Trials@uspto.gov
`571-272-7822
`
`Paper: 82
`Date: September 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY,
`Patent Owners.
`
`Case IPR2017-01995
`Patent 9,220,698 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, MICHELLE N. ANKENBRAND
`and DEBRA L. DENNETT, Administrative Patent Judges.
`
`DENNETT, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing of Denial of Refund
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper: 82
`Date: September 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY,
`Patent Owners.
`
`Case IPR2017-01995
`Patent 9,220,698 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, MICHELLE N. ANKENBRAND
`and DEBRA L. DENNETT, Administrative Patent Judges.
`
`DENNETT, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing of Denial of Refund
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`On November 6, 2019, Mylan Pharmaceuticals Inc. (“Petitioner” or
`
`“Mylan”) filed a Request for Rehearing (Paper 80, “Rehearing Request” or
`
`“Reh’g Req.”) of the Notice of Refund Denial of Petitioner’s Request for
`
`Refund of Post-Institution Fees (Paper 78, “Refund Denial Notice”).
`
`We deny the Rehearing Request for the reasons set forth below.
`
`I. BACKGROUND
`
`Mylan filed its Petition (Paper 2) on August 24, 2017. Patent Owners’
`
`Preliminary Response argued, inter alia, that the Petition was barred under
`
`35 U.S.C. §§ 315(a) and (b). Paper 10, 5–12. We addressed Patent Owner’s
`
`§ 315 arguments in our March 8, 2018 decision instituting trial, finding them
`
`unpersuasive based on then-existing precedential Federal Circuit and Board
`
`decisions. Paper 18, 12–15; see id. at 13–15 (explaining that a voluntary
`
`dismissal of an action without prejudice “leaves the parties as though the
`
`action had never been brought” and finding that the statutory bars set forth in
`
`§§ 315(a) and (b) did not apply to the proceeding) (citations omitted); see
`
`also Paper 34 (decision denying Patent Owners’ request for rehearing of our
`
`
`
`decision instituting trial). 0F1
`
`On August 16, 2018, the Federal Circuit issued its decision in Click-
`
`to-Call Technologies, Inc. v. Ingenio, Inc., holding that the statutory time bar
`
`for initiating an inter partes review under § 315(b) applies when the
`
`challenger was served with a complaint for patent infringement more than
`
`one year before filing its petition, even if the patent infringement action was
`
`voluntarily dismissed without prejudice. 899 F.3d 1321, 1329 (Fed. Cir.
`
`2018).
`
`
`1 We subsequently joined Dr. Reddy’s Laboratories, Inc. as a petitioner to
`this proceeding on August 13, 2018. Paper 47.
`
`2
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`On August 28, 2018, then-Patent Owner Pozen, Inc. filed a notice of
`
`bankruptcy. Paper 50. Shortly thereafter, in accordance with 11 U.S.C.
`
`§ 362, we suspended all deadlines pending resolution of the bankruptcy.
`
`Paper 60. In late December 2018, the bankruptcy court authorized the sale
`
`
`
`of certain assets and lifted the stay of this proceeding. 1F2 Ex. 1051, 19.
`
`Subsequently, we authorized (1) revisions to the Scheduling Order as
`
`a result of the bankruptcy stay lift and (2) additional briefing on the
`
`implications, if any, of the Click-to-Call decision. Paper 60. The parties
`
`filed simultaneous briefs on the effect of Click-to-Call on February 8, 2019
`
`(Papers 63 and 65), and Patent Owners moved to terminate the proceeding
`
`on February 10, 2019 (Paper 66).
`
`On March 27, 2019, we issued a decision vacating institution and
`
`terminating the proceeding based on the Click-to-Call decision. Paper 71
`
`(“Vacatur Decision”). Mylan filed a request for rehearing of the Vacatur
`
`Decision on April 26, 2019. Paper 73.
`
`Before we issued a decision on the request for rehearing, however,
`
`Mylan and Patent Owners filed a joint motion to terminate, explaining that
`
`the parties had settled their dispute. Paper 74 (“Termination Motion”). We
`
`granted the motion to terminate. Paper 76. Mylan filed a Request for
`
`Refund of Post-Institution Fees (Paper 78, “Refund Request”) on August 13,
`
`2019, and we issued the Refund Denial Notice on October 23, 2019.
`
`II. ANALYSIS
`
`A party requesting rehearing bears the burden of showing that the
`
`Board should modify its decision, and “[t]he request must specifically
`
`
`2 Nuvo Pharmaceuticals (Ireland) Designated Activity Company acquired
`Pozen Inc.’s rights in the challenged patent in the bankruptcy sale.
`Ex. 1052.
`
`3
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`identify all matters the party believes the Board misapprehended or
`
`overlooked, and the place where each matter was previously addressed in a
`
`motion, an opposition, or a reply.” 37 C.F.R.§ 42.71(d). Mylan does not
`
`identify any matter that we misapprehended or overlooked in denying the
`
`Refund Request. Mylan instead argues that we reached the wrong
`
`conclusion.
`
`Mylan contends that we erred in issuing the Refund Denial Notice
`
`because we did not institute its Petition for inter partes review. Reh’g
`
`Req. 2. Mylan, however, does not accurately characterize the procedural
`
`record in this case. Contrary to Mylan’s argument, we did institute its
`
`Petition for inter partes review. See Paper 18, 29 (“it is hereby: ORDERED
`
`that the Petition is granted and an inter partes review is instituted . . .”).
`
`Thereafter, the parties proceeded with the trial, filing stipulations to modify
`
`the scheduling order and notices of deposition. See, e.g., Papers 44, 46, 48.
`
`After we lifted the stay of the proceeding due to bankruptcy, Mylan and
`
`Patent Owners continued to litigate this proceeding until we granted their
`
`Joint Termination Motion and terminated Mylan as a Petitioner. During that
`
`time, Mylan contested Patent Owners’ motion to terminate the proceedings
`
`based on Click-to-Call. Papers 64, 68. Mylan also filed a request for
`
`rehearing of our Vacatur Decision. Paper 73. The procedural history of this
`
`proceeding demonstrates that we did not simply “den[y] institution,” as
`
`Mylan argued in its Refund Request and continues to argue on rehearing.
`
`Refund Request 1; Reh’g Req. 4.
`
`Rather, it is more accurate to say that we instituted trial in this
`
`proceeding and then subsequently vacated institution based on the Federal
`
`Circuit’s holding in Click-to-Call that voluntary dismissal of an action does
`
`not nullify the effect of § 315. As we explain above, Mylan fully
`
`4
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`participated in this proceeding until it settled with Patent Owners. Mylan’s
`
`Rehearing Request fails to identify any matter that we misapprehended or
`
`overlooked in denying the Refund Request. Moreover, Mylan fails to
`
`explain why the Board must refund post-institution fees when it
`
`subsequently vacates or dismisses an instituted proceeding.
`
`
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`5
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`FOR PETITIONER:
`
`Brandon M. White
`Emily Greb
`PERKINS COIE LLP
`bmwhite@perkinscoie.com
`egreb@perkinscoie.com
`
`
`
`For PATENT OWNER:
`
`Thomas A. Blinka, Ph.D.
`COOLEY LLP
`TBlinka@cooley.com
`
`Margaret J. Sampson, Ph.D.
`BAKER BOTTS LLP
`Margaret.Sampson@bakerbotts.com
`
`
`
`
`6
`
`
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