Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 159
`
` Entered: September 27, 2019
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`TEVA PHARMACEUTICALS USA, INC., and AKORN INC.,
`Petitioners,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE and ALLERGAN, INC.,
`Patent Owners.
`____________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)1
`____________
`
`
`
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-
`00596, IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and
`IPR2017-00601, have respectively been joined with the captioned
`proceedings.
`
`This decision addresses issues common to each of the above proceedings.
`We, therefore, enter one decision to be entered in each proceeding. For
`convenience, citations to papers and exhibits refer to those filed in IPR2016-
`01127. Similar papers and exhibits were filed in the other proceedings.
`
`
`
`
`571.272.7822
`
`
` Paper No. 159
`
` Entered: September 27, 2019
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`TEVA PHARMACEUTICALS USA, INC., and AKORN INC.,
`Petitioners,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE and ALLERGAN, INC.,
`Patent Owners.
`____________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)1
`____________
`
`
`
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-
`00596, IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and
`IPR2017-00601, have respectively been joined with the captioned
`proceedings.
`
`This decision addresses issues common to each of the above proceedings.
`We, therefore, enter one decision to be entered in each proceeding. For
`convenience, citations to papers and exhibits refer to those filed in IPR2016-
`01127. Similar papers and exhibits were filed in the other proceedings.
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`
`TERMINATION
`Dismissal After Institution of Trial
`37 C.F.R. § 42.72
`
`
`
`Mylan Pharmaceuticals Inc. (“Mylan”) filed Petitions requesting an
`inter partes review of all claims of U.S. Patent No. 8,685,930 B2 (“the ’930
`patent”) in IPR2016-00127; U.S. Patent No. 8,629,111 B2 (“the ’111
`patent”) in IPR2016-01128; U.S. Patent No. 8,648,048 B2 (“the ’048
`patent”) in IPR2016-01131; and U.S. Patent No. 9,248,191 B2 ( “the ’191
`patent”) in IPR2016-01132 (collectively, “the Challenged Patents”).
`Allergan, Inc. (“Patent Owner”) filed a Preliminary Response to the Petition
`in each proceeding. We instituted trial for all of the challenged claims in
`each proceeding. Teva Pharmaceuticals USA, Inc. (“Teva”) and Akorn Inc.
`(“Akorn”) (collectively with Mylan herein, “Petitioners”) also filed Petitions
`for inter partes review challenging the same claims of the same patents on
`the same grounds. We instituted trial and joined those proceedings with
`these proceedings. See supra n.1.
`In a separate, copending district court proceeding, Allergan, Inc. v.
`Teva Pharmaceuticals USA, Inc., Case No. 2:15-cv-1455-WCB (E.D. Tex.),
`the district court found thirteen representative claims of the Challenged
`Patents invalid as obvious. Id., 2017 WL 4803941 (E.D. Tex. Oct. 16, 2017)
`(Ex. 1164). The Federal Circuit affirmed the district court’s decision by
`Rule 36 judgment. Allergan, Inc. v. Teva Pharms. USA, Inc., 742 F. App’x
`511 (Mem.) (Fed. Cir. Nov. 13, 2018) (Ex. 1172). Patent Owner’s petition
`
`
`
` 2
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`for a writ of certiorari was denied. Allergan, Inc. v. Teva Pharms. USA, Inc.,
`139 S. Ct. 2674 (Mem.) (2019).
`In light of the parallel proceeding and the finding of obviousness of
`the representative claims, we authorized supplemental briefing on the impact
`of the Federal Circuit’s Rule 36 affirmance on the patentability issues in
`these proceedings. Paper 139, 3. Pursuant to our order, Petitioners filed
`their Supplemental Briefing (Paper 143) and Patent Owner filed its response
`(“PO Supp. Br.,” Paper 145).
`During the district court litigation, Patent Owner agreed to treat the
`thirteen litigated claims as representative of all claims of the Challenged
`Patents and states that “judgment as to those thirteen claims can be properly
`applied to all claims of those four patents.” PO Supp. Br. 9. Because the
`Federal Circuit’s judgment is now final, Patent Owner concedes that there is
`“nothing left for the Board to do on those patents, rendering the IPRs on
`those patents moot.” Id.
`Pursuant to 37 C.F.R. § 42.72, we have authority to terminate a trial
`without rendering a final written decision, where appropriate. Given the
`claims of the Challenged Patents have been found unpatentable in the
`parallel district court proceeding with finality, we agree with Patent Owner
`that the instant proceedings are moot. See Facebook, Inc. v. EveryMD.com,
`IPR2017-02027, Paper 24 at 4 (PTAB Oct. 9, 2018) (finding petition moot
`where the courts had finally adjudicated all claims of the challenged patent).
`
`
`
` 3
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`We, therefore, dismiss the Petition in each proceeding as moot and terminate
`the proceedings without rendering a final written decision.2
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petitions in IPR2016-01127, IPR2016-01128,
`IPR2016-01131, and IPR2016-01132 are dismissed as moot; and
`FURTHER ORDERED that the proceedings in IPR2016-01127,
`IPR2016-01128, IPR2016-01131, and IPR2016-01132 are terminated.
`
`
`
`
`
`
`
`
`
`
`
`2 Mylan also filed Petitions challenging U.S. Patent No. 8,642,556 B2 in
`IPR2016-01129 and U.S. Patent No. 8,633,162 B2 in IPR2016-01130.
`Neither of those patents were explicitly addressed in the district court’s
`decision. We, therefore, address those Petitions in separate decisions.
`
`
`
` 4
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`For PETITIONER MYLAN:
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`rtorczon@wsgr.com
`
`For PETITIONER TEVA:
`Gary Speier
`Mark Schuman
`CARLSON, CASPERS, VANDENBURH,
`LINDQUIST & SCHUMAN, P.A.
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`
`For PETITIONER AKORN:
`Michael Dzwonczyk
`Azadeh Kokabi
`Travis Ribar
`SUGHRUE MION, PLLC
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`
`Ralph Powers
`STERNE KESSLER GOLDSTEIN & FOX
`tpowers-ptab@sternekessler.com
`
`
`
`
`
`
`
` 5
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`For PATENT OWNERS:
`Dorothy P. Whelan
`Michael Kane
`Susan Coletti
`Robert Oakes
`FISH & RICHARDSON P.C.
`whelan@fr.com
`PTABInbound@fr.com
`coletti@fr.com
`oakes@fr.com
`
`Alfonso Chan
`Michael Shore
`Christopher Evans
`Joseph DePumpo
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`mshore@shorechan.com
`cevans@shorechan.com
`jdepumpo@shorechan.com
`
`Marsha Schmidt
`marsha@mkschmidtlaw.com
`
`
`
`
`
` 6
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`
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`
`
`
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