UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APOTEX INC. and APOTEX CORP.
`Petitioner
`v.
`
`ALCON RESEARCH, LTD
`Patent Owner
`
`
`Patent No. 8,791,154
`Issue Date: July 29, 2014
`Title: HIGH CONCENTRATION OLOPATADINE
`OPHTHALMIC COMPOSITION
`_______________
`
`Inter Partes Review No. 2016-01640
`
`
`
`MOTION FOR JOINDER
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 1
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APOTEX INC. and APOTEX CORP.
`Petitioner
`v.
`
`ALCON RESEARCH, LTD
`Patent Owner
`
`
`Patent No. 8,791,154
`Issue Date: July 29, 2014
`Title: HIGH CONCENTRATION OLOPATADINE
`OPHTHALMIC COMPOSITION
`_______________
`
`Inter Partes Review No. 2016-01640
`
`
`
`MOTION FOR JOINDER
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 1
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`
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED ........................ 1
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`II. BACKGROUND ............................................................................................. 1
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ................... 2
`
`A.
`
`Joinder is Appropriate ................................................................................ 3
`
`B. No New Grounds of Unpatentability Are Asserted .................................. 4
`
`C.
`
`Joinder Will Not Impact the Existing Schedule ....................................... 4
`
`D. Discovery and Briefing Can Be Simplified ............................................... 4
`
`IV. CONCLUSION ............................................................................................... 5
`
`
`
`
`
`
`
`i
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`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 2
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`
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Petitioners Apotex Inc. and Apotex Corp. (collectively, “Apotex” or the
`
`“Petitioners”) respectfully request joinder pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b) of the above-captioned inter partes review (hereinafter “Apotex
`
`IPR”) with the pending inter partes review concerning the same patent and the
`
`same two grounds of invalidity in Argentum Pharmaceuticals LLC v. Alcon
`
`Research, Ltd., Case No. IPR2016-00544 (“Argentum IPR”), which was instituted
`
`on July 18, 2016. Joinder is appropriate because it will promote efficient and
`
`consistent resolution of the validity of a single patent and will not prejudice any of
`
`the parties to the Argentum IPR.
`
`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as it is submitted within one month of July 18, 2016, the date on which the
`
`Argentum IPR was instituted.
`
`II. BACKGROUND
`On February 2, 2016, Argentum filed a Petition for inter partes review
`
`challenging claims 1-4, 8, 12, 13, 21, and 22 of the ’154 patent, which was assigned
`
`Case No. IPR2016-00544. On July 18, 2016, the Board instituted review on claims
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`1-4, 8, 12, 13, 21, and 22 on the following two grounds:
`
`(1) Claims 1-4, 8, 12, 13, 21, and 22 as obvious under 35 U.S.C. § 103
`
`over Bhowmick, Yanni, and Castillo; and
`
`
`
`1
`
`
`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 3
`
`
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`(2) Claims 1-4, 8, 12, 13, 21, and 22 as obvious under 35 U.S.C. § 103
`
`over Schneider, Hayakawa, Bhowmick, and Castillo.
`
`The accompanying Petition presents only the identical grounds on which the
`
`Argentum IPR was instituted.
`
`
`
`Argentum has represented to Apotex that it will not oppose this Motion for
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`Joinder.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
`
`review proceedings. The statutory provision governing joinder of inter partes
`
`review proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(c) JOINDER.--If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as
`a party to that inter partes review any person who
`properly files a petition under section 311 that the
`Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter
`partes review under section 314.
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of substantive and procedural issues on the proceedings, as well as other
`
`considerations, while being “mindful that patent trial regulations, including the
`
`rules for joinder, must be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” See Dell, Inc. v. Network-1 Security Solutions,
`
`Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board should
`
`
`
`2
`
`
`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 4
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`
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`consider “the policy preference for joining a party that does not present new issues
`
`that might complicate or delay an existing proceeding.” Id. at 10. Under this
`
`framework, joinder of the present Apotex IPR with the Argentum IPR is
`
`appropriate.
`
`“A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified.” Id. at 4. Each of these is addressed fully below.
`
`Joinder is Appropriate
`
`A.
`Joinder with the Argentum IPR is appropriate here because the Apotex IPR
`
`is limited to the same grounds instituted in the Argentum IPR and it relies on the
`
`same prior art analysis and expert testimony submitted by Argentum. The Apotex
`
`IPR is identical with respect to the grounds raised in the Argentum IPR, and does
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`not include any grounds not raised in that proceeding.
`
`Joinder is also appropriate because it will promote the just, speedy, and
`
`inexpensive resolution of patentability issues, including the determination of
`
`validity of the challenged claims of the ’154 patent. For example, a final written
`
`decision on the validity of the ’154 patent has the potential to minimize issues and
`
`potentially resolve any litigation with respect to the ’154 patent.
`
`
`
`3
`
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`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 5
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`
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`B. No New Grounds of Unpatentability Are Asserted
`The Apotex IPR does not present any new grounds of unpatentability. As
`
`mentioned above, the Apotex IPR only presents the grounds from the Argentum
`
`IPR that have been instituted. Additionally, the Apotex IPR is based on the same
`
`prior art analysis and expert testimony submitted by Argentum.
`
`Joinder Will Not Impact the Existing Schedule
`
`C.
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
`
`42.100(c) provide that inter partes review proceedings should be completed and
`
`the Board’s final decision issued within one year of institution of the review. In
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`this case, joinder will not affect the Board’s ability to issue the decision within this
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`required one-year timeframe because the Petition filed in the present Apotex IPR is
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`identical to the Argentum IPR.
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`D. Discovery and Briefing Can Be Simplified
`Apotex respectfully proposes procedures to simplify any further briefing and
`
`discovery, which will minimize any potential impact on the schedule or the volume
`
`of materials to be submitted to the Board. Given that the petitioners will be
`
`addressing the identical grounds for challenging the claims at issue, the Board may
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`adopt procedures similar to those adopted in Dell, Inc. v. Network-1 Security
`
`Solutions, Inc., IPR2013-00385 and Motorola Mobility LLC v. SoftView LLC,
`
`IPR2013-00256. In those cases, the Board ordered the petitioners to file
`4
`
`
`
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`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 6
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`
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`consolidated filings, for which the first petitioner was responsible, and allowed the
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`new petitioner to file seven additional pages with corresponding additional
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`responsive pages allowed to the Patent Owner. IPR2013-00385, Paper 17 at 8;
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`IPR2013-00256, Paper 10 at 8-9. This procedure would minimize any
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`complication or delay caused by joinder, as the Board recognized in those cases.
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`As in Cases IPR2013-00385 and IPR2013-00256, the petitioners in this case can
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`work together to manage the questioning at depositions and presentations at the
`
`hearing to avoid redundancy. IPR2013-00385, Paper 17 at 9; IPR2013-00256,
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`Paper 10 at 9-10.
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`IV. CONCLUSION
`For the foregoing reasons, Apotex respectfully requests that its Petition for
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`inter partes review of U.S. Patent No. 8,791,154 be instituted and that the
`
`proceeding be joined with Argentum Pharmaceuticals LLC v. Alcon Research,
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`Ltd., Case No. IPR2016-00544.
`
`
`Dated: August 18, 2016
`
`
`
`
`
`
`
`
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`Respectfully submitted,
`
`/Teresa Stanek Rea/
`Teresa Stanek Rea, Reg. No. 30,427
`Deborah H. Yellin, Reg. No. 45,904
`Vincent J. Galluzzo, Reg. No. 67,830
`CROWELL & MORING LLP
`Intellectual Property Group
`P.O. Box 14300
`Washington, DC 20044-4300
`
`5
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`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 7
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
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`August 18, 2016, a complete copy of the foregoing Motion for Joinder Pursuant to
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`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) was served via FedEx® on the
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`Patent Owner by serving the correspondence address of record for the ʼ154 Patent:
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`Novartis Pharmaceutical Corporation
`Intellectual Property Department
`One Health Plaza 433/2
`East Hanover NJ 07936-1080
`
`
`/Teresa Stanek Rea/
`Teresa Stanek Rea
`
`
`
`
`
`
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`6
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`IPR2018-01020 and IPR2018-01021, Exhibit 1022, Page 8
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