Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 33
`Date: December 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PFIZER INC.,
`Petitioner,
`v.
`NOVO NORDISK A/S,
`Patent Owner.
`
`IPR2020-01252
`Patent 8,114,833 B2
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and
`SUSAN L.C. MITCHELL, Administrative Patent Judges.
`FRANKLIN, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review and Granting Motion for Joinder
`35 U.S.C. § 314; 37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 33
`Date: December 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PFIZER INC.,
`Petitioner,
`v.
`NOVO NORDISK A/S,
`Patent Owner.
`
`IPR2020-01252
`Patent 8,114,833 B2
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and
`SUSAN L.C. MITCHELL, Administrative Patent Judges.
`FRANKLIN, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review and Granting Motion for Joinder
`35 U.S.C. § 314; 37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`
`
`
`
`IPR2020-01252
`Patent 8,114,833 B2
`
`INTRODUCTION
`I.
`Pfizer Inc. Institutional LLC (“Petitioner” or “Pfizer”) timely filed a
`Petition requesting an inter partes review of claims 1–31 of U.S. Patent No.
`8,114,833 B2 (Ex. 1001, “the ’833 patent”). Paper 2 (“Petition” or “Pet.”).
`Petitioner also filed a Motion for Joinder to join this proceeding with Mylan
`Institutional LLC. v. Novo Nordisk A/S, IPR2020-00324 (the “Mylan IPR”),
`which was instituted on June 23, 2020. Paper 3 (“Mot.”).
`Novo Nordisk A/S (“Patent Owner”) did not file a Preliminary
`Response to the Petition or an opposition to the joinder motion.
`For the reasons set forth below, we (1) institute an inter partes review
`in this proceeding based on the same grounds instituted in the Mylan IPR,
`and (2) grant Pfizer’s Motion for Joinder, subject to the conditions detailed
`herein.
`
`INSTITUTION OF INTER PARTES REVIEW
`II.
`In the Mylan IPR, we instituted trial on the following grounds:
`
`Claim(s) Challenged
`1–15
`1–15
`1–31
`
`35 U.S.C. §
`102(b)
`103(a)2
`103(a)
`
`Reference(s)/Basis
`Flink1
`Flink
`Flink, Betz3
`
`Mylan IPR, Paper 13.
`
`
`1 Flink et al., PCT Publication No. WO 03/002136 A2, published
`Jan. 9, 2003 (“Flink,” Ex. 1004).
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application from which the ’833 patent issued was filed
`before this date, the pre-AIA version of § 103 applies.
`3 Betz et al., PCT Publication No. WO 04/004781 A1, published
`Jan. 15, 2004 (“Betz,” Ex. 1005).
`
`2
`
`
`
`IPR2020-01252
`Patent 8,114,833 B2
`Pfizer’s Petition is substantially identical to the petition in the Mylan
`IPR and seeks only to challenge the same claims based upon the same
`grounds and prior art involved in the Mylan IPR, and for the same reasons
`set forth in the Mylan IPR. See Pet. 4. Petitioner relies on the Declaration
`of Laird Forrest, Ph.D. (Ex. 1002), who is the same expert relied upon by the
`petitioner in the Mylan IPR. Dr. Forrest’s declaration testimony submitted
`in this proceeding is identical to what was submitted in the Mylan IPR.
`Compare Ex. 1002, with Mylan IPR, Ex. 1002.
`Patent Owner has not filed a Preliminary Response in this proceeding.
`Thus, at this stage of the proceeding, Patent Owner has not raised any
`arguments in response to the substantive grounds of the Petition.
`Having considered the Petition, we determine that, under the current
`circumstances, it is appropriate to exercise our discretion to institute an inter
`partes review of the challenged claims based upon the same grounds
`authorized and for the same reasons discussed in our Institution Decision in
`the Mylan IPR. See Mylan IPR, Paper 13.
`JOINDER OF INTER PARTES REVIEWS
`III.
`An inter partes review may be joined with another inter partes
`review, subject to the provisions 35 U.S.C. § 315(c), which governs joinder
`of inter partes review proceedings:
`(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.
`
`
`3
`
`
`
`IPR2020-01252
`Patent 8,114,833 B2
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: set forth the reasons joinder is appropriate; identify any new grounds
`of unpatentability asserted in the petition; and explain what impact (if any)
`joinder would have on the trial schedule for the existing review. See
`Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr.
`24, 2013); see also, “Frequently Asked Questions H5,”
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/ptab-e2e-frequently-asked-questions.
`Petitioner timely filed its Joinder Motion within one month of the
`institution of the Mylan IPR, as required by 37 C.F.R. § 42.122(b). See
`Paper 6 (Notice of Filing Date Accorded to Petition). In the motion,
`Petitioner explains that it will “maintain a secondary role in the proceeding,
`if joined [with the Mylan IPR proceeding]. Petitioner will assume a primary
`role only if the Mylan IPR petitioner ceases to participate in the IPR.”
`Mot. 3, 6. As discussed in the Institution Decision, Section III above, the
`instituted grounds in this proceeding (the “Pfizer IPR”) are the same as the
`instituted grounds in the Mylan IPR.
`Having considered the unopposed motion for joinder, and our
`decisions to institute the same ground in the Mylan IPR and the Pfizer IPR,
`we determine that Petitioner Pfizer has established persuasively that joinder
`is appropriate and will have little to no impact on the timing, cost, or
`presentation of the trial on the instituted ground. Thus, in consideration of
`the foregoing, and in the manner set forth in the following Order, the Motion
`for Joinder is granted.
`
`4
`
`
`
`IPR2020-01252
`Patent 8,114,833 B2
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that trial is instituted in IPR2020-01252 for claims 1–31
`of the ’833 patent on all grounds set forth in the Petition;
`FURTHER ORDERED that Pfizer’s Motion for Joinder with
`IPR2020-00324 is granted;
`FURTHER ORDERED that IPR2020-01252 is terminated and joined
`with IPR2020-00324, pursuant to 37 C.F.R. §§ 42.72, 42.122, wherein
`Pfizer will maintain a secondary role in the proceeding, unless and until
`Mylan ceases to participate as a petitioner in the inter partes review;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2020-00324 shall govern the joined proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2020-00324;
`FURTHER ORDERED that the case caption in IPR2020-00324 for all
`further submissions shall be changed to add Pfizer Inc. as a named Petitioner
`after the Mylan Petitioner, and to indicate by footnote the joinder of
`IPR2020-01252 to that proceeding, as indicated in the attached sample case
`caption; and
`FURTHER ORDERED that a copy of this Decision shall also be
`entered into the record of IPR2020-00324.
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2020-01252
`Patent 8,114,833 B2
`For PETITIONER:
`
`Brandon White
`Lara Dueppen
`Emily Greb
`PERKINS COIE LLP
`white-ptab@perkinscoie.com
`dueppen-ptab@perkinscoie.com
`greb-ptab@perkinscoie.com
`
`For PATENT OWNER:
`
`Jeffrey Oelke
`Ryan Johnson
`Laura Moran
`FENWICK & WEST LLP
`joelke@fenwick.com
`ryan.johnson@fenwick.com
`laura.moran@fenwick.com
`
`6
`
`
`
`
`
`Joined Case Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN INSTITUTIONAL LLC and PFIZER INC.,
`Petitioners,
`v.
`NOVO NORDISK A/S,
`Patent Owner.
`
`IPR2020-003241
`Patent 8,114,833 B2
`
`
`
`
`
`
`
`
`
`
`1 IPR2020-01252 has been joined with this proceeding.
`
`
`
`
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