Muchin Rosenman LLP
`550 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
`
`
`Respectfully submitted,
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`
` /Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
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`Dated: June 12, 2020
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