IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`TEVA PHARMACEUTICALS USA, INC. and
`WATSON LABORATORIES, INC.,
`Petitioner,
`v.
`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`U.S. Patent No. 7,326,708 to Cypes et al.
`Issue Date: February 5, 2008
`Title: Phosphoric Acid Salt of a Dipeptidyl Peptidase-IV Inhibitor
`Inter Partes Review No.: IPR2020-01045
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`PETITIONER’S MOTION FOR JOINDER
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`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
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`Mail Stop “PATENT BOARD”
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`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`TEVA PHARMACEUTICALS USA, INC. and
`WATSON LABORATORIES, INC.,
`Petitioner,
`v.
`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`U.S. Patent No. 7,326,708 to Cypes et al.
`Issue Date: February 5, 2008
`Title: Phosphoric Acid Salt of a Dipeptidyl Peptidase-IV Inhibitor
`Inter Partes Review No.: IPR2020-01045
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`PETITIONER’S MOTION FOR JOINDER
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`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
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`Mail Stop “PATENT BOARD”
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`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`Table of Contents
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`I. STATEMENT OF RELIEF REQUESTED ....................................................... 1
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`II.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
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`A. Legal Standards ............................................................................................ 3
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`B. Teva’s Motion is Timely .............................................................................. 4
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`C.
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`Joinder is Appropriate .................................................................................. 4
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`1. No New Grounds of Unpatentability ......................................................... 6
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`2. No Impact on the Schedule for the Existing IPR Proceeding ................... 6
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`3. Briefing and Discovery Will be Simplified ............................................... 7
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`4. No Prejudice to Patent Owner ................................................................. ..9
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`III. CONCLUSION .............................................................................................. ..9
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Petitioners Teva Pharmaceuticals USA, Inc. and Watson Laboratories, Inc.
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`(hereinafter “Teva” or “Petitioner”) respectfully request joinder of the concurrently
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`filed petition for inter partes review of U.S. Patent No. 7,326,708 (“the ’708
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`patent”) (IPR2020-01045) with Mylan Pharmaceuticals Inc. v. Merck Sharp &
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`Dohme Corp., IPR2020-00040, filed October 30, 2019 and instituted May 12, 2020
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`(hereinafter, “the Mylan IPR”). See IPR2020-00040, Paper 21. The instant
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`Petition is the same as the Mylan IPR: it involves the same patent, claims, grounds
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`of unpatentability, and evidence (including the same prior art combinations) as the
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`Mylan IPR. If joined, as discussed further below, Teva will assume a “silent
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`understudy” role and will not take an active role in the inter partes review
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`proceeding unless the Mylan IPR Petitioner ceases to participate in the instituted
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`IPR.
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`While the instant Petition includes the declaration of Dr. Chyall, this
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`declaration presents identical expert testimony to that put forth by Dr. Chorghade
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`in the Mylan IPR. Compare Chyall Decl. EX 1002, with Mylan Pharms. Inc. v.
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`Merck Sharp & Dohme Corp., IPR2020-00040, EX 1002, Decl. of Dr. Mukund
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`Chorghade, Ph.D. (“Chorghade Decl.”). If Mylan allows Teva to use Dr.
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`Chorghade, then Teva will withdraw Dr. Chyall’s Declaration and will rely only on
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`Dr. Chorghade. The PTAB has acknowledged that such concessions are sufficient
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`1
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`to minimize the impact on the original proceeding. Mylan Pharms. Inc. v.
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`Almirall, LLC, IPR2019-01095, Paper 12 at 7-8 (Nov. 27, 2019); SAP Am. Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13 at 4 (May 19, 2014). Thus, the
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`proposed joinder will neither unduly complicate the Mylan IPR nor delay its
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`schedule. As such, the joinder will promote judicial efficiency in determining the
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`patentability of the Mylan IPR without prejudice to Patent Owner.
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`The Motion for Joinder and accompanying Petition are timely because they
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`are filed less than one month after the May 12, 2020 decision instituting trial in the
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`Mylan IPR. 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no
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`later than one month after the institution date of any inter partes review for which
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`joinder is requested.”); see, e.g., Kingston Tech. Co. v. Securewave Storage
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`Solutions, Inc., IPR2020-00139, Paper 12 at 6-7 (PTAB Mar. 23, 2020) (holding
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`that “me-too” petition was timely where it was filed more than one year after
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`petitioner was sued for infringement but within one month of the institution of the
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`IPR which petitioner sought to join); Central Sec. Grp.-Nationwide, Inc. v.
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`Ubiquitous Connectivity, L.P., IPR2019-01609, Paper 11 at 8-9 (“The only timing
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`requirement for a motion for joinder is that it be filed ‘no later than one month
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`after the institution date of any inter partes review for which joinder is requested.”
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`(first emphasis added)). Moreover, granting a motion for joinder and instituting a
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`“me too” petition that would otherwise be time-barred under 35 U.S.C. § 315(b)
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`does not prejudice the Patent Owner. See Nokia of Am. Corp. v. Oyster Optics,
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`LLC, IPR2018-00984, Paper 9 at 6 (Jul. 27, 2018) (instituting such a petition and
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`determining that joinder would not unduly prejudice the patent owner).
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`Accordingly, Teva respectfully requests that the Board grant this Motion for
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`Joinder.
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`II.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Legal Standards
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`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
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`review (IPR) proceedings. Joinder is governed by 35 U.S.C. § 315(c), which
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`states:
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`(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.
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`“A motion for joinder should: (1) set forth the reasons joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address[] specifically how briefing and discovery
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`may be simplified.” Kingston Tech., IPR2020-00139, Paper 12 at 6-7; see, e.g.,
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`Hyundai Motor Co. v. Am. Vehicular Sciences LLC, IPR2014-01543, Paper No. 11
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`at 3 (Oct. 24, 2014); Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4
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`(Aug. 13, 2014); Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper
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`17 (PTAB July 29, 2013); Kyocera Corporation v. Softview LLC, IPR2013-00004,
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`Paper 15 at 4 (April 24, 2013)).
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`B.
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`Teva’s Motion is Timely
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`A motion for joinder is timely if the moving party files within one month of
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`institution of the inter partes review to which joinder is requested. 37 C.F.R.
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`§ 42.122(b). The Board instituted Mylan’s petition for IPR on May 12, 2020.
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`IPR2020-00040, Paper 21. Teva’s petition and this Motion were filed 29 days
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`later, on June 10, 2020. Teva’s Motion is timely because it is filed less than one
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`month after the institution of the Mylan IPR. Kingston Tech., IPR2020-00139,
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`Paper 12 at 6-7.
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`C.
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`Joinder is Appropriate
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`Joinder is appropriate because Teva’s Petition does not raise any new
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`grounds of unpatentability and does “not present issues that might complicate or
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`delay” the Mylan IPR. See Enzymotec Ltd. v. Neptune Techs. & Bioresources,
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`Inc., IPR2014-00556, Paper 19 (PTAB July 9, 2014). Teva’s Petition is essentially
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`identical to the petition in the Mylan IPR, challenging the same claims of the ’708
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`patent on the same grounds and relying on identical expert testimony. The primary
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`differences between Teva’s Petition and the petition filed in the Mylan IPR are the
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`sections on Real Party-In-Interest, Related Matters, and Counsel, which have been
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`appropriately updated.
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`To simplify this proceeding, Teva will rely on Dr. Chorghade, should Mylan
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`permit it. If Mylan allows Teva to rely on Dr. Chorghade, Teva will withdraw
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`Dr. Chyall’s Declaration and rely on the declaration and testimony of
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`Dr. Chorghade. Teva’s proposal is identical to the procedure proposed by other
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`petitioners when they sought, and were granted, joinder. Mylan Pharms., IPR2019-
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`01095, Motion for Joinder, Paper 2 at 3 (Jun. 7, 2019) (offering same procedure);
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`Teva Pharms. USA, Inc. v. Eli Lilly & Co., IPR2016-01343, Motion for Joinder,
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`Paper 3 at 8 (Jul. 1, 2016) (same); Argentum Pharms. LLC, v. Janssen Oncology,
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`Inc., IPR2016-01317, Motion for Joinder, Paper 3 at 6-7 (Jun. 29, 2016) (same).
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`Such concessions on the part of a joining party are sufficient to minimize the
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`impact on the original proceeding. SAP Am., IPR2014-00306, Paper 13 at 4.
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`Even if, through no fault of its own, Teva was required to proceed with
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`Dr. Chyall, there would be no impact on the Board’s ability to complete its review
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`in a timely manner, in light of the substantively identical declarations of Dr. Chyall
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`and Dr. Chorghade. In such a situation, at worst, there would be a modest impact
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`on the Patent Owner given that little additional preparation would be needed for
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`the deposition of Dr. Chyall beyond that required for the deposition of
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`Dr. Chorghade. Moreover, in the event that Mylan does not agree to allow Teva to
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`retain Dr. Chorghade, Teva would agree to withdraw Dr. Chyall if Dr. Chorghade
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`has already been deposed based on his declaration in the Mylan IPR and the
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`deposition transcripts have been made of record. In that case, Teva would rely on
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`the declaration and testimony of Dr. Chorghade. Mylan Pharms., IPR2019-01095,
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`Motion for Joinder, Paper 2 at 7 (offering the same concessions); Teva Pharms.
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`USA, IPR2016-01343, Motion for Joinder, Paper 3 at 9 & n. 2 (same).
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`Joinder would therefore have little, if any, impact on the Mylan IPR in that
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`the schedule would not be affected, no additional briefing or discovery would be
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`required, and no additional burdens would be placed on any party or the PTAB, as
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`detailed below.
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`1.
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`No New Grounds of Unpatentability
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`Teva’s Petition does not assert any new grounds of unpatentability. It
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`challenges the same claims (1-4, 17, 19, and 21-23) of the ’708 patent using the
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`same arguments, analysis, evidence, and six grounds of unpatentability as the
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`Mylan IPR. See, e.g., Kingston Tech., IPR2020-00139, Paper 12 at 6-9; Hyundai,
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`IPR2014-01543, Paper 11 at 2-4; Dell, IPR2013-00385, Paper 17, at 6-10.
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`2.
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`No Impact on the Schedule for the Existing IPR
`Proceeding
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`Because Teva’s Petition raises no new grounds of unpatentability, and
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`because a Scheduling Order has been established for the Mylan IPR, joinder should
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`have no impact on the schedule of the Mylan IPR. See Sony Corp. v. Memory
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`Integrity, LLC., IPR2015-01353, Paper No. 11 at 6 (Oct. 15, 2015) (granting IPR
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`and motion for joinder where “joinder should not necessitate any additional
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`briefing or discovery from Patent Owner beyond that already required in [the
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`original IPR]”). Teva will adhere to all applicable deadlines set in the Scheduling
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`Order for the Mylan IPR.
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`As discussed further below, Teva will limit its participation in this
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`proceedings to that of a “silent understudy.” Only if the Mylan IPR is terminated
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`with respect to Mylan does Teva intend to “step into the shoes” of the dismissed
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`petitioner and materially participate in the joined proceedings. See Kingston Tech.,
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`IPR2020-00139, Paper 12 at 8-9; Mylan Pharms., IPR2019-01905, Paper 12 at 7-9.
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`Accordingly, for the reasons stated above, joinder of Teva to the Mylan IPR will
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`not affect the Board’s ability to complete its review and final decision within the
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`statutory time limits under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
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`3.
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`Briefing and Discovery Will be Simplified
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`As a “silent understudy,” Teva agrees that, if joined, the following
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`conditions will apply so long as Mylan remains an active party, as previously
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`approved by the Board in other joinder circumstances:
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`(a) all filings by Teva in the joined proceeding will be consolidated with the
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`filings of Mylan, unless a filing solely concerns issues that do not involve Mylan;1
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`(b) Teva shall not be permitted to raise any new grounds not instituted by
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`the Board in the Mylan IPR, or introduce any argument or discovery not already
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`introduced by Mylan;
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`(c) Teva shall be bound by any agreement between the Patent Owner and
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`Mylan concerning discovery and/or depositions; and
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`(d) Teva at deposition shall not receive any direct, cross examination or
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`redirect time beyond that permitted for Mylan in this proceeding alone under either
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`37 C.F.R. § 42.53 or any agreement between the Patent Owner and Mylan.
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`See Mylan Pharms., IPR2019-01905, Paper 12 at 8-9 (granting motion for joinder
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`subject to identical conditions); Mylan Pharms. Inc. v. Novartis AG, IPR2015-
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`00268, Paper 17 at 5-6 (PTAB Apr. 10, 2015) (finding the same proposed
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`limitations “are consistent with the ‘understudy’ role that Petitioner agrees to
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`assume, as well as Petitioner’s assertion that its presence would not require
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`introducing any additional arguments, briefing or discovery.”). Teva will also
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`abide by any additional conditions the Board deems appropriate.
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`1 If a filing is necessary concerning an issue that does not involve Mylan, Teva will
`seek prior authorization from the PTAB before filing any paper.
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`4.
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`No Prejudice to Patent Owner
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`Joinder of Petitioner to the Mylan IPR will not create any additional burden
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`on the Patent Owner. The Patent Owner need not expend any additional resources
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`above and beyond those required in the current Mylan IPR. Indeed, it is hard to
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`imagine how the Patent Owner could be prejudiced by Teva’s joinder, as the PTO
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`anticipated that joinder would be granted as a matter of right in circumstances like
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`those here. See Kingston Tech., IPR2020-00139, Paper 12 at 14 (quoting 157
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical
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`petition will be joined to that proceeding, and thus allowed to file its own briefs
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`and make its own arguments.”) (emphases in opinion)).2
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`III. CONCLUSION
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`For the foregoing reasons, Teva respectfully requests that its Petition for
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`Inter Partes Review of the ’708 patent be granted and that the proceedings be
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`joined with IPR2020-00040.
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`
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`2 Any argument that joinder may somehow frustrate settlement between Mylan and
`Patent Owner would not be a basis to deny joinder, because that same possibility
`exists in every joinder situation. Global Foundries U.S. Inc. v. Godo Kaisha IP
`Bridge 1, IPR2017-00925 and IPR2017-00926, Paper 13 at 10 (Jun. 9, 2017).
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`Date: June 10, 2020
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`Respectfully submitted,
`GOODWIN PROCTER LLP
`
`/Keith A. Zullow/
`
`
`Keith A. Zullow (Reg. No. 37,975)
`Lead Counsel for Petitioners Teva
`Pharmaceuticals USA, Inc. and Watson
`Laboratories, Inc.
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`CERTIFICATION OF SERVICE ON PATENT OWNER
`Pursuant to 37 C.F.R. §§ 42.6(e), 42.8(b)(4), and 42.105, the undersigned
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`certifies that on June 10, 2020, a complete copy of the foregoing Motion was
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`served via Express Mail to the Patent Owner by serving the correspondence
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`address of record for the ’708 patent:
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`Philippe Durette
`Merck & Co., Inc.
`P.O. BOX 2000
`Rahway, NJ 07065-0907
`Courtesy copies of the foregoing Motion were also served via Express Mail
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`and email upon counsel of record for Merck Sharp & Dohme Corp, the Patent
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`Owner in IPR2020-00040:
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`Stanley E. Fisher
`Jessamyn S. Berniker
`Bruce R. Genderson
`Shaun P. Mahaffy
`Anthony H. Sheh
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`sfisher@wc.com
`jberniker@wc.com
`bgenderson@wc.com
`smahaffy@wc.com
`asheh@wc.com
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`Courtesy copies were also served via Express Mail and email upon counsel
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`
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`of record for Petitioner Mylan in IPR2020-00040 at the following address:
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`Jitendra Malik
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`U.S. Patent No. 7,326,708
`IPR No. 2020-01045
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`Alissa M. Pacchioli
`Christopher W. West
`Heike S. Radeke
`KATTEN MUCHIN ROSENMAN LLP
`550 South Tryon, Street Suite 2900
`Charlotte, NC 28202-4213
`(704) 444-2000
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`christopher.west@katten.com
`heike.radeke@katten.com
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`
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`Respectfully submitted,
`Goodwin Procter LLP
`/ Keith A. Zullow /
`Keith A. Zullow (Reg. No. 37,975)
`Lead Counsel for Petitioners Teva
`Pharmaceuticals USA, Inc. and Watson
`Laboratories, Inc.
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`12
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