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`Filed: November 14, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`MSN LABORATORIES PRIVATE LTD. AND MSN PHARMACEUTICALS
`INC.
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`Petitioner,
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`v.
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`BAUSCH HEALTH IRELAND LIMITED,
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`Patent Owner.
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`__________________
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`Case IPR2023-00016
`U.S. Patent No. 7,041,786
`__________________
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`I.
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`INTRODUCTION
`Patent Owner Bausch opposes Petitioner MSN’s joinder motion because MSN
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`in fact seeks an unbounded and active role in the joined proceedings rather than the
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`“understudy role” it references no fewer than nine times in its motion. If MSN truly
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`wanted such an unbounded and active role, it should have filed its own petition.
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`Having chosen to instead seek joinder with Mylan’s earlier IPR action (IPR2022-
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`00722), MSN’s role should be limited to that of a complete understudy to avoid
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`unnecessarily complicating the Mylan action and unnecessarily burdening Bausch
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`and the Board. Bausch told MSN it would not oppose MSN’s joinder motion if
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`MSN accepted a complete understudy role, but MSN refused. Bausch therefore
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`opposes joinder unless and until MSN accepts a complete understudy role.
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`II. ARGUMENT
`The America Invents Act permits the Board in its discretion to join multiple
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`IPR proceedings only in certain circumstances. 35 U.S.C. § 315(c); 37 C.F.R.
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`42.122. As the moving party, MSN has the burden of proof to establish that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). When determining whether to
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`grant a motion for joinder, the Board considers factors including: (1) the impacts
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`joinder would have on the trial schedule; and (2) how briefing and discovery may be
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`simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-00004, Paper 15 at
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`4 (P.T.A.B. Apr. 24, 2013).
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`1
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`A. A complete understudy role is appropriate for MSN.
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`To prevent any delays of and complications in the joined proceeding, the
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`Board limits the joined party’s participation when granting joinder motions. Here,
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`MSN repeatedly states that it wants an understudy role, and, like other panels, this
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`Board should limit MSN’s participation in that way. For example, in Everlight
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`Elecs. Co., Ltd. v. Document Sec. Sys., the Board clarified that the joined petitioner
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`“will be a ‘complete understudy’ and do nothing unless and until [the original
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`petitioner] abandons its IPR.” IPR2018-01225, Paper 14 at 7 (P.T.A.B. Sept. 27,
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`2018) (emphasis in original). The Board specifically stated that “[the joined
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`petitioner] will not demand or even request that it has any input to any motion, brief,
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`exhibit, deposition, teleconference, hearing, or any other aspect of the joined IPR,
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`unless [the original petitioner] abandons its IPR. [The original petitioner] and PO
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`will proceed in the exact same manner as if [the joined petitioner] had never joined.”
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`Id.
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`The Board imposed similar limitations in Ion Geophysical Corp. and Ion
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`International S.A.R.L. v. Westerngeco LLC, specifically ordering that the joined
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`party “is not permitted to file papers, engage in discovery, or participate in any
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`deposition or oral hearing in IPR2014-00689.” See IPR2015-00565, 2015 WL
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`1906173, at *4 (P.T.A.B. Apr. 23, 2015); see also Microsoft Corp. v. Ipr Licensing,
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`Inc., IPR2014-00525.” See No. IPR2015-00074, 2015 WL 1004475, at *4 (P.T.A.B.
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`2
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`Mar. 4, 2015) (Board ordering that “unless given prior authorization by the Board,
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`[the joined party] is not permitted to file papers, engage in discovery,
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`or participate in any deposition or oral hearing in”). The Board should impose those
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`same limitations here. A complete understudy role for MSN is appropriate.
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`B.
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`The Board should reject the unbounded and active role MSN
`articulated in its motion.
`Despite stating that it would take an “understudy” role in the joined
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`proceeding nine times in its motion, Paper 4 at 5, 9, 10, 11, 12, MSN instead seeks
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`an unbounded and active role. For example, MSN ambiguously indicates that it will
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`submit separate filings “in the unlikely event of a disagreement with Mylan’s
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`position or an issue unique to MSN arises during the proceeding.” Paper 4 at 9-10.
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`As another example, rather than simply coordinating with Mylan, MSN ambiguously
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`indicates that it will only “endeavor to coordinate with Mylan” on such things as
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`“manag[ing] questioning at depositions” and “ensur[ing] that briefing and discovery
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`occur within the time normally allotted.” Id. at 10 (emphasis added). When pressed
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`on these ambiguous statements during a meeting and confer, MSN could not
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`articulate what “the unlikely event” would be. Instead, MSN’s counsel stated that
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`“you know when you see it,” like “pornography.” EX2001 at Andres O. Larsen’s
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`email of October 29, 2022 (admitting that MSN referenced “pornography” when
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`stating “you know it when you see it”). And with respect to depositions, MSN
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`refused to say whether it would request additional time during cross examinations.
`3
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`Id. The Board should reject this unbounded and active role and instead give MSN
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`the “understudy” role it repeatedly referenced.
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`The Board’s holding in Ericsson Inc. v. Unioloc 2017 LLC is instructive in
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`this regard. IPR2020-00376, Paper 8 at 2 (P.T.A.B. January 21, 2020). In that case,
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`like here, the party seeking joinder, Ericsson, sought an unbounded and active role,
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`stating that “[a]ll filings by Ericsson in the joined proceeding shall be consolidated
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`with the filings of Microsoft unless a filing solely concerns issues that do not involve
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`Microsoft.” Id. (emphasis added). Finding the statement confusing, the Board asked
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`Ericsson to file a Supplemental Motion for Joinder and clarified the meaning of an
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`“understudy role.”
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`In our view, an “understudy role,” if taken by Ericsson, means Ericsson
`will not be making any substantive filings and will be bound by
`whatever substantive filings Microsoft [the original petitioner]
`makes, so long as Microsoft remains a party in the proceeding. The
`same is true for oral hearing presentations. Also, Ericsson will not
`seek to take cross examination testimony of any witness or have a
`role in defending the cross-examination of a witness, so long as
`Microsoft remains a party in the proceeding. Likewise with other
`discovery matters. If and when Microsoft’s participation in the
`proceeding terminates, Ericsson can make its own filings as Petitioner.
`In short, in its “understudy role,” Ericsson will remain completely
`inactive, but for issues that are solely directed and pertinent to
`Ericsson.
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`4
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`Id. at 3 (emphasis added). This is the complete understudy role that would be
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`appropriate for MSN.
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`None of MSN’s cases justify its unbounded and active role. To the contrary,
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`Lupin Ltd. and Lupin Pharms. Inc. v. Senju Pharm. Co. Ltd.; STMicroelectronics,
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`Inc. v. Ocean Semiconductor LLC; and Mazda Motor of America, Inc. et. al. v.
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`Stratosaudio, Inc. articulate understudy roles tracking those in Everlight Electronics
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`and Ericsson. Compare Lupin, IPR2015-01871, Paper 13 at 6 (P.T.A.B. Jan. 25,
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`2016); STMicroelectronics, IPR2022-00680, Paper 10 at 11-12 (P.T.A.B. Sept. 2,
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`2022); and Mazda, IPR2022-00205, Paper No. 10 at 7 (P.T.A.B. May 11, 2022) (The
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`Board in Lupin, STMicroelectronics, and Mazda confirming that the joined
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`petitioner should take a back-seat role as an understudy with no separate briefing or
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`additional discovery) with Everlight Elecs., IPR2018-01225, Paper 14 at 7 and
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`Ericsson, IPR2020-00376, Paper 8 at 3 (The Board in Everlight Electronics and
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`Ericsson acknowledging that the joined petitioner should be a “complete
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`understudy” and do nothing and remain “completely inactive,” unless and until the
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`original petitioner abandons its IPR.)
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`They do not provide for (i) filing in the “event of a disagreement with
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`Mylan’s position or an issue unique to MSN arises;” (ii) “manag[ing] questioning
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`at depositions;” (iii) “endeavor[ing] to coordinate with Mylan to consolidate
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`authorized filings;” and (iv) submitting separate expert declarations “in the event
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`5
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`that MSN is precluded from relying on Mylan’s expert,” as MSN requests in its
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`motion for joinder. Paper 4 at 9-10 (emphasis added).
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`MSN also cites Dell, Inc. v. Network-1 Security Solutions, Inc. and SAP
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`America Inc. v. Clouding IP, LLC. See Motion 11; IPR2013-00385, Paper 17 at 8-
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`9 (P.T.A.B. Jul. 29, 2013); IPR2014-00306, Paper 13 at 4 (P.T.A.B. May 19, 2014).
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`In these two cases, the Board allowed the joined petitioner to make separate limited
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`filings. But notably, the patent owners in these cases did not oppose the participatory
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`rights suggested by the petitioners seeking joinder. Moreover, these cases are
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`distinguishable because in neither Dell nor SAP did the petitioner seeking joinder
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`present itself as a “understudy.” Unlike these cases, here, MSN states that it will
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`take an “understudy” role, using the term “understudy” nine times in its Motion.
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`See Paper 4 at 5, 9, 10, 11, 12. Even in SAP, the Board made clear that the petitioner
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`seeking joinder and the original petitioner “will not receive any separate cross-
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`examination or redirect time.” SAP, IPR2014-00306, Paper 13 at 6.
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`III. Conclusion
`For the foregoing reasons, Patent Owner respectfully asks the Board to deny
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`joinder or limit MSN’s proposed participation to that of a complete understudy.
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`
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`Date: November 14, 2022
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`Respectfully submitted,
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`
`/Justin J. Hasford/
`By:
`Justin J. Hasford, Reg. No. 62,180
`6
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`Lead Counsel
`Bryan C. Diner, Reg. No. 32,409
`Back-up Counsel
`Joshua L. Goldberg, Reg. No. 59,369
`Back-up Counsel
`Kassandra M. Officer Reg. No. 74,083
`Back-up Counsel
`Lauren J. Robinson Reg. No. 74,100
`Back-up Counsel
`Caitlin E. O’Connell, Reg. No. 73,934
`Back-up Counsel
`Kyu Yun Kim, Reg. No. 72,783
`Back-up Counsel
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Ave. NW
`Washington, DC 20001-4413
`(202) 408-4000
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`Counsel for Patent Owner
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Patent Owner’s
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`Opposition to Motion for Joinder was served electronically via email on
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`November 14, 2022, in its entirety on the following:
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`
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`Andrew O. Larsen
`Merchant & Gould, P.C.
`500 Fifth Avenue, Suite 4100
`New York, NY 10110
`alarsen@merchantgould.com
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`Melissa Hayworth
`Merchant & Gould, P.C.
`1900 Duke, Street, Suite 600
`Alexandria, VA 22314
`mhayworth@merchantgould.com
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`Christopher J. Sorenson
`Merchant & Gould, P.C.
`150 South Fifth Street, Suite 2200
`Minneapolis, MN 55402
`csorenson@merchantgould.com
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`plecanatidemerchant@merchantgould.com
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`/Geneva Eaddy/
`Geneva Eaddy
`Case Manager
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
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`Dated: November 14, 2022
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`8
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