UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`PFIZER INC.,
`Petitioner,
`v.
`NOVO NORDISK A/S,
`Patent Owner
`Case IPR2020-01252
`Patent No. 8,114,833B2
`
`
`
`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
`
`
`
`
`
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`PFIZER INC.,
`Petitioner,
`v.
`NOVO NORDISK A/S,
`Patent Owner
`Case IPR2020-01252
`Patent No. 8,114,833B2
`
`
`
`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
`
`
`
`
`
`
`IPR2020-01252 Patent No. 8,114,833 B2
`
`TABLE OF CONTENTS
`
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED ...................................... 1
`II. STATEMENT OF MATERIAL FACTS ........................................................... 2
`III.
`STATEMENT OF REASONS FOR RELIEF REQUESTED ...................... 3
`A.
`Joinder is timely. ............................................................................................ 3
`B.
`Joinder is appropriate. .................................................................................... 4
`1. Legal standard. ........................................................................................... 4
`2.
`Joinder is appropriate because both IPRs present exactly the same
`grounds and the same evidence of obviousness concerning the same claims. .. 4
`3.
`Joinder will not impact the existing trial schedule. ................................... 5
`4.
`Joinder would simplify briefing and discovery. ........................................ 6
`CONCLUSION .............................................................................................. 7
`
`IV.
`
`
`ii
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`IPR2020-01252 Patent No. 8,114,833 B2
`
`I.
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`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 1-
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`31 of U.S. Patent No. 8,114,833 B2 (“the ’833 patent”) with a previously instituted
`
`and currently pending IPR, captioned Mylan Institutional LLC. v. Novo Nordisk A/S,
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`No. IPR2020-00324 (the “Mylan IPR”).
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`The Mylan IPR was instituted on June 23, 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 anticipated and/or obvious over the same prior
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`art based on the same arguments presented in the Mylan IPR.
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`As of the date of this motion, Mylan has consented to Petitioner’s request to
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`join the Mylan IPR provided that joinder does not impact the timing for a final
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`written decision in the Mylan IPR.
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`Joinder will not add any new substantive issues to the proceedings or
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`otherwise cause any delay in the resolution of the Mylan IPR. Joinder, therefore, is
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`appropriate because it will promote the efficient and consistent resolution of the
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`same patentability issues with respect to the ’833 patent, it will not delay the Mylan
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`IPR trial schedule, and the parties in the Mylan IPR will not be prejudiced.
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`1
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`IPR2020-01252 Patent No. 8,114,833 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.
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`II.
`
`STATEMENT OF MATERIAL FACTS
`Novo Nordisk A/S (“Patent Owner”) purportedly owns the ’833 patent.
`1.
`
`2.
`
`Petitioner identifies the following previously completed litigation and
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`inter partes review related to the ’833 patent:
`
`• The ’833 patent was asserted in Novo Nordisk Inc. et a. v. Teva
`
`Pharmaceuticals USA, Inc.., No. 1:17-cv-00227 (D. Del.), and in Novo
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`Nordisk Inc. et al. v. Mylan Institutional LLC, No. 1:19-cv-00164
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`(N.D.W. Va.).
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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 ’833 patent. The following litigation or inter partes
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`reviews related to the ’833 patent are pending:
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`• On June 23, 2020, the Board granted institution of inter partes review
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`in the Mylan IPR. Mylan IPR, Paper 12.
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`• The ’833 patent has been asserted in Novo Nordisk Inc. et al. v. Mylan
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`Institutional LLC, No. 1:19-cv-01551 (D. Del.), Novo Nordisk Inc. et
`
`al. v. Sandoz, Inc., No. 1:20-cv-00747 (D. Del.), and Novo Nordisk Inc.
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`et al. v. Sandoz, Inc., No. 1:20-cv-06842 (D.N.J.).
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`2
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`
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`IPR2020-01252 Patent No. 8,114,833 B2
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`4.
`
`The Board instituted the Mylan IPR on three grounds: (1) Claims 1-15
`
`as anticipated under 35 U.S.C. § 102(b) by Flink; (2) Claims 1-15 as obvious under
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`35 U.S.C. § 103(a) over Flink; and (3) Claims 1-31 as obvious under 35 U.S.C.
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`§ 103(a) over Flink and Betz.
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`5.
`
`Along with its Motion for Joinder, Petitioner here has simultaneously
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`filed a Petition for Inter Partes Review, No. IPR2020-01252, which argues, inter
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`alia, that the same claims of the ’833 patent are anticipated and/or obvious over the
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`same grounds and for the same reasons set forth in the Mylan IPR. The Petition is
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`also supported by the expert declaration of Dr. Laird Forrest, who is the same expert
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`supporting the Mylan IPR. The opinions set forth in Dr. Forrest’s declaration are
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`identical to the opinions set forth in his declaration filed in the Mylan IPR (Mylan
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`IPR Ex. 1002).
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`The grounds proposed in the present Petition are therefore the same grounds
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`of unpatentability on which the Board instituted the Mylan IPR, and the Petition
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`does not contain any additional arguments or evidence in support of the
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`unpatentability of claims 1-31 of the ’833 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
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`because it is submitted within one month of the date the Mylan IPR was instituted.
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`3
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`
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`The Mylan IPR was instituted on June 23, 2020, and this motion has been filed on
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`IPR2020-01252 Patent No. 8,114,833 B2
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`July 22, 2020.
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`B.
`
`Joinder is appropriate.
`Legal standard.
`1.
`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
`
`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
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`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
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`be simplified. See Dell Inc. v Network-1 Security Solutions, Inc., Decision on
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`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/
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`boards/bpai/prps.jsp. All of the foregoing factors here weigh in favor of joinder.
`
`2.
`
`Joinder is appropriate because both IPRs present exactly the
`same grounds and the same evidence of obviousness
`concerning the same claims.
`Joinder is appropriate here because the Petition asserts exactly the same
`
`grounds and relies on 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. The arguments in both petitions are the same,
`
`4
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`IPR2020-01252 Patent No. 8,114,833 B2
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`and there are no new grounds of, or evidence supporting, unpatentability asserted in
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`the Petition. Given that grounds are identical in both IPRs, the Board will need to
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`decide the same issues—the Petition will not add any additional dimension to the
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`substantive issues in the Mylan IPR. Also, Petitioner has relied upon the exact same
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`expert testimony as Mylan in their respective petitions.
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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., Ariosa Diagnostics v. Isis Innovation Limited, IPR2013-00250,
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`2013 WL 6514079, at *1 (P.T.A.B. Sept. 3, 2013) (granting motion for joinder where
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`the second petition involved the same parties, the same patent, and much of the same
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`prior art).
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`Joinder will not impact the existing trial schedule.
`3.
`Joinder 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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`so 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. Petitioner will not request any alterations to the schedule in the Mylan IPR
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`based on the requested joinder. Accordingly, joinder will not impact the trial
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`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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`5
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`IPR2020-01252 Patent No. 8,114,833 B2
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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 grounds 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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`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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`6
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`IPR2020-01252 Patent No. 8,114,833 B2
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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. 8,114,833 and join
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`this proceeding with Mylan Institutional LLC v. Novo Nordisk A/S, No. IPR2020-
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`00324.
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`Dated: July 22, 2020
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`Respectfully submitted,
`
`
` /Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
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`7
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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
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`Instituted Inter Partes Review of U.S. Patent 8,114,833 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 the Patent Owner’s correspondence address of record for the subject
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`patent as follows:
`
`Novo Nordisk Inc.
`Intellectual Property Department
`800 Scudders Mill Road
`Plainsboro NJ 08536
`and by email to the service addresses for Patent Owner listed in Paper No. 16 in
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`IPR2020-00324:
`
`joelke@fenwick.com
`ryan.johnson@fenwick.com
`laura.moran@fenwick.com
`Novo833IPR@fenwick.com
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`Dated: July 22, 2020
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`Respectfully submitted,
`
`
` /Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
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