`571-272-7822
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` Paper: 9
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` Entered: Nov. 30, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`FOXHILL CAPITAL PARTNERS, and MYCONOVO, INC.,1
`Petitioners,
`
`v.
`
`DR. FALK PHARMA GMBH,
`Patent Owner.
`____________
`
`Case IPR2016-01386, Case IPR2016-01409
`Patent 8,865,688 B2
`____________
`
`
`
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Reviews and Motions for Joinder
`35 U.S.C. § 314, 37 C.F.R. §§ 42.108 and 42.122
`
`
`
`1 Mylan Pharmaceuticals Inc. (“Mylan”) is Petitioner in Case IPR2016-
`01386, Foxhill Capital Partners and MycoNovo, Inc. (collectively,
`“Foxhill”) is Petitioner in Case IPR2016-01409.
`
`
`
`
`
`IPR2016-01386; IPR2016-01409
`Patent 8,865,688
`
`
`INTRODUCTION
`I.
`Petitioners, Mylan and Foxhill, each filed a Petition requesting an
`inter partes review of claims 1 and 16 of U.S. Patent No. 8,865,688 (Ex.
`1001, “the ’688 patent”). Paper 1 (“Pet.”).2 Concurrently with the Petitions,
`Mylan and Foxhill each filed a Motion for Joinder requesting that Petitioner
`be joined as a party to GeneriCo LLC v. Dr. Falk Pharma, IPR2016-00297
`(“297 IPR”). Paper 3 (“Joinder Mot.”).
`Patent Owner, Dr. Falk Pharma GmbH, filed an opposition to the
`Motion for Joinder in each case. IPR2016-01386, Paper 6 (“1386 PO
`Opp.”); IPR2016-01409, Paper 9 (“1409 PO Opp.”). In each case, Patent
`Owner waived its right to present a preliminary response to the Petition for
`inter partes review. Paper 8.
`Petitioner in IPR2016-00297, GeneriCo, LLC and Flat Line Capital,
`LLC (collectively, “GeneriCo”), filed an opposition to Foxhill’s Motion for
`Joinder, IPR2016-00297, Paper 22 (“GeneriCo Opp.”), but did not oppose
`Mylan’s Motion for Joinder.
`In Case IPR2016-01409, Foxhill filed a Reply to Patent Owner’s
`Opposition to Motion for Joinder, IPR2016-01409, Paper 10 (“Reply to
`PO”) and a Reply to GeneriCo’s Opposition to Motion for Joinder,
`IPR2016-01409, Paper 11 (“Reply to GeneriCo”).
`
`
`2 Citations are to IPR2016-01386 as representative of corresponding papers
`in both cases unless otherwise indicated.
`
`2
`
`
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`IPR2016-01386; IPR2016-01409
`Patent 8,865,688
`
`
`II. DISCUSSION
`The Petitions
`A.
`Mylan and Foxhill each represent that “Grounds 1–4 are practical
`copies of the grounds presented in the petition in IPR2016-00297, including
`Grounds 3 and 4 that were instituted by the Board, challenging the same
`claims over the same prior art and using the same arguments and expert
`testimony.” Pet. 4. Mylan and Foxhill each further represent that the
`“Petition has been revised in portions only to address certain formalities,
`such as, e.g., mandatory notice information, counsel, related matters, etc.”
`Joinder Mot. 2. In addition, Mylan and Foxhill each represent that “[t]he
`Digenis Declaration is an exact copy of Dr. Digenis’ declaration from
`IPR2016-00297.” Pet. 4.
`Mylan and Foxhill each request institution “only on the Grounds
`instituted in IPR2016-00297, i.e., Grounds 3 and 4 (which the Board
`determined subsumed Ground 1), as to claims 1 and 16, and not on Grounds
`1 and 2.” Pet. 1.
`We incorporate our analysis from our institution decision in the 297
`IPR. IPR2016-00297, Paper 13 (“Dec.”), 4–30. For the same reasons, we
`conclude that Mylan and Foxhill have each demonstrated a reasonable
`likelihood of prevailing on Grounds 3 or 4 in the alternative. Dec. 4–27; Pet.
`4–51. Because Mylan and Foxhill do not seek institution based on Grounds
`1 and 2, Pet. 1, and for the same reasons as stated in the 297 IPR, Dec. 27–
`30, we do not institute review based on either of Grounds 1 or 2.
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`3
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`
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`IPR2016-01386; IPR2016-01409
`Patent 8,865,688
`
`
`B. Motions for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a party to another inter partes review, subject to certain exceptions
`not present here. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. As the
`moving party, Petitioner has the burden of proof in establishing entitlement
`to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
`joinder should: (1) set forth the reasons why joinder is appropriate;
`(2) identify any new ground(s) of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
`the existing review; and (4) address how briefing and/or discovery may be
`simplified to minimize schedule impact. See Joinder Mot. 3; Kyocera Corp.
`v. SoftView LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`(Paper 15) (representative); Frequently Asked Question H5 on the Board’s
`website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`Here, Mylan and Foxhill each represent, and Patent Owner does not
`dispute, that the Petitions are “practical copies of the grounds presented in
`the petition in IPR2016-00297 . . . and challenge the same claims over the
`same prior art and using the same arguments and expert testimony.” Joinder
`Mot. 1; 1386 PO Opp. 4; 1409 PO Opp. 3. Mylan and Foxhill further
`represent that they each intend to pursue only Grounds 3 and 4, as instituted
`in the 297 IPR. Joinder Mot. 1. In addition, Mylan and Foxhill each seek to
`participate in the 297 IPR proceeding “in a limited capacity as an
`understudy” to GeneriCo. Id. at 2.
`Based on the above, Mylan and Foxhill argue that joinder is
`“appropriate because it will promote the just, speedy, and inexpensive
`resolution of patentability issues, including the determination of validity of
`
`4
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`IPR2016-01386; IPR2016-01409
`Patent 8,865,688
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`the challenged claims of the ’688 patent,” and potentially minimize issues
`and resolve any litigation regarding the challenged claims. Id. at 4–5. In
`addition, Mylan and Foxhill contend no new grounds are presented, and
`granting joinder will not prejudice Patent Owner or GeneriCo or
`significantly affect the trial schedule in the case. Id. at 5–6.
`Lastly, Mylan and Foxhill indicate that discovery and briefing can be
`simplified here because, in their understudy role, as long as GeneriCo
`remains a party (i.e., does not reach a settlement with Patent Owner), each of
`Mylan and Foxhill “will not submit any separate filings unless it disagrees
`with” GeneriCo’s position “(which it is not anticipated), and in the event of
`any disagreement it will request authorization from the Board to submit a
`short separate filing directed only to points of disagreement” with GeneriCo.
`Id. at 7. As long as GeneriCo remains a party, Mylan and Foxhill will not
`seek to submit any new declarations or request any additional depositions or
`time during depositions. Id. at 8.
`Patent Owner states that it “would not oppose” Foxhill’s joinder, if the
`Board orders “meaningful protections” to ensure that Foxhill’s participation
`does not complicate, disrupt, or delay the 297 IPR. 1409 PO Opp. 1. Patent
`Owner opposes Mylan’s joinder, however, asserting that it will “complicate,
`disrupt, and delay” the 297 IPR. 1386 PO Opp. 1. Patent Owner further
`asserts that, absent joinder, Mylan’s petition is time-barred. Id. at 2.
`GeneriCo states that it “does not agree to work with Foxhill” and
`“does not consent to sharing its draft briefs with Foxhill.” GeneriCo Opp. 2,
`7. GeneriCo states that its expert, Dr. Digenis, “is not contractually
`obligated to testify on Foxhill’s behalf” and “would be contractually
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`5
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`IPR2016-01386; IPR2016-01409
`Patent 8,865,688
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`precluded” from providing a supplemental deposition in the event GeneriCo
`is no longer involved in the 297 IPR. Id. at 1, 6.
`In its reply briefs, Foxhill reiterates that it “agrees to accept a back-
`seat role to GeneriCo in any consolidated proceeding, without any right to
`separate briefing or discovery.” Reply to GeneriCo 7. Foxhill clarifies that
`“via its motion for joinder, [Foxhill] requests permission to be added to the
`case caption as a petitioner in IPR2016-00297, without any active
`involvement that is separate from GeneriCo, unless authorized by the PTAB
`upon a request pertaining to an issue unique to [Foxhill].” Id.; see also
`Reply to PO 7 (same).
`In view of Mylan’s and Foxhill’s agreement to be limited to an
`“understudy” or “back-seat” role with no active involvement separate from
`GeneriCo, and their agreement to be limited to evidence and arguments
`presented in the GeneriCo Petition in relation to instituted Grounds 3 or 4 (in
`the alternative), we conclude Mylan and Foxhill have demonstrated that
`joinder will not unduly complicate, disrupt, or delay the 297 IPR.
`GeneriCo’s concerns are addressed by our order below, which provides that
`Mylan’s and Foxhill’s participation shall be subject to GeneriCo’s
`acquiescence so long as GeneriCo remains a party to the proceeding. Thus,
`we grant Mylan’s and Foxhill’s Motions for Joinder and, as a result, join
`those parties to the 297 IPR.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes reviews are instituted in Case IPR2016-
`01386 and Case IPR2016-01409 as to claims 1 and 16 of the ’688 patent, but
`only based on the same grounds instituted in Case IPR2016-00297;
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`6
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`IPR2016-01386; IPR2016-01409
`Patent 8,865,688
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`FURTHER ORDERED that each of Mylan’s and Foxhill’s Motion for
`Joinder is granted, and Mylan and Foxhill are joined as parties to Case
`IPR2016-00297;
`FURTHER ORDERED that the grounds on which an inter partes
`review were instituted in Case IPR2016-00297 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Case IPR2016-01386, and Case
`IPR2016-01409 are instituted, joined, and administratively terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceedings shall be
`made in Case IPR2016-00297;
`FURTHER ORDERED that the Scheduling Order entered in Case
`IPR2016-00297 (Paper 14), as modified by stipulation of the parties in Case
`IPR2016-00297 (see, e.g., Paper 28), shall govern the schedules of the
`joined proceedings;
`FURTHER ORDERED that the participation by Mylan and Foxhill in
`the briefing, discovery, depositions, and oral argument of the joined
`proceedings shall be subject to GeneriCo’s acquiescence to their
`participation so long as GeneriCo remains a party to the proceeding and,
`absent our express authorization, Mylan and Foxhill shall not file papers or
`exhibits apart from GeneriCo;
`FURTHER ORDERED that the case caption in Case IPR2016-00297
`shall be changed to reflect the joinder with this proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the files of Case IPR2016-00297, Case IPR2016-01386, and Case
`IPR2016-01409.
`
`
`7
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`
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`IPR2016-01386; IPR2016-01409
`Patent 8,865,688
`
`PETITIONER (IPR2016-00297):
`Zachary Silbersher
`Gaston Kroub
`KROUB, SILBERSHER & KOLMYKOV PLLC
`zsibersher@kskiplaw.com
`info@kskiplaw.com
`
`PETITIONER (IPR2016-01386):
`Robert L. Florence
`Micheal L. Binns
`Karen L. Carroll
`PARKER POE ADAMS & BERNSTEIN LLP
`robertflorence@parkerpoe.com
`michealbinns@parkerpoe.com
`karencarroll@parkerpoe.com
`
`PETITIONER (IPR2016-01409):
`William Hare
`Gabriela Materassi
`MCNEELY HARE & WAR LLP
`bill@miplaw.com
`materassi@miplaw.com
`
`PATENT OWNER:
`Mary W. Bourke
`Preston H. Heard
`WOMBLE CARLYLE SANDBRIDGE & RICE LLP
`mbourke@wcsr.com
`pheard@wcsr.com
`
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`8
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`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper: 9
`
`
` Entered: Nov. 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERICO, LLC, FLAT LINE CAPITAL LLC,
`MYLAN PHARMACEUTICALS INC.,
`FOXHILL CAPITAL PARTNERS, and MYCONOVO, INC.,
`Petitioner,
`
`v.
`
`DR. FALK PHARMA GMBH,
`Patent Owner.
`____________
`
`Case IPR2016-002973
`Patent 8,865,688 B2
`____________
`
`
`
`
`3 Case IPR2016-01386 and Case IPR2016-01409 have been joined with this
`proceeding.