Paper No. ____
`Filed: July 6, 2018
`
`Filed on behalf of: Mylan Pharmaceuticals Inc.
`By: Steven W. Parmelee
`
`Michael T. Rosato
`
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`
`_____________________________
`Case IPR2018-01358
`Patent 9,549,938
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§42.22 AND 42.122(b)
`
`
`
`
`
`
`
`
`Filed: July 6, 2018
`
`Filed on behalf of: Mylan Pharmaceuticals Inc.
`By: Steven W. Parmelee
`
`Michael T. Rosato
`
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`
`_____________________________
`Case IPR2018-01358
`Patent 9,549,938
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§42.22 AND 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`Statement of the Precise Relief Requested
`
`Mylan Pharmaceuticals Inc. (“Mylan” or “Petitioner”) submits, concurrently
`
`with this motion, a petition for inter partes review (“Petition”) of claims 1-6 of
`
`U.S. Patent No. 9,549,938 (“the ’938 patent”), which is assigned to Anacor
`
`Pharmaceuticals, Inc. (“Patent Owner”). Mylan respectfully requests joinder
`
`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the concurrently filed
`
`Petition with a pending inter partes review initiated by FlatWing Pharmaceuticals
`
`LLC (“FlatWing”), IPR2018-00168. Petitioner requests joinder as to the instituted
`
`grounds, Grounds 1-4.
`
`Joinder will promote efficiency and consistent resolution of substantively
`
`identical challenges to the same patent. This motion for joinder is timely because it
`
`is filed within one month of the institution decision in IPR2018-00168. Joinder
`
`should create no unfair burden for the Board, Patent Owner, or FlatWing because
`
`these grounds are substantive copies of grounds from the original petition filed in
`
`IPR2018-00168, which Grounds have all been instituted. The present Petition
`
`contains only minor modifications from the petition in IPR2018-00168, such as
`
`changes to address the identity of the petitioner, the request for joinder with
`
`IPR2018-00168, and formatting the Identification of the Challenge as a chart. The
`
`Petition relies upon the expert declaration of Dr. Stephen Kahl, Ph.D (Ex. 1003)
`
`and the expert declaration of Dr. S. Narasimha Murthy, Ph.D (Ex. 1005), each of
`
`-1-
`
`
`
`which was submitted in IPR2018-00168. Petitioner has updated the exhibit
`
`labeling to match the case information for this case.
`
`Absent termination of FlatWing as a party to the proceeding, Mylan
`
`anticipates participating in a joined proceeding in an understudy role. Moreover,
`
`joinder will have no impact on the trial schedule of IPR2018-00168 because that
`
`IPR is still in its early trial stages, and Mylan, in its limited role, is agreeable to the
`
`same schedule. Mylan is not subject to any time-bar under 35 U.S.C. § 315. As
`
`such, Mylan requests institution of the petition even if the Board decides against
`
`joinder with IPR2018-00168.
`
`II. Background
`
`On November 21, 2017, FlatWing filed a petition for inter partes review
`
`challenging claims 1-6 of the ’938 patent, Case No. IPR2018-00168. On June 8,
`
`2018, the Board instituted review on claims 1-6. This Petition is a practical copy of
`
`the IPR2018-00168 petition, including the same prior art analysis and identical
`
`expert testimony. See Pet.
`
`III. Argument
`
`A. Legal Standard
`
`The Board has authority to join as a party any person who properly files a
`
`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
`
`§315(c). A motion for joinder must be filed within one month of institution of any
`
`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
`-2-
`
`
`
`
`
`deciding whether to grant a motion for joinder, the Board considers several factors
`
`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
`
`joined has presented any new grounds of unpatentability; (3) what impact, if any,
`
`joinder would have on the trial schedule for the existing review; and (4) how
`
`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
`
`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
`
`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
`
`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(April 24, 2013)).
`
`B. Mylan’s Motion for Joinder Is Timely
`
`Joinder may be requested no later than one month after the institution date of
`
`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122. Here,
`
`because the Board issued its institution decision in IPR2018-00168 on June 8,
`
`2018, this Motion for Joinder and the accompanying Petition are timely.
`
`C. The Relevant Factors Weigh in Favor of Joinder
`
`Each of the four factors considered by the Board weighs in favor of joinder.
`
`As discussed below, granting joinder will not enlarge the scope of the IPR2018-
`
`00168 beyond that proposed in the original petition and will not negatively impact
`
`the IPR2018-00168 schedule.
`
`
`
`-3-
`
`
`
`1.
`
`Joinder is Appropriate
`
`Joinder with IPR2018-00168 is appropriate because the Petition is limited to
`
`the same grounds proposed in the IPR2018-00168 petition, all of which were
`
`instituted. It also relies on the same prior art analysis and identical expert
`
`testimony to that submitted by FlatWing. Indeed, the Petition is nearly identical
`
`with respect to the grounds raised in the IPR2018-00168 petition, and does not
`
`include any grounds not raised in that petition.
`
`Joinder is also appropriate because it will promote the just, speedy, and
`
`inexpensive resolution of patentability issues, including the determination of
`
`patentability of the challenged claims of the ’938 patent. Mylan is not time-barred
`
`under 35 U.S.C. § 315, so joinder will obviate the need to burden the Board with
`
`two separate IPR trials based on identical grounds and evidence.
`
`Moreover, granting joinder will not prejudice Patent Owner or FlatWing. As
`
`mentioned above, the accompanying Petition does not raise any new ground that is
`
`not raised in the IPR2018-00168 petition. Therefore, joinder should not
`
`significantly affect the timing in IPR2018-00168. Also, there should be little to no
`
`additional cost to Patent Owner or FlatWing given the absence of new grounds. On
`
`the other hand, Mylan and the public may be potentially prejudiced if joinder is
`
`denied. For example, absent joinder, Patent Owner and FlatWing might settle and
`
`
`
`-4-
`
`
`
`request termination of the proceedings, leaving facially intact a patent that the
`
`Board has already found is likely unpatentable.
`
`2.
`
`No New Grounds Are Presented
`
`The Petition does not present any new ground of unpatentability. As
`
`mentioned above, the Petition presents for review substantively identical grounds
`
`from the petition in IPR2018-00168 that have been instituted. The present Petition
`
`is based on the same prior art analysis and expert testimony that was submitted by
`
`FlatWing. The Board has granted joinder where doing so does not introduce any
`
`additional arguments. See, e.g., Hyundai, IPR2014-01543, Paper No. 11 at 2-4;
`
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper No. 13
`
`at 5-9 (Sep. 16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385,
`
`Paper No. 17, at 6-10 (Jul. 29, 2013); Motorola Mobility LLC v. Softview LLC,
`
`IPR2013-00256, Paper 10 at 4-10 (June 20, 2013).
`
`3.
`
`Joinder Will Not Negatively Impact the IPR2018-00168
`Trial Schedule
`
`Because the Petition essentially copies grounds raised in the IPR2018-00168
`
`petition, including the prior art analysis and expert testimony substantively
`
`identical to that provided by FlatWing, joinder will have no substantial effect on
`
`the parties, or prevent the Board from issuing a final written decision in a timely
`
`manner. The timing and content of Mylan’s petition and motion for joinder
`
`minimize any impact to the IPR2018-00168 trial schedule. Moreover, as discussed
`
`
`
`-5-
`
`
`
`above, Mylan anticipates participating in the proceeding in a limited capacity as an
`
`understudy, absent termination of FlatWing as a party. For example, if the
`
`proceedings are joined and absent termination of FlatWing, it is anticipated that no
`
`expert witnesses beyond those presented by FlatWing and Patent Owner will
`
`present testimony. Accordingly, Mylan does not believe that any extension of the
`
`schedule will be required by virtue of joinder of Mylan as a petitioner to this
`
`proceeding.
`
`4.
`
`Discovery and Briefing Can Be Simplified
`
`Given the Petition is identical to the IPR2018-00168 petition with respect to
`
`grounds of unpatentability raised, the Board may adopt procedures similar to those
`
`used in other cases to simplify briefing and discovery during trial. See e.g.,
`
`Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17
`
`at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. Specifically, as long as
`
`FlatWing remains a party, the Board may order petitioners to consolidate filings,
`
`and to limit Mylan to no additional filings in its understudy role. As long as
`
`FlatWing remains a party, Mylan will not submit any separate filings unless it
`
`disagrees with FlatWing’s position (which it is not anticipated), and in the event of
`
`such disagreement it will request authorization from the Board to submit a short
`
`separate filing directed only to points of disagreement with FlatWing. The Board
`
`
`
`-6-
`
`
`
`may allow the Patent Owner a corresponding number of pages to respond to any
`
`separate filings. See Dell Inc., supra, at 8-9.
`
`Further, so long as FlatWing remains a party to IPR2018-00168, no
`
`additional depositions will be needed and depositions will be completed within
`
`ordinary time limits. Additionally, Mylan will not seek to rely on separate expert
`
`testimony than that submitted by FlatWing except to the extent that Mylan may be
`
`precluded from relying on FlatWing’s experts, e.g., if FlatWing settles with patent
`
`owner and contractually precludes its experts from continuing in the IPR with
`
`Mylan.
`
`Moreover, to the extent that Mylan is permitted to participate in the
`
`proceedings, Mylan will endeavor to coordinate with FlatWing to consolidate
`
`authorized filings, manage questioning at depositions, ensure that briefing and
`
`discovery occur within the time normally allotted, and avoid redundancies. Mylan
`
`will maintain a secondary role in the joined proceeding, and will assume a primary
`
`role only if FlatWing ceases to participate in the IPR. As noted above, Mylan is
`
`willing to take a backseat role, in which it would not file any separate papers
`
`without consultation with FlatWing and prior authorization from the Board. These
`
`procedures should simplify briefing and discovery and remove any “complication
`
`or delay” that might allegedly be caused by joinder, while providing the parties an
`
`
`
`-7-
`
`
`
`opportunity to address all issues that may arise, and avoiding any undue burden on
`
`Patent Owner, FlatWing, and the Board.
`
`IV. Conclusion
`
`For the foregoing reasons, Mylan respectfully requests that this motion be
`
`granted and an inter partes review of the challenged claims 1-6 be instituted based
`
`on the grounds 1-4, and that this proceeding be joined with IPR2018-00168.
`
`Dated: July 6, 2018
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Steven W. Parmelee, Lead Counsel
`Reg. No. 31,990
`
`
`
`
`
`
`
`-8-
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`caused to be served a true and correct copy of the foregoing Motion for Joinder by
`
`overnight courier (Federal Express or UPS), on this 6th day of July, 2018, on the
`
`Patent Owner at the correspondence address of the Patent Owner as follows:
`
`MORGAN, LEWIS & BOCKIUS LLP (SF)
`Attn: Todd Esker
`One Market, Spear Street Tower, Suite 2800
`San Francisco CA 94105
`
`
`and that additional copies have been delivered to the address of the patent
`
`owner according to the assignments of record at the USPTO at:
`
`ANACOR PHARMACEUTICALS, INC.
`Attn: Ryan Walsh, Vice-President & Chief IP counsel
`1020 East Meadow Circle
`Palo Alto, CA 94303
`
`and to additional counsel at the following address:
`
`Williams & Connoly LLP
`Attn: Aaron Maurer and David Berl
`725 Twelfth Street, N.W.
`Washington, DC 20005
`
`
`
`
`
`-9-
`
`
`
`And to counsel for Petitioner FlatWing Pharmaceuticals LLC in IPR2018-
`
`00168, as follows:
`
`Husch Blackwell, LLP
`Attn: Philip D. Segrest, Jr.
`120 South Riverside Plaza
`Suite 2200
`Chicago, IL 60606
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Steven W. Parmelee, Lead Counsel
`Reg. No. 31,990
`
`
`
`Dated: July 6, 2016
`
`
`
`
`
`-10-
`
`
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
