Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No. 128
`Entered: February 23, 2018
`
`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 IPR2016-01129 (8,642,556 B2); Case IPR2016-01130 (8,633,162 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.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-
`00596, IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017-
`00599, IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and
`IPR2017-00601, have respectively been joined with the captioned
`proceedings. This Order addresses issues that are the same in the identified
`cases. Paper numbers and exhibits cited in this Order refer to those
`documents filed in IPR2016-01127.
`
`
`Tel: 571-272-7822
`
`
`Paper No. 128
`Entered: February 23, 2018
`
`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 IPR2016-01129 (8,642,556 B2); Case IPR2016-01130 (8,633,162 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.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-
`00596, IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017-
`00599, IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and
`IPR2017-00601, have respectively been joined with the captioned
`proceedings. This Order addresses issues that are the same in the identified
`cases. Paper numbers and exhibits cited in this Order refer to those
`documents filed in IPR2016-01127.
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`Allergan’s Motion to Withdraw
`Pursuant to our authorization, Allergan, Inc. (“Allergan”) filed a
`motion to withdraw from these proceedings. Paper 126 (“Motion” or
`“Mot.”). Petitioners filed an opposition to Allergan’s Motion. Paper 128
`(“Opposition” or “Opp’n”).
`Allergan seeks to withdraw from these proceedings on the grounds
`that it has ceased to be an owner of the six patents involved in these
`proceedings in view of its agreements with the Saint Regis Mohawk Tribe
`(“the Tribe”). Mot. 4–5. Petitioners contend that the “ownership question,
`however, is a fundamental dispute that has been extensively briefed in
`connection with the Tribe’s pending Motion to Dismiss.” Opp’n 1.
`Petitioners further contend that Allergan is at least a joint owner as a result
`of the agreements with the Tribe, and that Allergan has already taken all
`actions authorized to be taken by the patent owner under our rules and
`governing statute. Id. at 2–3. Additionally, Petitioners contend that
`Allergan’s request to withdraw should be construed as an abandonment of
`these proceedings, and thus a request for adverse judgement under 37 C.F.R.
`§ 42.73(b)(4). Id. at 4–5.
`As set forth in our Decision Denying the Tribe’s Motion to Terminate,
`we determine that Allergan remains an effective “patent owner” of the
`challenged patents in these proceedings based on the terms of its License
`Agreement with the Tribe. Paper __, 18–34. Accordingly, we find that the
`basis for Allergan’s request to withdraw does not hold true. We decline,
`however, to construe the request to withdraw as a request for adverse
`judgment insofar as the ownership question was not settled at the time
`
` 2
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`Allergan filed its Motion. In this regard, we recognize that the Tribe may
`still claim an ownership interest in the challenged patents in a subsequent
`appeal to the Federal Circuit. In order to allow the Tribe to represent its
`interests in these proceedings before the Board and in any appeals, we will
`allow the Tribe to continue participating as a patent owner along with
`Allergan. Allergan and the Tribe shall coordinate their efforts going
`forward, and shall file joint papers in these proceedings unless otherwise
`authorized by the Board. The caption for this Order and subsequent orders
`and decisions in these proceedings will reflect both Allergan’s and the
`Tribe’s status as the named “Patent Owners.”
`Remaining Schedule
`In view of our Decision Denying the Tribe’s Motion to Terminate, we
`will resume the schedule for these proceedings and proceed to a final written
`decision. The parties had previously submitted requests for oral hearing
`pursuant to 37 C.F.R. § 42.70(a). Papers 47 and 48. Accordingly, an oral
`hearing has been tentatively scheduled for April 3, 2018. Within five (5)
`business days after entry of this Order, the parties shall meet and confer and
`notify the Board via email whether this hearing date is acceptable to the
`parties or, if not, the parties shall provide the Board with several mutually
`acceptable dates for a hearing. Any proposed hearing dates shall be no later
`than April 6, 2018. We will consider the proposed hearing dates and enter a
`revised Hearing Order with the new date for the hearing, subject to the
`availability of hearing rooms at the Board.
`
` 3
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`In order to provide ourselves with sufficient time to consider the
`arguments presented, we will also adjust the time to enter our final written
`decisions in these proceedings to June 6, 2018.
`ORDER
`Accordingly, based on the foregoing, it is:
`ORDERED that Allergan’s Motion to Withdraw is denied;
`FURTHER ORDERED that the Tribe may continue participating as a
`patent owner along with Allergan. Allergan and the Tribe shall coordinate
`their efforts going forward, and shall file joint papers in these proceedings
`unless otherwise authorized by the Board. The caption for these proceedings
`shall reflect both Allergan’s and the Tribe’s status as “Patent Owners”;
`FURTHER ORDERED that an oral hearing has been tentatively
`scheduled for April 3, 2018;
`FURTHER ORDERED that within five (5) business days after entry
`of this Order, the parties shall meet and confer and notify the Board via
`email whether April 3, 2018, is acceptable to the parties for a hearing, or, if
`not, the parties shall provide the Board with several mutually acceptable
`dates for a hearing no later than April 6, 2018; and
`FURTHER ORDERED that the time to enter final written decisions in
`these proceedings is adjusted to June 6, 2018.
`
`
`
` 4
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`PETITIONER MYLAN:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`PETITIONER TEVA:
`
`Gary Speier
`Mark Schuman
`CARLSON, CASPERS, VANDENBURH,
` LINDQUIST & SCHUMAN, P.A.
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`
`PETITIONER AKORN:
`
`Michael Dzwonczyk
`Azadeh Kokabi
`Travis Ribar
`SUGHRUE MION, PLLC
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`
`
`PATENT OWNER:
`
`Dorothy P. Whelan
`Michael Kane
`Susan Coletti
`Robert Oakes
`FISH & RICHARDSON P.C.
`whelan@fr.com
`PTABInbound@fr.com
`
` 5
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`coletti@fr.com
`oakes@fr.com
`
`Alfonso Chan
`Michael Shore
`Christopher Evans
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`mshore@shorechan.com
`cevans@shorechan.com
`
`Marsha Schmidt
`marsha@mkschmidtlaw.com
`
`
`
` 6
`
`
`
`
`
`
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