`Date: October 30, 2015
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`Trials@uspto.gov
`571-272-7822
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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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`WOCKHARDT BIO AG,
`Petitioner,
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`v.
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`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01814
`Patent 8,457,988 B1
`____________
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`
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`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL, and
`BRIAN P. MURPHY, Administrative Patent Judges.
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`MURPHY, Administrative Patent Judge.
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`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
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`IPR2015-01814
`Patent 8,457,988 B1
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`I.
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`INTRODUCTION
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`Petitioner Wockhardt Bio AG (“Wockhardt”) filed a Petition requesting
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`inter partes review of claims 1–15 of U.S. Patent No. 8,457,988 B1 (“the ’988
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`patent”). Paper 1 (“Petition” or “Pet.”). The Petition was accorded a filing date of
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`August 27, 2015. Paper 5. Wockhardt also filed a Motion for Joinder pursuant to
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`35 U.S.C. § 315(c) requesting joinder of the present proceeding with Par Pharm.,
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`Inc. v. Jazz Pharms., Inc., Case IPR2015-00551. Paper 4 (“Mot.”). IPR2015-
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`00551 also concerns claims 1–15 of the ’988 patent owned by Jazz
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`Pharmaceuticals, Inc. (“Patent Owner”). We instituted trial in IPR2015-00551 on
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`July 28, 2015, on the grounds of (i) obviousness of claims 1, 3–9, and 11–15 over
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`the same “Advisory Committee Art” (Exs. 1003–1006) relied upon by Wockhardt
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`in the instant Petition, and (ii) obviousness of claims 2 and 10 over the Advisory
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`Committee Art and “Korfhage” (Ex. 1037), also relied upon by Wockhardt in the
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`instant Petition. IPR2015-00551, Paper 19. Wockhardt’s assertions of
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`obviousness of claims 1–15 over the Advisory Committee Art and Korfhage in the
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`Petition are the only grounds on which Wockhardt seeks institution of inter partes
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`review. Pet. 11–12. Wockhardt filed the Petition and Motion for Joinder in the
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`present proceeding on August 27, 2015, within one month after we instituted trial
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`in IPR2015-00551. 37 C.F.R. § 42.122(b).
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`II. DISCUSSION
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`Based on authority delegated to us by the Director, we have discretion to
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`join an inter partes review to a previously instituted inter partes review. 35 U.S.C.
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`§ 315. Section 315(c) provides, in relevant part, that “[i]f the Director institutes an
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`inter partes review, the Director, in his or her discretion, may join as a party to that
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`inter partes review any person who properly files a petition under section 311.” Id.
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`When determining whether to grant a motion for joinder we consider factors such
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`IPR2015-01814
`Patent 8,457,988 B1
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`as timing and impact of joinder on the trial schedule, cost, discovery, and potential
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`simplification of briefing. Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004,
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`slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`We convened a conference call on September 14, 2015, among counsel for
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`Wockhardt, Amneal Pharmaceuticals (“Amneal”),1 Par Pharmaceutical, Inc.
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`(“Par”), and Patent Owner. The subject of the conference call was a discussion of
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`the conditions proposed by Wockhardt in its Motion for Joinder, requesting that we
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`join the present proceeding with IPR2015-00551. We refer to the transcript of the
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`conference call filed by counsel for Wockhardt for the details of the call and
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`representations and agreements made by the parties. Ex. 1033.
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`Of particular relevance, we note that Wockhardt’s Petition is based only on
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`the identical grounds on which we instituted inter partes review in IPR2015-
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`00551. Mot. 5. The Petition is based on “the same arguments, evidence, and
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`ground of unpatentability” and is otherwise “identical to the instituted Par IPR
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`Petition.” Id.; Ex. 1033, 7:2–18. We further note that Wockhardt agreed to, inter
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`alia, (i) “adopt any papers submitted by Par in the joined IPR proceeding . . .
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`including the testimony from the same expert witness(es) as in the instituted trial;”
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`(ii) “not seek to submit any new expert declarations from those entered by Par,
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`except to the extent that . . . Wockhardt is precluded from relying on Par’s experts’
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`declarations, e.g., if Par settles with Jazz and contractually bind its experts from
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`continuing in the IPR with Wockhardt;” (iii) “not seek additional time at any
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`deposition and that Par will be permitted to ask questions before Wockhardt;” and
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`(iv) “not seek any additional time at any oral argument.” Mot. 8–10. Patent
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`1 Amneal is a petitioner in a series of related inter partes review proceedings
`(IPR2015-00545, IPR2015-00546, IPR2015-00547, and IPR2015-00554) also
`involving petitioner Par and Patent Owner Jazz Pharmaceuticals, Inc.
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`IPR2015-01814
`Patent 8,457,988 B1
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`Owner agreed that, if joinder were to be ordered on the conditions set forth in the
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`Motion for Joinder, then Patent Owner would not oppose joinder and would waive
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`filing a preliminary response to the Petition. Ex. 1033, 7:20–9:13. The parties also
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`agreed that the schedule in IPR2015-00551 would remain in place without
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`requiring any extensions of time. Id. at 6:11–22, 8:8–12, 28:11–21.
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`At the conclusion of the conference call, we asked counsel for Wockhardt,
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`Amneal, and Par to attempt to reach agreement on any remaining issues among
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`them regarding joinder and to inform the Board no later than Friday September 18,
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`2015, whether agreement was reached, and whether any of the parties intended to
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`file an opposition to Wockhardt’s Motion for Joinder by September 25, 2015. Ex.
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`1033, 34:12–35:14.
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`On September 18, 2015, we received an email from counsel for Wockhardt,
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`on which counsel for Amneal, Par, and Patent Owner were copied, indicating there
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`was agreement among Wockhardt, Amneal, and Par, and that none of the parties
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`would oppose the Motion for Joinder based on the conditions proposed in
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`Wockhardt’s Motion, as clarified and agreed during the conference call. In view of
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`the foregoing, we find that joinder based upon the conditions stated by Wockhardt
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`in its Motion for Joinder will have little or no impact on the timing, cost, or
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`presentation of the trial on the instituted grounds. Discovery and briefing will be
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`simplified if the two proceedings are joined. Therefore, there being no opposition
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`to Wockhardt’s Motion for Joinder from any of the parties, the Motion for Joinder
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`is granted.
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`IPR2015-01814
`Patent 8,457,988 B1
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`Accordingly, it is
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`III.
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` ORDER
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`ORDERED that trial is instituted in IPR2015-001814 as to the obviousness
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`of (i) claims 1, 3–9, and 11–15 of the ’988 patent over the Advisory Committee
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`Art, and (ii) claims 2 and 10 of the ’988 patent over the Advisory Committee Art
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`and Korfhage, the same grounds on which we instituted trial in IPR2015-00551;
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`FURTHER ORDERED that Wockhardt’s Motion for Joinder with IPR2015-
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`00551 is granted;
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`FURTHER ORDERED that IPR2015-01814 is terminated and joined to
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`IPR2015-00551, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the conditions
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`stated in Wockhardt’s Motion for Joinder (Paper 4) as clarified and agreed during
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`the conference call of September 14, 2015 (Ex. 1033);
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`FURTHER ORDERED that the Scheduling Order in place for IPR2015-
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`00551 shall govern the joined proceedings;
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`FURTHER ORDERED that all future filings in the joined proceeding are to
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`be made only in IPR2015-00551;
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`FURTHER ORDERED that the case caption in IPR2015-00551 for all
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`further submissions shall be changed to add Wockhardt as a named petitioner after
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`Par, and to indicate by footnote the joinder of IPR2015-01814 to that proceeding,
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`as indicated in the attached form of caption; and
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`FURTHER ORDERED that a copy of this Decision shall be entered into the
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`record of IPR2015-00551.
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`5
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`IPR2015-01814
`Patent 8,457,988 B1
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`FOR PETITIONER:
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`Laura Vogel
`Patrick Gallagher
`LAVogel@duanemorris.com
`PCGallagher@duanemorris.com
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`
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`FOR PATENT OWNER:
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`F. Dominic Cerrito
`Evangeline Shih
`Frank C. Calvosa
`Eric C. Stops
`nickcerrito@quinnemanuel.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`ericstops@quinnemanuel.com
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`John V. Biernacki
`jvbiernacki@jonesday.com
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`FOR PAR PHARMACEUTICAL, INC. (IPR2015-00551):
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`Aziz Burgy
`Bradford C. Frese
`Aziz.Burgy@arentfox.com
`Bradford.Frese@arentfox.com
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`IPR2015-00551
`Patent 8,457,988 B1
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`Sample Case Caption
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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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`PAR PHARMACEUTICAL, INC. and WOCKHARDT BIO AG,
`Petitioners,
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`v.
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`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
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`Case IPR2015-005511
`Patent 8,457,988 B1
`____________
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`1 Case IPR2015-01814 has been joined with this proceeding.