Trials@uspto.gov
`571.272.7822
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`Paper No. 10
`Filed: March 31, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AKORN INC.,
`Petitioner,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00596
`Patent 8,629,111 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
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`
`
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`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
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`

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`Case IPR2017-00596
`Patent 8,629,111 B2
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`I.
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`INTRODUCTION
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`Akorn Inc. (“Akorn”) filed a Petition, seeking an inter partes review
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`of claims 1–27 of U.S. Patent No. 8,629,111 B2 (“the ’111 patent,”
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`Ex. 1001). Paper 4 (“Pet”). Along with the Petition, Akorn filed a Motion
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`for Joinder to join this proceeding with Mylan Pharmaceuticals Inc. v.
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`Allergan, Inc., IPR2016-01128. Paper 3 (“Mot”). Akorn filed the Petition
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`and Motion for Joinder in the present proceeding on January 6, 2017, within
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`one month after we instituted trial in IPR2016-01131. 37 C.F.R. §
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`42.122(b). Patent Owner Allergan, Inc. (“Allergan”) filed an opposition to
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`Akorn’s Motion for Joinder (Paper 8) and Akorn filed a reply (Paper 9). Via
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`e-mail correspondence to the Board on March 30, 2017, Allergan indicated
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`that it did not intend to file a Preliminary Response to Akorn’s Petition. Ex.
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`3001.
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`As explained further below, we institute trial on the same grounds as
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`instituted in IPR2016-01128 and grant Akorn’s Motion for Joinder.
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`II. DISCUSSION
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`In IPR2016-01128, Mylan Pharmaceuticals Inc. (“Mylan”) challenged
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`claims 1–27 of the ’111 patent on the following grounds:
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`References
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`Ding ’9791
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`Basis
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`§ 102
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`Ding ’979 and Sall2
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`§ 103(a)
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`Claims challenged
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`1–27
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`1–27
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`1 Ding et al., US 5,474,979, issued Dec. 12, 1995 (Ex. 1006).
`2 Sall et al., Two Multicenter, Randomized Studies of the Efficacy and Safety
`of Cyclosporine Ophthalmic Emulsion in Moderate to Severe Dry Eye
`Disease, 107 OPHTHALMOLOGY 631–39 (2000) (Ex. 1007).
`2
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`

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`Case IPR2017-00596
`Patent 8,629,111 B2
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`References
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`Basis
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`Claims challenged
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`Ding ’979, Sall, and
`Acheampong3
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`§ 103(a)
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`11 and 16
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`After considering the Petition and the Patent Owner Preliminary
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`Response, we instituted trial in IPR2016-01128 on all three grounds.
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`IPR2016-01128, Paper 8, 22–23.
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`Akorn’s Petition is substantively identical to Mylan’s Petition,
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`challenging the same claims based on the same art and the same grounds.
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`Compare IPR2016-01128, Paper 3 with IPR2017-00596, Paper 4. For the
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`same reasons stated in our Decision on Institution in IPR2016-01128, we
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`institute trial in this proceeding on the same three grounds. See IPR2016-
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`01128, Paper 8.
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`Having determined that institution is appropriate, we now turn to
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`Akorn’s Motion for Joinder. Based on authority delegated to us by the
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`Director, we have discretion to join an inter partes review to a previously
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`instituted inter partes review. 35 U.S.C. § 315(c). Section 315(c) provides,
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`in relevant part, that “[i]f the Director institutes an inter partes review, the
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`Director, in his or her discretion, may join as a party to that inter partes
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`review any person who properly files a petition under section 311.” Id.
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`When determining whether to grant a motion for joinder we consider factors
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`
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`3 Acheampong et al., Cyclosporine Distribution into the Conjunctiva,
`Cornea, Lacrimal Gland, and Systemic Blood Following Topical Dosing of
`Cyclosporine to Rabbit, Dog, and Human Eyes, LACRIMAL GLAND, TEAR
`FILM, AND DRY EYE SYNDROMES 2: BASIC SCIENCE AND CLINICAL
`RELEVANCE 1001–04 (David A. Sullivan et al. eds., 1998) (Ex. 1008).
`3
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`Case IPR2017-00596
`Patent 8,629,111 B2
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`such as timing and impact of joinder on the trial schedule, cost, discovery,
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`and potential simplification of briefing. Kyocera Corp. v. SoftView, LLC,
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`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`Under the circumstances of this case, we determine that joinder is
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`appropriate. As Akorn notes, the Petition in IPR2017-00596 is substantially
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`the same as the Mylan Petition, presenting the same arguments and relying
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`on the same expert testimony and exhibits. Mot. 4–5.
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`Akorn has also agreed to assume an “understudy role” in the joined
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`proceedings. Id. at 6. As long as Mylan remains a party, Akorn agrees to
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`“consolidated filings for all substantive papers in the respective proceedings,
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`except for motions that do not involve Mylan.” Id. at 6. Akorn also agrees
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`that cross-examination will not be extended in light of the joinder, and that
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`the oral argument will be conducted by Mylan. Id. Akorn further contends
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`that there will be no impact on the trial schedule of IPR2016-01128, and that
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`joinder will simplify the proceedings without prejudice to the parties. Id. at
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`6–7.
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`Allergan opposes Akorn’s Motion for Joinder, arguing that the statute
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`prohibits the joinder of time barred petitions to existing inter partes review
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`proceedings. Paper 8, 3–5. But Allergan also “acknowledges the Board’s
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`current position that (1) section 315(b)’s one-year time bar exception applies
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`to both petitions and requests for joinder and (2) that institution decisions are
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`not reviewable on appeal.” Id. at 5 n.1 (citing Microsoft Corp. v. Proxyconn
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`Inc., IPR2013-00109, slip op. at 4 (PTAB Feb. 25, 2013) (Paper 15);
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`Achates Reference Publ’g, Inc. v. Apple, Inc., 803 F.3d 652 (Fed. Cir. 2015);
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`37 C.F.R. § 42.122(b)). We are not persuaded by Allergan’s arguments for
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`4
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`Case IPR2017-00596
`Patent 8,629,111 B2
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`the reasons stated in the Board’s prior decisions. See, e.g., Microsoft, Paper
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`15 at 4 (“[T]he one-year time bar [under 35 U.S.C. § 315(b)] does not apply
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`to a request for joinder.”).
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`In view of the foregoing, we find that joinder based upon the
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`conditions stated in Akorn’s Motion for Joinder will have little or no impact
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`on the timing, cost, or presentation of the trial on the instituted grounds.
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`Moreover, discovery and briefing will be simplified if the proceedings are
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`joined. Thus, Akorn’s Motion for Joinder is granted.
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`III. ORDER
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`Accordingly, it is
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`ORDERED that trial is instituted in IPR2017-00596 on the following
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`grounds:
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`A. Claims 1–27 as anticipated by Ding ’979;
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`B. Claims 1–27 as obvious over Ding ’979 and Sall;
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`C. Claims 11 and 16 as obvious over Ding ’979, Sall, and
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`Acheampong.
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`FURTHER ORDERED that Akorn’s Motion for Joinder with
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`IPR2016-01128 is granted;
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`FURTHER ORDERED that IPR2017-00596 is terminated and joined
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`to IPR2016-01128, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the
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`conditions stated in Akorn’s Motion for Joinder (Paper 3), as discussed
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`above;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2016-01128 shall govern the joined proceedings;
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`Case IPR2017-00596
`Patent 8,629,111 B2
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`FURTHER ORDERED that all future filings in the joined proceeding
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`are to be made only in IPR2016-01128;
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`FURTHER ORDERED that the case caption in IPR2016-01128 for all
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`further submissions shall be changed to add Akorn as a named Petitioner
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`with Mylan, and to indicate by footnote the joinder of IPR2017-00596 to
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`that proceeding, as indicated in the attached sample case caption;4
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2016-01128.
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`4 We note that Petitioner Teva Pharmaceuticals USA, Inc. has also filed a
`Motion for Joinder of IPR2017-00578 with IPR2016-01128. Concurrent
`with this decision, the Board has entered a decision granting Akorn’s
`motion, as well. Accordingly, the sample case caption also reflects joinder
`of IPR2017-00578.
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`6
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`Case IPR2017-00596
`Patent 8,629,111 B2
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`FOR PETITIONER:
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`Michael Dzwonczyk
`mdzwonczyk@sughrue.com
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`Azadeh Kokabi
`akokabi@sughrue.com
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`Travis Ribar
`tribar@sughrue.com
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`FOR PATENT OWNER:
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`Dorothy Whelan
`whelan@fr.com
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`Mike Kane
`kane@fr.com
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`7
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`Case IPR2017-00596
`Patent 8,629,111 B2
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`Sample Case Caption
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS
`USA, INC., and AKORN INC.,
`Petitioners,
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`v.
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`ALLERGAN, INC.,
`Patent Owner.
`____________
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`Case IPR2016-011285
`Patent 8,629,111 B2
`____________
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`5 Cases IPR2017-00578 and IPR2017-00596 have been joined with this
`proceeding.
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`8
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