Inter Partes Review 2014-00361
`U.S. Patent No. 8,309,122
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`Paper No. ______
` May 22, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
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`AMNEAL PHARMACEUTICALS, LLC,
`Petitioner,
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`v.
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`Patent of ENDO PHARMACEUTICALS INC.,
`Patent Owner
`__________
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`PATENT OWNER’S SURREPLY REGARDING 35 U.S.C. § 315(b)
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Dated: May 22, 2014
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`Case 2014-00361
`U.S. Patent No. 8,309,122
`__________
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`Filed by:
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`Joseph A. Mahoney (Lead Counsel)
`Registration No. 38,956
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8979
`Facsimile: (312) 706-8530
`Email: jmahoney@mayerbrown.com
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`U.S. Patent No. 8,309,122
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`Paper No. ______
` May 22, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
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`AMNEAL PHARMACEUTICALS, LLC,
`Petitioner,
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`v.
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`Patent of ENDO PHARMACEUTICALS INC.,
`Patent Owner
`__________
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`PATENT OWNER’S SURREPLY REGARDING 35 U.S.C. § 315(b)
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Dated: May 22, 2014
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`Case 2014-00361
`U.S. Patent No. 8,309,122
`__________
`
`Filed by:
`
`Joseph A. Mahoney (Lead Counsel)
`Registration No. 38,956
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8979
`Facsimile: (312) 706-8530
`Email: jmahoney@mayerbrown.com
`
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`Erick J. Palmer (Back-Up Counsel)
`Registration No. 64,456
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8352
`Facsimile: (312) 706-9316
`Email: ejpalmer@mayerbrown.com
`
`Counsel for Patent Owner, Endo
`Pharmaceuticals Inc.
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`Pursuant to the Board’s Order regarding service of a complaint under 35
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`U.S.C. § 315(b) (Paper No. 9), Patent Owner submits this Surreply.
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`“An inter partes review may not be instituted if the petition requesting the
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`proceeding is filed more than 1 year after the date on which the petitioner . . . is
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`served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b)
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`(emphasis added). Petitioner concedes that it was served with the Amended
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`Complaint on November 20, 2012. (Petitioner Reply, Paper No. 11 at 1). The
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`Amended Complaint alleged infringement of U.S. Patent No. 8,309,122 (the “’122
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`patent”). (Ex. 2002 at ¶¶ 59-62). And Petitioner further concedes that its Petition
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`was filed more than one year after it was served with the Amended Complaint.
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`(Paper No. 11 at 1-3).
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`These facts are dispositive as to whether § 315(b) precludes institution of
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`inter partes review of the ’122 patent. Based on its plain language, as well as the
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`Board’s interpretation of this statutory provision, service of the Second Amended
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`Complaint did not restart Petitioner’s one-year statutory window for seeking inter
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`partes review of the ’122 patent. That window expired on November 20, 2013—
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`one year from service of the Amended Complaint. Because it was filed after this
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`date, the Petition should be denied in its entirety.
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`AN AMENDED COMPLAINT DOES NOT RESET THE § 315(b)
`CLOCK
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`Petitioner contends that service of the Second Amended Complaint rendered
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`1
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`I.
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`the Amended Complaint “without legal effect” and therefore reset the one-year
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`window under 35 U.S.C. § 315(b) as if the Amended Complaint had never been
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`filed. The Board has already rejected this contention in a previous proceeding.
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`In Loral Space & Communications, Inc. v. Viasat, Inc., IPR2014-00236, -
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`00239, -00240, Paper No. 7 (P.T.A.B. Apr. 21, 2014), the patent owner served a
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`first complaint on February 1, 2012, an amended complaint on February 22, 2012,
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`and a later amended complaint on December 7, 2012, all of which alleged
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`infringement of the challenged patents. Id. at 2-3. On December 6, 2013, Loral
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`filed three petitions seeking inter partes review of the challenged patents. Id. at 2.
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`Loral asserted that the petitions were filed within the statutory window
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`because they were filed within one year of service of the later amended complaint.
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`Id. at 6-7. According to Loral, the first complaint and earlier amended complaint
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`were “dead letters” replaced by the later amended complaint. Id. at 7. The Board
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`flatly rejected this argument:
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`An amended complaint is just that—a complaint that has
`been amended.
` The original complaint has been
`amended, and has not gone away in the same sense as a
`complaint dismissed without prejudice. No persuasive
`evidence has been presented that an original complaint
`that has been amended should be considered as if it had
`never been filed.
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`2
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`Id. The Board also noted that the plain language of § 315(b) does not authorize
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`the filing of a petition within one year of being served a complaint for patent
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`infringement, but instead bars institution of an inter partes review if the petition is
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`filed more than one year after service of a complaint alleging patent infringement.
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`Id. Accordingly, the Board held that the one-year statutory window under 35
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`U.S.C. § 315(b) begins on the date of service of the first complaint alleging
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`infringement of the challenged patent. Petitioner’s footnote 3 attempting to
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`distinguish Loral Space is unavailing.
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`In this proceeding, application of 35 U.S.C. § 315(b) is straight forward.
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`Patent Owner served Petitioner with the Amended Complaint on November 20,
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`2012, alleging infringement of the ’122 patent. (Ex. 2002 at ¶¶ 59-62; Ex. 2003)
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`Petitioner filed its Petition seeking inter partes review of the ’122 patent on
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`January 16, 2014. Under 35 U.S.C. § 315(b), the Board does not have
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`authorization to institute inter partes review of the ’122 patent. See Oceana, Inc.
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`v. Locke, 670 F.3d 1238, 1243 (Fed. Cir. 2011) (“When a statute commands an
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`agency without qualification to carry out a particular program in a particular way,
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`the agency’s duty is clear.”). The Petition therefore should be denied in its
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`entirety.
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`II. THE PRIOR AMENDED COMPLAINT HAS LEGAL EFFECT
`Petitioner asserts that there is an “extensive body of case law” holding that a
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`3
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`subsequent amended complaint renders a previous complaint “without legal
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`effect.” (Paper No. 11 at 3-4). Petitioner mischaracterizes the law.
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`First, Petitioner’s assertion is contrary to Federal Rule of Civil Procedure
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`15(c)(1)(B), which provides that an amended pleading relates back to the date of
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`the prior pleading when the amended pleading asserts a claim or defense that
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`“arose out of the conduct, transaction, or occurrence set out” in the prior pleading.
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`There is no dispute that Patent Owner’s infringement claims relating to the ’122
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`patent in both the Amended Complaint and the Second Amended Complaint arose
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`under 35 U.S.C. § 271(e)(2) by Petitioner filing its Abbreviated New Drug
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`Application. (Compare Ex. 2002 at ¶¶ 12, 59-62 with Ex. 2007 at ¶¶ 12, 58-61).
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`Accordingly, Patent Owner’s allegations of infringement of the ’122 patent in the
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`Second Amended Complaint relate back to the Amended Complaint.
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`Second, Petitioner overstates the holdings in the cases on which it relies.
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`For example, in Snyder v. Pascack Valley Hospital, 303 F.3d 271, 276 (3d Cir.
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`2002), the circuit court explained that “[a]n amended complaint supersedes the
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`original version in providing the blueprint for the future course of a lawsuit.”
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`(emphasis added). This means only that “facts that are neither repeated nor
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`otherwise incorporated into the amended complaint no longer bind the pleader.”
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`Intergen N.V. v. Grina, 344 F.3d 134, 145 (1st Cir. 2003). An amended complaint
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`does not “dismiss without prejudice” a prior complaint, as Petitioner contends. See
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`4
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`Loral Space, Paper No. 7 at 7 (“No persuasive evidence has been presented that an
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`original complaint that has been amended should be considered as if it had never
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`been filed.”). Accordingly, Petitioner’s argument is wrong.
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`III. THE PARTIES DID NOT AGREE THAT THE AMENDED
`COMPLAINT WOULD HAVE NO LEGAL EFFECT
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`Petitioner correctly notes that Patent Owner permitted Petitioner not to
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`respond to the Amended Complaint and gave Petitioner thirty days to respond to
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`the Second Amended Complaint upon the court’s granting of the motion for leave.
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`(Ex. 1026). But this is the extent of Patent Owner’s agreement. Patent Owner
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`never agreed that the Amended Complaint would have no legal effect whatsoever
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`such that the § 315(b) clock would restart upon service of the Second Amended
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`Complaint. Even if Patent Owner had made such an agreement, that would not
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`permit the Board to institute inter partes review of the ’122 patent. See
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`Dunklebarger v. Merit Sys. Prot. Bd., 130 F.3d 1476, 1480 (Fed. Cir. 1997) (“[I]t
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`is well settled that no action of the parties can confer subject-matter jurisdiction on
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`a tribunal and that the principles of estoppel do not apply to vest subject-matter
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`jurisdiction where Congress has not done so.”).
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`IV. CONCLUSION
`Because it was filed after the one-year statutory period under 35 U.S.C.
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`§ 315(b) had expired, the Petition seeking inter partes review of the ’122 patent
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`should be denied in its entirety.
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`5
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`Dated: May 22, 2014
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`/Joseph A. Mahoney/
`Joseph A. Mahoney (Lead Counsel)
`Registration No. 38,956
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8979
`Facsimile: (312) 706-8530
`Email: jmahoney@mayerbrown.com
`
`Erick J. Palmer (Back-Up Counsel)
`Registration No. 64,456
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8352
`Facsimile: (312) 706-9316
`Email: ejpalmer@mayerbrown.com
`
`Counsel for Patent Owner, Endo
`Pharmaceuticals Inc.
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`6
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`CERTIFICATE OF SERVICE
`I, the undersigned, hereby certify that on this 22nd day of May, 2014, I
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`caused the foregoing document, PATENT OWNER’S SURREPLY REGARDING
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`35 U.S.C. § 315(b), to be served via electronic mail on the following attorneys for
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`Petitioner:
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`Eldora L. Ellison (Reg. No. 39,967)
`eellison-PTAB@skgf.com
`Dennies Varughese (Reg. No. 61,868)
`dvarughe-PTAB@skgf.com
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue, NW
`Washington, DC 20005
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`/Joseph A. Mahoney/
`Joseph A. Mahoney
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`Dated: May 22, 2014
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