`571-272-7822
`
`Paper 14
`Date: September 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`v.
`REGENERON PHARMACEUTICALS, INC.,
`Patent Owner.
`
`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)1
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`NEW, Administrative Patent Judge.
`
`
`
`
`ORDER
`Authorizing Petitioner’s Unopposed Motion to Amend its Mandatory Notices
`37 C.F.R. § 42.8
`
`
`
`
`1 This Order addresses the same issue for the above-identified proceedings.
`Therefore, we exercise our discretion to issue one order to be filed in each
`proceeding. The parties are not authorized, however, to use this style
`heading in any subsequent papers.
`
`
`
`
`
`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`Mylan Pharmaceuticals Inc. (“Petitioner”) has filed an unopposed
`Motion to Amend its Mandatory Notices in both of the captioned
`proceedings. Paper 12.
`Specifically, Petitioner seeks to add Janssen R&D LLC as a real part-
`in-interest, without altering the May 5, 2021 filing date. Paper 12, 1–2.
`Petitioner asserts that, upon discovering the omission of Janssen R&D LLC
`as a real party-in-interest, it promptly informed Patent Owner Regeneron
`Pharmaceuticals, Inc. (“Patent Owner”), and offered to update its mandatory
`notices.
`Patent Owner does not oppose Petitioner’s Motion, or allege that there
`is any prejudice caused by the delay in disclosing Janssen R&D LLC as a
`real party-in-interest. Paper 12, 2.
`“[I]f a petition fails to identify all real parties in interest under [35
`U.S.C.] § 312(a)(2), the Director can, and does, allow the petitioner to add a
`real party in interest.” Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp &
`Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019); see also Proppant
`Express Invs., LLC v. Oren Techs., LLC, No. IPR2017-01917, Paper 86 at 6–
`7 (P.T.A.B. Feb. 13, 2019) (precedential); Adello Biologics LLC v. Amgen
`Inc., No. PGR2019-00001, Paper 11 at 3 (P.T.A.B. Feb. 14, 2019)
`(precedential). The Board considers the following factors when deciding
`whether to allow a petitioner to amend its identification of real parties in
`interest while maintaining the filing date: (1) attempts to circumvent the
`35 U.S.C. § 315(b) bar or estoppel rules; (2) bad faith by the petitioner; (3)
`prejudice to the patent owner caused by the delay; and (4) gamesmanship by
`the petitioner. Proppant Express, IPR2017-01917, Paper 86 at 6–7.
`Having considered these factors in view of Petitioner’s unopposed
`arguments, and finding that none of the factors exist here, we grant
`
`2
`
`
`
`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`Petitioner’s Unopposed Motion to Amend its Mandatory Notices in each of
`the captioned proceedings to include Janssen R&D LLC as a real party-in-
`interest while maintaining the original filing date.
`
`ORDER
`Petitioner’s Unopposed Motion to Amend its Mandatory Notices is
`GRANTED for each of the captioned proceedings, as specified in this Order.
`Petitioner’s Amended Mandatory Notices are to be filed no later than
`October 1, 2021.
`
`3
`
`
`
`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
`For PETITIONER:
`
`Paul Molino
`Neil McLaughlin
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`paul@rmmslegal.com
`nmclaughlin@rmmslegal.com
`
`
`For PATENT OWNER:
`
`
`Deborah Fishman
`Amanda Antons
`Alice Sin Yu Ho
`ARNOLD & PORTER KAYE SCHOLER LLP
`Amanda.antons@arnoldporter.com
`Alice.ho@arnoldporter.com
`Deborah.fishman@arnoldporter.com
`
`4
`
`
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