`U.S. Patent No. 9,549,938
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`ANACOR PHAMACEUTICALS, INC.,
`Patent Owner
`__________________
`
`Case No. IPR2018-01358
`U.S. Patent No. 9,549,938
`__________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. (“Mylan”) has filed a motion seeking
`
`Case No. IPR2018-01358
`U.S. Patent No. 9,549,938
`
`
`joinder with IPR2018-00168 filed by FlatWing Pharmaceuticals, Inc. (“Flatwing”).
`
`The Board instituted IPR2018-00168 on June 8, 2018, and issued a scheduling
`
`order setting oral argument for March 1, 2019.
`
`Patent Owner Anacor Pharmaceuticals, Inc. (“Anacor”) opposes Mylan’s
`
`motion to the extent that Mylan is not confined to a true “silent understudy” role.
`
`Famy Care Ltd. v. Allergan, Inc., IPR2017-00567, Paper No. 12 at 9 (P.T.A.B.
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`July 10, 2017). Although Mylan’s motion expresses a purported willingness to
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`limit the extent of its participation in the joined proceedings, Mylan has proposed
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`no specific limits on its ability to engage in discovery, briefing, and trial.
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`Three particular issues with Mylan’s motion are illustrative. First, Mylan
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`raises the possibility that it will make separate filings after seeking authorization
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`from the Board to address any disagreements with FlatWing. Mot. at 6. This, of
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`course, would require the Board to resolve a potential dispute among the parties
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`each time Mylan seeks to press its own case. While Mylan asserts that any
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`separate filing will be “short,” it has not committed to any specific type or volume
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`limitation. And although Mylan states that its current petition is a “practical” or
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`“substantive” copy of Flatwing’s, Mot. at 1–2, Mylan has not restricted itself from
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`raising new arguments and issues. Second, Mylan states that it will “coordinate
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`with FlatWing” to “manage questioning at depositions.” Mot. 7. This vague
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`
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`pronouncement suggests that Mylan will seek an active role in discovery. Third,
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`Case No. IPR2018-01358
`U.S. Patent No. 9,549,938
`
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`by not discussing its desired role at oral argument, Mylan presumably will seek
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`some level of participation at that time. See Famy Care, Paper No. 12 at 9
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`(denying joinder where subsequent petitioner insisted on participating in oral
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`argument). Thus, it is not at all clear that Mylan has actually committed to an
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`understudy role, much less a “silent” one.
`
`Mylan suggests that in granting joinder, the Board may adopt “similar”
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`limits to those it has imposed in the past. Mot. at 6 (citing cases). But as discussed
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`above, Mylan has agreed to few, if any, specific limits, and the additional
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`complexity Mylan seeks to add to FlatWing’s IPR will prejudice Anacor.
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`Nevertheless, consistent with limitations that the Board has previously imposed on
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`“understudies,” Anacor will not oppose joinder if: (a) the joined proceedings are
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`based exclusively on the petition and evidence submitted by FlatWing; (b) all
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`filings by Mylan in the joined proceeding are consolidated with FlatWing’s and the
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`page limits and word counts set forth in 37 C.F.R. § 42.24 apply to all such
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`consolidated briefing; (c) Mylan is bound by any agreements between Anacor and
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`FlatWing concerning discovery and/or depositions; (d) Mylan at deposition shall
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`not receive any direct, cross-examination, or redirect time beyond that permitted
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`for FlatWing alone under either 37 C.F.R. § 42.53 or any agreement between
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`Anacor and FlatWing; and (e) Mylan will not participate in oral argument. See
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`
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`Mylan Pharm. Inc. v. Novartis AG, IPR2015-00268, Paper No. 17 at 5 (P.T.A.B.
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`Case No. IPR2018-01358
`U.S. Patent No. 9,549,938
`
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`Apr. 10, 2015); see also Navico, Inc. v. Garmin Switz. GmbH, IPR2017-02051,
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`Paper No. 8 at 7–8 (P.T.A.B. Jan. 23, 2018); Famy Care, Paper No. 12 at 9.
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`
`Date: August 6, 2018
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`
`
`
`
`
`
` Respectfully submitted,
`
`/Aaron P. Maurer/
`Aaron P. Maurer
`Reg. No. 44,911
`Lead Counsel for Patent Owner
`
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`T: (202) 434-5282
`F: (202) 434-5029
`amaurer@wc.com
`
`
`
`
`Case No. IPR2018-01358
`U.S. Patent No. 9,549,938
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that a true and correct copy of the
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`
`
`foregoing document was served on August 6, 2018, by delivering a copy via
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`electronic mail on the following attorneys of record for the Petitioner:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`Wilson Sonsini Goodrich & Rosati
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Anthony H. Sheh/
`Anthony H. Sheh
`Reg. No. 70,576
`
`
`
`
`
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