Paper No. ____
`Filed: September 6, 2018
`
`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
`_____________________________
`
`REPLY TO OPPOSITION TO MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`Filed: September 6, 2018
`
`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
`_____________________________
`
`REPLY TO OPPOSITION TO 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”) hereby replies to the
`opposition of Patent Owner Anacor Pharmaceuticals, Inc. (“Patent Owner” or
`“PO”) to Mylan’s motion for joinder.
`Mylan’s motion for joinder (paper 3) stated that Mylan’s petition for inter
`partes review was substantively identical to Petition IPR2018-00168 filed by
`FlatWing Pharmaceuticals, LLC (“FlatWing”). Mylan’s motion for joinder was
`timely filed, within one month of the institution decision in IPR2018-00168, and
`the grounds are substantively identical to the grounds in the original petition filed
`in IPR2018-00168, which Grounds were all instituted. Mylan also stated it would
`participate in an understudy role to FlatWing, absent termination of FlatWing as a
`party. PO states that it will not oppose joinder if Mylan agrees to certain limitations
`that it states are “consistent with limitations the Board has previously imposed on
`‘understudies.’” (Opp. at 2).
`Mylan has already stated in its motion that it will serve in an understudy role
`to FlatWing, and Mylan further agrees that so long as FlatWing continues to
`remain a party and prosecute the IPR: (a) the joined proceedings will be based
`exclusively on the petition and evidence submitted by FlatWing; (b) all filings by
`Mylan in the joined proceeding are consolidated with FlatWing’s and the page and
`-1-
`
`
`
` word counts set forth in 37 C.F.R. § 42.24 apply to such consolidated briefing; (c)
`Mylan is bound by any agreements between Anacor and FlatWing concerning
`discovery and/or depositions; (d) Mylan at deposition will not receive any direct,
`cross-examination, or redirect time beyond that permitted for FlatWing alone under
`either 37 C.F.R. § 42.53 or any agreement between Anacor and FlatWing; and (e)
`Mylan will not participate in oral argument. Mylan expressly reserves the right to
`fully participate in the proceeding should FlatWing discontinue prosecuting the
`IPR. Joinder will have no impact on the trial schedule of IPR2018-00168 because
`Mylan, in its understudy role, is agreeable to the same schedule. Mylan is not
`subject to a time-bar under 35 U.S.C. § 315. As such, Mylan again requests
`institution of the petition even if the Board should decide against joinder with
`IPR2018-00168.
`PO cites to a joinder decision in Famy Care Ltd. V. Allergan, Inc., IPR2017-
`00567, to voice concern whether Mylan has agreed to the limited role of an
`understudy in the present proceeding. In Famy Care, the Board noted that Famy
`Care sought “the opportunity to present additional arguments, briefing, and
`evidence, including two additional expert declarations, beyond what is being
`considered based on Mylan’s Petition in IPR2016-01128.” Under those
`-2-
`
`
`
` circumstances, the Board determined that joinder “would not ‘secure the just,
`speedy, and inexpensive resolution’ of the proceeding.”
`The present case for joinder is nothing like what was requested by Famy
`Care. Here, Mylan has agreed to the understudy role and has made clear that its
`role will be that of a silent understudy to the extent that the original petitioner,
`FlatWing, continues to prosecute the IPR. Under these circumstances, joinder is
`appropriate and will not be disruptive to the conduct of the original proceeding,
`and will promote the just, speedy, and inexpensive resolution of patentability
`issues, including the determination of patentability of the challenged claims of the
`’938 patent. As noted previously, 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
`that are based on identical grounds and evidence, and will not prejudice Patent
`Owner or FlatWing.
`II. 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 grounds 1-4, and that this proceeding be joined with IPR2018-00168.
`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Dated: September 6, 2018
`
`Steven W. Parmelee, Lead Counsel
`Reg. No. 31,990
`
`-3-
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing Reply to Opposition to Motion
`for Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) was
`served on September 6, 2018, on the Patent Owner at the electronic
`correspondence addresses of the Patent Owner as follows:
`Aaron P. Maurer
`David I. Berl
`Anthony H. Sheh
`WILLIAMS & CONNOLLY LLP
`amaurer@wc.com
`dberl@wc.com
`asheh@wc.com
`tselby@wc.com
` And to counsel for Petitioner FlatWing Pharmaceuticals LLC in IPR2018-
`00168, as follows:
`Philip D. Segrest, Jr.
`Eric J. Rakestraw
`Edward D. Manzo
`HUSCH BLACKWELL, LLP
`Philip.Segrest@HuschBlackwell.com
`Eric.Rakestraw@HuschBlackwell.com
`Edward.Manzo@HuschBlackwell.com
`PTAB-ERakestraw@HuschBlackwell.com
`
`
`
`
`Respectfully submitted,
`
` Date: September 6, 2018
`/ Steven W. Parmelee /
`
`
`Steven W. Parmelee, Lead Counsel
`
`Reg. No. 31,990
`
`-4-
`
`
`
`
`
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