`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
`
`v.
`
`ICOS CORPORATION
`Patent Owner
`______________________
`
`IPR2017-01762
`Patent No. 6,943,166
`______________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER
`
`
`
`
`
`
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................... 1
`
`STATEMENT OF MATERIAL FACTS ..................................................... 2
`
`
`
`I.
`
`II.
`
`III. ARGUMENT............................................................................................... 4
`
`A.
`
`Joinder to the Mylan IPR Is Not Appropriate ..................................... 4
`
`1.
`
`2.
`
`3.
`
`No Efficiency When No Control Over Experts and Otherwise
`No Overlap in Experts ............................................................. 5
`Joinder Will Not Eliminate the Board’s Need to Evaluate
`Argentum’s Petition ................................................................. 8
`Joinder Will Prevent the Speedy Resolution of the Mylan IPR 9
`
`B.
`
`C.
`
`Petitioner’s Motion Fails to Meet Burden of Explaining the Impact of
`Joinder on the Trial Schedule, Briefing, or Discovery .......................11
`
`Joinder Will Negatively Impact the Existing Trial and Prejudice
`Patent Owner ....................................................................................12
`
`D.
`
`The Board’s Decision in the Convergent IPRs Does Not Control .....14
`
`IV. CONCLUSION ..........................................................................................15
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2017-01762
`Patent No. 6,943,166
`
` Page(s)
`
`Federal Cases
`
`Bouygues Telecom, S.A. v. Tekelec,
`472 F. Supp. 2d 722 (E.D.N.C. 2007) ................................................................ 7
`
`Malletier v. Dooney & Bourke, Inc.,
`525 F.Supp.2d 558 (S.D.N.Y.2007) ................................................................... 7
`
`Patent Trial and Appeal Board Cases
`
`AT&T Services, Inc. v. Convergent Media Solutions, LLC,
`IPR2017-01237, Paper 10 (PTAB May 10, 2017). ........................................... 14
`
`Arris Group, Inc. v. Mobile Telecommunications Tech., LLC,
`IPR2016-00765, Paper 15 (PTAB September 21, 2016). ............................. 4, 10
`
`Conopco, Inc. v. The Procter & Gamble Co.,
`IPR2013-00510, Paper 9 (PTAB February 12, 2014) ......................................... 6
`
`Kyocera Corp. v. SoftView LLC,
`Case IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ............................... 2, 11
`
`Sierra Wireless America, Inc. v. M2M Solutions LLC,
`IPR2016-00853, Paper 16 (PTAB September 20, 2016) ............................. 11, 14
`
`Toyota Motor Corp. v. Am. Vehicular Sciences LLC,
`IPR2015-00261, Paper 10 (PTAB January 29, 2015) ......................................... 7
`
`Whole Space Indus. Ltd. v. Zipshade Indus. (BVI) Corp.,
`IPR2015-00488, Paper 14 (PTAB July 24, 2015)............................................... 6
`
`ZTE Corp. v. Adaptix, Inc.,
`IPR2015-01184, Paper 10 (PTAB July 24, 2015)............................................... 8
`
`Federal Statutes
`
`35 U.S.C. § 315(b) ................................................................................................ 13
`
`35 U.S.C. § 315 (c) ..................................................................................... 2, 4, 8, 9
`
`
`
`ii
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`35 U.S.C. § 316 (a)(11) ......................................................................................... 13
`
`Rules
`
`Fed. R. Evid. 702 .................................................................................................... 7
`
`Regulations
`
`37 C.F.R. § 1.7 ........................................................................................................ 4
`
`37 C.F.R. § 42.1 ...................................................................................................... 9
`
`37 C.F.R. § 42.1(a) ................................................................................................. 4
`
`37 C.F.R. § 42.1(b) ................................................................................................. 1
`
`37 C.F.R. § 42.6(a)(3) ............................................................................................. 6
`
`37 C.F.R. § 42.20(c) ............................................................................................... 1
`
`37 C.F.R. § 42.51(b)(1)(ii) ...................................................................................... 5
`
`37 C.F.R. § 42.104(b)(5) ......................................................................................... 6
`
`Other Authorities
`
`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) ...................................................... 8
`
`Office Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ..................... 4, 10
`
`
`
`iii
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2017-01762
`Patent No. 6,943,166
`
`Argentum Pharmaceuticals LLC’s (“Argentum”) motion for joinder to
`
`IPR2017-00323 (“the Mylan IPR”), should be denied as it fails to meet the burden
`
`of showing that joinder is appropriate. 37 C.F.R. § 42.20(c). To the contrary,
`
`joinder of Argentum will needlessly complicate and extend the Mylan IPR that
`
`Mylan and Patent Owner (ICOS Corp.) have already moved to terminate—
`
`contravening the Board’s charge to resolve “every proceeding” in a “just, speedy,
`
`and inexpensive” manner. 37 C.F.R. §§ 42.1(b) (emphasis added).
`
`Argentum’s efficiency argument is based in part on its reliance on the expert
`
`declarations from the Mylan IPR. But because Argentum admittedly lacks control
`
`over Mylan’s experts, Patent Owner will be unable conduct routine cross-
`
`examination and those expert declarations will be inadmissible hearsay. Given its
`
`reliance on admittedly unavailable experts, Argentum’s Petition should not be
`
`instituted. But if instituted and joined, Patent Owner will be prejudiced by their
`
`unavailability and the proceedings will be needlessly complicated. Argentum’s
`
`introduction of its own additional experts demonstrates that its evidence is not
`
`“identical” to the Mylan IPR and joinder will add complexity, not simplicity.
`
`Argentum’s argument that joinder will avoid “duplicate” efforts by the Board
`
`ignores that, even with joinder, the Board still needs to consider the substance of
`
`Argentum’s petition and Patent Owner’s preliminary response thereto. See 35
`
`
`
`1
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`U.S.C. 315 (c). Nor can Argentum attempt to ride on the coattails of Dr. Reddy’s
`
`Laboratories’s (“DRL”), petitioner in IPR2017-01757, as DRL is seeking to
`
`terminate that IPR.
`
`Argentum’s motion also fails due to its omission of the required specific
`
`discussion of the impact that joinder would have on the trial schedule, or how
`
`briefing and discovery may be simplified. See Kyocera Corp. v. SoftView LLC,
`
`Case IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013) (representative).
`
`Indeed, joinder at this stage will have a considerable negative impact.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`Patent Owner presents a complete chronological timeline of the events
`
`relevant to Argentum’s motion for joinder:
`
`1. November 22, 2016: Petitioner, Mylan Pharmaceuticals, Inc. filed a
`
`petition in IPR2017-00323 (“the Mylan IPR”). (IPR2017-00323, Paper 2.) The
`
`Petition challenged the patentability of claims 1–12 based on a single ground—
`
`obviousness over the combination of Daugan, SNDA, and the FDA Guideline and
`
`relied on the declarations of Drs. Grass and Issa. (IPR2017-00323, Paper 12 at 4.)
`
`2. March 13, 2017: Patent Owner filed a preliminary response in the
`
`Mylan IPR. (IPR2017-00323, Paper 9.)
`
`3. June 12, 2017: the Mylan IPR was instituted based on sole proposed
`
`ground of unpatentability, and cited the testimony Dr. Grass. (IPR2017-00323,
`
`
`
`2
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`
`Paper 12 at 14, 17.)
`
`4. July 7, 2017: A joint motion to terminate the proceedings was filed by
`
`the parties in the Mylan IPR, stating that the parties had settled their disputes
`
`regarding the ’166 patent, that the litigation between the parties had been settled,
`
`and requesting termination of the Mylan IPR. (IPR20107-00323, Paper 16.)
`
`5. July 10, 2017: DRL filed a petition in IPR2017-01757 concurrent with
`
`a motion for joinder to the Mylan IPR. (IPR2017-01757, Papers 2 and 3.) DRL
`
`emailed the Board on August 14, 2017, notifying the Board that DRL wishes to
`
`withdraw its petition and motion for joinder (IPR2017-01757, Paper Nos. 2 and 3),
`
`and requesting authorization to file a joint motion to terminate IPR2017-01757.
`
`6. July 12, 2017: Eight months after Mylan’s petition, Argentum filed a
`
`petition in IPR2017-01762 concurrent with a motion for joinder to the Mylan IPR.
`
`(Papers 2 and 3.) Argentum’s motion substantially copies DRL’s motion. Patent
`
`Owner has not filed any complaint against Argentum regarding the ’166 patent.
`
`7. Argentum’s petition repeatedly cites the expert declarations from the
`
`Mylan IPR. (Paper 2 at 1, 6-7, 9-11, etc.) Argentum’s Motion for Joinder states
`
`that “no consent has been given” to retain Mylan’s experts. (Paper 3 at 5.)
`
`8. Argentum’s petition also includes expert declarations from Dr. Carson
`
`and Dr. Corbin, incorporating the “findings and conclusions” of the Mylan IPR
`
`experts. (Ex. 1037 at 4; Ex. 1038 at 4.) Drs. Carson and Corbin are different
`
`
`
`3
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`experts than in the Mylan IPR. (IPR2017-00323, Ex. 1002 (Dr. Grass Declaration),
`
`Ex. 1004 (Dr. Issa Declaration).)
`
`9. The scheduling order in the Mylan IPR sets August 28, 2017 as the
`
`due date for filing Patent Owner’s response. (IPR2017-00323, Paper 13
`
`(Scheduling Order) at 6.)
`
`10. A preliminary response to Argentum’s petition is due by November
`
`6, 2017 (November 5 falling on a Sunday). (Paper 6); 37 C.F.R. §§ 1.7, 42.1(a).
`
`III. ARGUMENT
`Joinder to the Mylan IPR Is Not Appropriate
`A.
`Consistent with the strong public policy considerations that favor settlement
`
`between parties to an inter partes review proceeding (see Office Trial Practice
`
`Guide, 77 Fed. Reg. 48756 at 48768 (Aug. 14, 2012)), the parties to the Mylan IPR
`
`reached an agreement regarding their dispute over the ’166 patent and jointly
`
`moved to terminate the proceeding. IPR2017-00323, Paper 18 (July 7, 2017). If the
`
`Mylan IPR is terminated as Patent Owner submits is warranted, joinder is moot.
`
`See 35 U.S.C. § 315(c); see also Arris Group, Inc. v. Mobile Telecommunications
`
`Tech., LLC, IPR2016-00765, Paper 15 at 13 (PTAB September 21, 2016).
`
`Argentum asserts that terminating the Mylan IPR only with respect to
`
`Mylan, and then joining Argentum, is appropriate because “joinder promotes
`
`efficiency” and “public policy.” (Mot. at 2.) Argentum’s boilerplate efficiency and
`
`
`
`4
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`public policy assertions, however, are disconnected from the facts of this case.
`
`Here, Argentum’s reliance on Mylan’s experts outside of its control and on an
`
`additional set of experts different from Mylan adds complexity, not efficiency.
`
`Joinder would not preserve Board resources, as the Board would separately need to
`
`consider Argentum’s Petition in view of Patent Owner’s forthcoming preliminary
`
`response. Joinder would also impede the speedy resolution of the Mylan IPR,
`
`which is ripe for termination. Public policy favoring settlement, as the parties have
`
`reached in the Mylan IPR, also weighs against joinder.
`
`1.
`
`No Efficiency When No Control Over Experts and
`Otherwise No Overlap in Experts
`
`As Argentum admits, it does not have consent to use Mylan’s experts, yet
`
`continues to rely on their testimony. (Mot. at 4-5; (Paper 2 (citing to Exs. 1002 and
`
`1004 from the Mylan IPR for substantive support.).) Contrary to Argentum’s
`
`assertions, it would not be efficient to proceed under a scenario where Argentum
`
`lacks control over Mylan’s experts and therefore cannot produce them for cross-
`
`examination. Patent Owner will be prejudiced by being unable to depose experts
`
`who submitted declarations, and upon whom Argentum and the Board in the
`
`Mylan IPR relied. 37 C.F.R. § 42.51(b)(1)(ii); IPR2017-00323, Paper 12 at 13-14
`
`(June 12, 2017) (citing the testimony of Mylan’s expert Dr. Grass).
`
`Argentum’s reliance on two additional experts does not cure its improper
`
`and prejudicial reliance on the Mylan IPR experts. This case is distinct from
`
`
`
`5
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`situations where the party seeking to join an IPR uses the same expert declarant as
`
`the existing and active petitioner in the case. And, notably, Argentum cites no case
`
`where the joining party’s expert differed from the expert in the instituted IPR and
`
`the joined case proceeded with only the joining party’s expert. Rather than increase
`
`efficiency, joinder with different experts will result in more complications than if
`
`the cases remain separate. Argentum does not credibly argue otherwise.
`
`First, Argentum’s Petition omits any substantive citation to the testimony of
`
`its secondary experts Drs. Carson or Corbin. (See generally Paper 2 at 1 (citing
`
`Exs. 1037 and 1038 only on page 1).) A trial should not proceed based on
`
`testimony that was never discussed in the Petition. 37 C.F.R. § 42.104(b)(5)(“The
`
`Board may exclude or give no weight to the evidence where a party has failed to
`
`state its relevance or to identify specific portions of the evidence that support the
`
`challenge.”); Conopco, Inc. v. The Procter & Gamble Co., IPR2013-00510, Paper
`
`9 at 8 (PTAB February 12, 2014) (“We decline to consider information presented
`
`in a supporting declaration, but not discussed in a petition . . . .”). In addition, the
`
`declarations of Drs. Carson and Corbin merely incorporate by reference the Mylan
`
`IPR declarations and therefore should be disregarded. 37 C.F.R. § 42.6(a)(3)
`
`(“Arguments must not be incorporated by reference from one document into
`
`another document.”); Whole Space Indus. Ltd. v. Zipshade Indus. (BVI) Corp.,
`
`IPR2015-00488, Paper 14 at 12-13 (PTAB July 24, 2015) (declining to consider
`
`
`
`6
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`arguments only incorporated by reference and not presented in the Petition);
`
`Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 664 (S.D.N.Y.2007) (“the
`
`expert witness . . . cannot simply be a conduit for the opinion of an unproduced
`
`expert.”); Bouygues Telecom, S.A. v. Tekelec, 472 F. Supp. 2d 722, 729 (E.D.N.C.
`
`2007) (“the wholesale adoption of the opinion of another expert verbatim cannot
`
`be within the intent of Fed.R.Evid. 702” and the court “necessarily must ensure
`
`that [the expert] is not merely parroting the opinions of others”).
`
`Second, joinder with a lack of identify of experts will result in a more
`
`complicated proceeding than if the cases remain separate. For example, Argentum
`
`does not address how it would be possible to proceed on the same schedule of the
`
`Mylan IPR when Patent Owner’s response in the Mylan IPR is due on August 28,
`
`2017, Mylan’s experts are not available for a deposition since Mylan is no longer
`
`participating in the Mylan IPR, Patent Owner’s Preliminary Response in the
`
`Argentum IPR is not due before November 6th (see supra II.10), and, of course, the
`
`Argentum IPR has not been instituted.
`
`Third, Argentum asserts its expert declarations are substantially identical to
`
`those in the Mylan IPR. (Mot. at 5.) But Argentum’s reliance on entirely different
`
`experts necessarily introduces new issues, such as the experts’ qualifications. See
`
`Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2015-00261, Paper 10 at 5
`
`(PTAB Jan. 29, 2015) (denying motion for joinder and noting that the reliance on a
`
`
`
`7
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`different expert was a “significant difference”); see also ZTE Corp. v. Adaptix,
`
`Inc., IPR2015-01184, Paper 10 at 4-5 (PTAB July 24, 2015).
`
`Fourth, Argentum’s assertions regarding taking an understudy role to DRL
`
`are unpersuasive and do not weigh in favor of joinder. (Mot. at 6.) Argentum has
`
`not secured any agreement with DRL and Argentum asserts that it may submit
`
`“separate filings” if it disagrees with DRL. Moreover, DRL emailed the Board on
`
`August 14, 2017, notifying the Board that DRL wishes to withdraw its petition and
`
`motion for joinder (IPR2017-01757, Paper Nos. 2 and 3), and requesting
`
`authorization to file a joint motion to terminate IPR2017-01757. Any alleged
`
`potential efficacy from coordination with, or trying to piggyback on, DRL is
`
`therefore moot.
`
`In this case, the inefficiency and prejudice resulting from Argentum’s lack
`
`of control over the experts cited in its Petition and the otherwise lack of expert
`
`overlap counsels strongly against joinder. See 35 U.S.C. §315(c) (the decision to
`
`grant joinder is discretionary); see 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011)
`
`(statement of Sen. Kyle noting discretionary nature of joinder and identifying only
`
`“identical petitions” that would be joined “as a matter of right”).
`
`2.
`
`Joinder Will Not Eliminate the Board’s Need to Evaluate
`Argentum’s Petition
`
`Argentum argues that institution of its Petition as a “novel IPR” would
`
`require the Board to “restart the review process, which would duplicate past
`
`
`
`8
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`efforts.” (Mot. at 2; see also Mot. at 4 (noting that joinder would “avoid de novo
`
`review of the same IPR”).) Indeed, it is a “novel IPR” as the Petition uniquely
`
`depends entirely on Mylan’s unavailable experts—necessarily
`
`inadmissible
`
`hearsay—and does not cite its own expert declarations even once. Argentum
`
`presumes that the Board does not have to consider the merits of its Petition, Patent
`
`Owner’s preliminary response to its Petition, or write an institution decision on its
`
`Petition. Argentum is mistaken. Under 35 U.S.C. 315(c), joinder may only occur
`
`after the Director receives a preliminary response (or the time for filing one has
`
`expired) and determines that Argentum’s petition warrants institution. Argentum
`
`fails to specifically identify any task of the Board that joinder would remove.
`
`Moreover, because the Mylan IPR should be terminated, there is no future
`
`duplication of efforts avoided by joinder, only a needless complication of the
`
`schedule (see infra at III.C). Argentum’s vague assertion that joinder will be a
`
`more efficient use of Board time and resources therefore lacks support and should
`
`be deemed unpersuasive.
`
`3.
`
`Joinder Will Prevent the Speedy Resolution of the Mylan
`IPR
`
`Argentum incorrectly asserts that public policy weighs in favor of joinder by
`
`securing the “just, speedy, and inexpensive resolution of patentability issues,
`
`including the determination of validity of the challenged claims of the ’166
`
`patent.” (Mot. at 4.) But 37 C.F.R. § 42.1, requires the just, speedy, and
`
`
`
`9
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`inexpensive resolution of every “proceeding”−not patent or the patentability of
`
`challenged claims. As the parties in the Mylan IPR proceeding have submitted a
`
`joint motion to terminate, Argentum’s proposed joinder can only delay resolution
`
`and increase the expense of that proceeding. See Arris Group, IPR2016-00765,
`
`Paper 13 at 3. Public policy therefore dictates the opposite of what Argentum
`
`asserts—termination of the Mylan IPR (“the just, speedy, and inexpensive
`
`resolution of [that] proceeding”) and denial of Argentum’s motion for joinder.
`
`Argentum also provides no support for its assertion that joinder would even result
`
`in a speedier resolution of the patentability of the ’166 patent claims. (See Mot. at
`
`2, 4.) As set forth below, because Argentum doesn’t explain the impact joinder
`
`would have on the trial proceedings, this claim is unsubstantiated.
`
`Argentum’s argument that a “decision on validity of the ’166 patent has the
`
`potential to minimize issues and potentially resolve any litigation with respect to
`
`the ’166 patent” (Mot. at 4 (emphasis added)) is expressly and excessively
`
`speculative to weigh in favor of joinder, especially as there is no pending litigation
`
`between Patent Owner and Argentum regarding the ’166 patent.
`
`In addition to being counter to the PTO’s policy promoting the just, speedy,
`
`and inexpensive resolution of proceedings, joinder in this case is also counter to
`
`the strong public policy favoring settlement between parties in IPR proceedings.
`
`See 77 Fed. Reg. at 48768. As the Trial Practice Guide states, “the Board expects
`
`
`
`10
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`that a proceeding will terminate after the filing of a settlement agreement, unless
`
`the Board has already decided the merits of the proceeding.” Id; (IPR2017-00323,
`
`Paper 12 (Mylan IPR is at a stage after institution, but before the patent owner
`
`response, with no final decision on the merits). Parties may be less likely to pursue
`
`settlement and move to terminate a proceeding if there is considerable uncertainty
`
`over whether the Board will indeed terminate the entire proceeding.
`
`B.
`
`Petitioner’s Motion Fails to Meet Burden of Explaining the
`Impact of Joinder on the Trial Schedule, Briefing, or Discovery
`
`In the Board’s representative Kyocera Corp. opinion, it stated that a joinder
`
`motion must “explain how the impact on the schedule and costs of the current
`
`proceedings will be minimized . . . [and] address how briefing and/or discovery
`
`may be simplified to minimize schedule impact.” IPR2013-00004, Paper 15 at 4.
`
`Argentum’s motion fails to meet this burden.
`
`With respect to trial impact, Argentum states that it agrees to adhere to the
`
`Mylan IPR deadlines and that the trial schedule “should not be adversely
`
`impacted.” (Mot. at 5.) This is insufficient. See Sierra Wireless America, Inc. v.
`
`M2M Solutions LLC, IPR2016-00853, Paper 16 at 3 (PTAB September 20, 2016)
`
`(finding that petitioner’s general statements regarding the schedule did not
`
`sufficiently address the impact joinder). Argentum fails to address how the Mylan
`
`IPR schedule could be adhered to when Patent Owner’s response is due on August
`
`28, 2017, but a preliminary response to Argentum’s Petition is not due until
`
`
`
`11
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`November 6, 2017. (Paper 6; see supra II.10.) Under the schedule in the Mylan
`
`IPR, Petitioner’s reply may be due before Argentum is even joined. Argentum’s
`
`motion should be denied at a minimum based on its insufficient oversimplification
`
`of the impact joinder will have on the trial schedule, as well as on the merits
`
`because joinder here would necessary adversely affect the trial schedule.
`
`With respect to briefing and discovery, Argentum simply states that the
`
`depositions should be no more complicated because the expert’s analysis is the
`
`same. (Mot. at 6.) But as discussed above, this does not address what experts will
`
`be deposed (Mylan’s, DRL’s, Argentum’s, or some combination thereof) or when
`
`they even could be deposed. It fails to address any modifications needed to the
`
`procedure for exhibit objections: whether Patent Owner’s objections to Mylan’s
`
`exhibits (IPR2017-00323, Paper 15) should apply to Argentum’s exhibits; whether
`
`Argentum is adopting Mylan’s objections (IPR2017-00323, Paper 14); the time for
`
`new exhibit objections (e.g. to new expert declarations); whether the supplemental
`
`evidence served by Patent Owner on Mylan should be served on Argentum; or
`
`whether Argentum will move to serve any supplemental evidence in response to
`
`Patent Owner’s objections. Argentum’s motion should therefore be denied for its
`
`failure to address any of these briefing and discovery issues.
`
`C.
`
`Joinder Will Negatively Impact the Existing Trial and Prejudice
`Patent Owner
`
`Argentum’s petition was filed nearly eight months after the Mylan IPR
`
`
`
`12
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`petition. Joinder under the current Mylan IPR schedule (as Argentum asserts), to
`
`the extent theoretically possible, would be incredibly complicated, and either
`
`extend the pendency of the Mylan IPR or be unduly prejudicial to Patent Owner. In
`
`contrast, Argentum would not be harmed by allowing its petition to proceed in due
`
`course because they are not barred in these current proceedings and do not need to
`
`rely on joinder to avoid a bar under 35 U.S.C. § 315(b).
`
`To conduct the Mylan IPR following joinder of Argentum, the date for the
`
`final determination of the Mylan IPR would need to be extended. The Mylan IPR
`
`was instituted on June 12, 2017. A final decision is therefore currently due by June
`
`12, 2018. 35 U.S.C. §316 (a)(11). A preliminary response to the Argentum petition
`
`is not due, however, until November 6, 2017. (Paper 6, see supra II.10.) To allow
`
`the Board and the parties the full benefit of the one year timeline of a typical IPR
`
`proceeding, the June 12, 2018 date would need to be extended. Id. An extension
`
`would be the antithesis of a “speedy resolution” of the Mylan IPR, and especially
`
`not appropriate when Argentum could have copied Mylan’s petition against the
`
`’166 patent and filed it at any time in the last eight months.
`
`If the Mylan IPR timeline is not extended, Patent Owner would be deprived
`
`of the necessary time to present a complete defense of its patent. For example,
`
`assuming the Board institutes immediately following a November preliminary
`
`response, only seven months would remain to conduct the trial and write a final
`
`
`
`13
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`decision before June 12, 2018. Either Patent Owner, Petitioner, the Board, or all
`
`parties would have to needlessly sacrifice significant portions of its time to meet
`
`this deadline. Under either scenario, joinder would have a significant negative
`
`impact on the Mylan IPR schedule. Argentum’s motion should therefore be denied.
`
`D. The Board’s Decision in the Convergent IPRs Does Not Control
`Argentum incorrectly states that joinder would comport with the Board’s
`
`decision in the Convergent IPRs, which it asserts is applicable. (Mot. at 1.) To the
`
`contrary, the Board looks at issues of joinder on a case-by-case basis, “taking into
`
`account the particular facts of each case, substantive and procedural issues, and
`
`other considerations.” Sierra Wireless America, Inc., IPR2016-00853, Paper 16 at
`
`3. Because the Board’s Convergent IPR decisions concerned entirely distinct facts,
`
`it is neither applicable nor comports with the present case.
`
`In the Convergent IPRs, the Board granted joinder of a second IPR against
`
`Convergent before terminating the petitioner in the first filed IPR. AT&T Services,
`
`Inc. v. Convergent Media Solutions, LLC, IPR2017-01237, Paper 10 at 2, 24-27
`
`(PTAB May 10, 2017). The Board noted, however, that patent owner waived its
`
`right to file a preliminary response, petitioner in the second IPR used the same
`
`expert from the first IPR, and that under the “particular circumstances of this case”
`
`the Board would act on the motion for joinder before the motion to terminate
`
`because it was filed first. Id. Here, Patent Owner has not waived (and is not
`
`
`
`14
`
`
`
`IPR2017-01762
`Patent No. 6,943,166
`waiving) its right to file a preliminary response; Argentum does not have control
`
`over the experts in the Mylan IPR and used two additional experts; and the motion
`
`to terminate the Mylan IPR was filed before Argentum’s motion for joinder (Mot.
`
`at 1). Accordingly, none of the “particular circumstances” relied on by the Board in
`
`the Convergent IPRs apply to this case. Argentum failed to discuss any of these
`
`distinctions or explain why the Convergent IPRs should be applicable in light of
`
`these differences. Indeed, the lack of overlap in timing and experts counsels
`
`against joinder.
`
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner submits that joinder is not
`
`appropriate and therefore the Board should deny Petitioner’s motion.
`
`Dated: August 14, 2017
`
`Respectfully submitted,
`
`
`/ Maureen D. Queler /
`By:
`Mark J. Feldstein, Reg. No. 46,693
`Maureen D. Queler, Reg. No. 61,879
`Finnegan, Henderson, Farabow, Garrett
` & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`(202) 408-4000
`Counsel for Patent Owner in IPR2017-01757
`
`
`
`15
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR JOINDER
`
`was served on August 14, 2017, via electronic mail directed to counsel of record
`
`for the Petitioner at the following:
`
`
`
`Kevin Laurence (Reg. 38,219) klaurence@lpiplaw.com;
`
`Matthew Phillips (Reg. No. 43,403) mphillips@lpiplaw.com
`
`Tyler C. Liu (Reg No. 72,126) tliu@agpharm.com
`
`LAURENCE & PHILLIPS IP LAW LLP
`1940 Duke Street, Suite 200
`Alexandria, VA 22314
`
`
`Petitioner has consented to electronic service.
`
`
`
`
`
`
`
`
`
`Date: August 14, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` By: / John W. Kozikowski /
`
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
