Trials@uspto.gov
`571.272.7822
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` Paper 62
`Entered: July 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMNEAL PHARMACEUTICALS LLC, AMNEAL
`PHARMACEUTICALS OF NEW YORK, LLC, and MYLAN
`PHARMACEUTICALS INC.,
`Petitioners,
`
`v.
`
`ALMIRALL, LLC,
`Patent Owner.
`____________
`
`IPR2019-002071
`Patent 9,517,219 B2
`____________
`
`Before SUSAN L. C. MITCHELL, CHRISTOPHER G. PAULRAJ,
`and RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`1 Mylan Pharmaceuticals Inc., the petitioner in IPR2019-01095, has been
`joined in this proceeding. When referring herein to “this case” or “this
`proceeding” or “this Inter Partes Review,” or variants of these, we refer to
`both IPR2019-00207 and IPR2019-01095.
`
`
`571.272.7822
`
`
`
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`
`
`
`
`
` Paper 62
`Entered: July 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMNEAL PHARMACEUTICALS LLC, AMNEAL
`PHARMACEUTICALS OF NEW YORK, LLC, and MYLAN
`PHARMACEUTICALS INC.,
`Petitioners,
`
`v.
`
`ALMIRALL, LLC,
`Patent Owner.
`____________
`
`IPR2019-002071
`Patent 9,517,219 B2
`____________
`
`Before SUSAN L. C. MITCHELL, CHRISTOPHER G. PAULRAJ,
`and RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`1 Mylan Pharmaceuticals Inc., the petitioner in IPR2019-01095, has been
`joined in this proceeding. When referring herein to “this case” or “this
`proceeding” or “this Inter Partes Review,” or variants of these, we refer to
`both IPR2019-00207 and IPR2019-01095.
`
`
`
`IPR2019-00207
`Patent 9,517,219 B2
`
`
`A.
`
`STATUS OF THE PROCEEDING
`
`I.
`
`INTRODUCTION
`
`Almirall, LLC (“Patent Owner”) is the owner of U.S. Patent
`
`9,517,219 B2 (Ex. 1001, “the ’219 patent”). Amneal Pharmaceuticals LLC,
`
`and Amneal Pharmaceuticals of New York, LLC (collectively, “Amneal” or
`
`“Petitioner”) filed a Petition requesting inter partes review of claims 1–8 of
`
`the ’219 patent. Paper 3 (“Pet.”). We instituted trial in this matter on May
`
`10, 2019. Paper 13 (“Institution Decision”). On November 27, 2019,
`
`IPR2019-01095 was instituted between Mylan Pharmaceuticals Inc.
`
`(“Mylan”) and Almirall, LLC over the ’219 patent and Mylan joined this
`
`proceeding. Paper 35 (“me-too” joinder). Unless otherwise stated, we
`
`include Mylan when referring to Petitioner herein.
`
`Following institution and joinder, Patent Owner filed a Response.
`
`Paper 20 (“PO Resp.”). Petitioner filed a Reply to Patent Owner’s Response
`
`and Patent Owner filed a Sur-Reply to Petitioner’s Reply. Paper 28 (“Pet.
`
`Reply”); Paper 37 (“PO Sur-Reply”). A hearing was conducted on February
`
`7, 2020, where the parties presented oral argument. Paper 55 (“Hr’g Tr.”).
`
`After considering the parties’ arguments and supporting evidence, we
`
`concluded that Petitioner proved by a preponderance of the evidence that
`
`claims 1–8 of the ’219 patent are unpatentable and rendered judgment in a
`
`Final Written Decision. Paper 58 (“Final Written Decision”).
`
`Patent Owner has now requested rehearing of our Final Written
`
`Decision. Paper 61 (“PO Req. Reh’g” or “Patent Owner’s Request for
`
`Rehearing”). We deny the request.
`
`2
`
`
`
`IPR2019-00207
`Patent 9,517,219 B2
`
`
`II. STANDARD OF REVIEW
`
`A party requesting rehearing of a Board decision has the burden to
`
`show that the decision should be modified. Pursuant to 37 C.F.R.
`
`§ 42.71(d), the rehearing request must identify, specifically, 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.
`
`When rehearing a decision on a petition, we review the decision for an abuse
`
`of discretion. 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may arise
`
`if a decision is based on an erroneous interpretation of law, if a factual
`
`finding is not supported by substantial evidence, or if an unreasonable
`
`judgment is made in weighing relevant factors. In re Gartside, 203 F.3d
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`1305, 1315–16 (Fed. Cir. 2000).
`
`We review Patent Owner’s Request for Rehearing in view of these
`
`standards of law and the evidence of record.
`
`III. DISCUSSION
`
`Patent Owner asserts that, because in a related district court
`
`proceeding (Almirall, LLC v. Amneal Pharmaceuticals LLC, C.A. No. 19-
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`658 (GJP) (Dist. Del.)) Petitioner (there the defendant) asserted that the
`
`claims of the ’219 patent found by the Board to be unpatentable are invalid
`
`or not amenable to construction as indefinite (under 35 U.S.C. § 112, second
`
`paragraph), and further because Petitioner failed to disclose this contention
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`in this proceeding, the Board has overlooked and/or misapprehended
`
`evidence and argument that Petitioner failed to carry its burden. PO Req.
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`Reh’g 1–5. Patent Owner further asserts that the Board could not have
`
`instituted this trial because of the challenged claims’ alleged indefiniteness.
`
`Id. at 7–9. Patent Owner further asserts that Petitioner could not prove that
`
`3
`
`
`
`IPR2019-00207
`Patent 9,517,219 B2
`
`the asserted prior art taught the claimed invention with a reasonable
`
`expectation of success because there was no way to ascertain whether the
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`prior arts’ gelling agent (Sepineo) met the claimed concentration of
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`polymeric viscosity builder A/SA component because Petitioner has alleged
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`the respective claim element is indefinite. Id. at 12. Patent Owner
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`additionally asserts that Petitioner’s indefiniteness challenge in the district
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`court litigation undermines Petitioner’s assertion in this proceeding that the
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`gelling agent Carbopol and the gelling agent Sepineo are interchangeable.
`
`Id. at 14.
`
`We are unpersuaded by Patent Owner’s arguments. In our analysis of
`
`the ’219 patent, the Panel did not find any claim language of the ’219 patent
`
`to be indefinite nor was indefiniteness an issue raised by either party. See,
`
`e.g., Final Written Decision, 20–21 (claim construction), 24–70 (analyzing
`
`the obviousness of the ’219 patent’s independent claims 1 and 6).
`
`Petitioner’s district court litigation strategy and arguments have no impact
`
`on the Board’s conclusions regarding the obviousness of the challenged
`
`claims, which we readily understood for purposes of our analysis in this
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`proceeding. Id. Accordingly, Patent Owner has not identified any issues the
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`Board misapprehended or overlooked and we find no abuse of discretion in
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`our conclusions in the Final Written Decision.
`
`IV. CONCLUSION
`
`For the reasons discussed above, we deny Patent Owner’s Request for
`
`Rehearing.
`
`Accordingly, it is hereby:
`
`ORDER
`
`ORDERED that, Patent Owner’s Request for Rehearing is denied.
`
`4
`
`
`
`IPR2019-00207
`Patent 9,517,219 B2
`
`
`For PETITIONER:
`
`Representing Amneal Pharmaceuticals LLC and Amneal Pharmaceuticals of
`New York, LLC:
`
`Dennies Varughese
`Adam LaRock
`Tyler Liu
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dvarughe-ptab@skgf.com
`alarock-ptab@skgf.com
`tliu-ptab@skgf.com
`
`Representing Mylan Pharmaceuticals Inc.:
`
`Jitendra Malik
`Alissa Pacchioli
`Lance Soderstrom
`Heike Radeke
`KATTEN MUCHIN ROSENMAN LLP
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`lance.soderstrom@kattenlaw.com
`heike.radeke@kattenlaw.com
`
`
`For PATENT OWNER:
`
`James Trainor
`Elizabeth Hagan
`FENWICK & WEST LLP
`jtrainor@fenwick.com
`ehagan@fenwick.com
`
`
`5
`
`
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