UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`TORRENT PHARMACEUTICALS LIMITED
`Petitioner
`
`v.
`
`
`
`
`
`UCB PHARMA GMBH
`Patent Owner
`
`
`
`Patent No. 6,858,650
`Filing Date: November 15, 2000
`Issue Date: February 22, 2005
`Title: STABLE SALTS OF NOVEL DERIVATIVES
`OF 3,3-DIPHENYLPROPYLAMINES
`___________________
`
`
`
`Inter Partes Review No. Unassigned
`
`_________________________________________________________________
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c), 37 C.F.R. §§
`42.22 AND 42.122(b)
`
`
`
`
`
`14018886.4
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`TORRENT PHARMACEUTICALS LIMITED
`Petitioner
`
`v.
`
`
`
`
`
`UCB PHARMA GMBH
`Patent Owner
`
`
`
`Patent No. 6,858,650
`Filing Date: November 15, 2000
`Issue Date: February 22, 2005
`Title: STABLE SALTS OF NOVEL DERIVATIVES
`OF 3,3-DIPHENYLPROPYLAMINES
`___________________
`
`
`
`Inter Partes Review No. Unassigned
`
`_________________________________________________________________
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c), 37 C.F.R. §§
`42.22 AND 42.122(b)
`
`
`
`
`
`14018886.4
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 2
`
`III. STATEMENT OF RELEVANT FACTS ........................................................ 2
`
`IV. LEGAL STANDARD ..................................................................................... 3
`
`V. ARGUMENT ................................................................................................... 5
`
`A.
`
`Joinder is Appropriate Under the Governing Law, Rules, and
`Precedent ............................................................................................... 5
`
`B. No New Grounds of Unpatentability Are Presented ............................. 6
`
`C.
`
`D.
`
`Joinder Will Have No Impact on the Existing Schedule. ..................... 7
`
`Procedural Safeguards Will Simplify Briefing and Discovery ............. 7
`
`VI. CONCLUSION ................................................................................................ 8
`
`
`
`
`
`
`14018886.4
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`PTAB PROCEEDINGS
`Apple, Inc. v. Smartflash LLC,
`CBM2015-00119 .............................................................................................. 4, 5
`
`Cisco Sys., Inc., et al. v. Straight Path IP Grp., Inc.,
`IPR2015-01006 ................................................................................................. 4, 5
`
`Dell Inc. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00385 ..................................................................................................... 4
`
`InnoPharma Licensing Inc. v. Senju Pharmaceutical Co. Ltd.,
`IPR2016-00089 ......................................................................................... 2, 4, 7, 8
`
`ION Geophysical Corp., v. WesternGeco LLC
`IPR2015-00565 ..................................................................................................... 5
`
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004 ................................................................................................. 1, 5
`
`LG Elec., Inc. v. Innovative Display Techs. LLC,
`IPR2015-00493 ................................................................................................. 4, 5
`
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00256 ..................................................................................................... 7
`
`Mylan Pharms. Inc. v. Novartis AG, et al.,
`IPR2015-00268 ................................................................................................. 4, 5
`
`Samsung Elecs. Co., Ltd. v. Summit 6 LLC,
`IPR2016-00029 ................................................................................................. 5, 8
`
`FEDERAL STATUTES
`
`35 U.S.C. § 103 .......................................................................................................... 2
`
`35 U.S.C. § 315(c) ................................................................................................. 2, 3
`
`
`14018886.4
`
`ii
`
`
`
`REGULATIONS
`
`37 C.F.R. § 42.1(b) .................................................................................................... 6
`
`37 C.F.R. §§ 42.22 ................................................................................................. 1, 2
`
`37 C.F.R. § 42.122(b) ........................................................................................ 1, 2, 3
`
`
`
`
`14018886.4
`
`iii
`
`
`
`I.
`
`
`INTRODUCTION
`
`Petitioner Torrent Pharmaceuticals Limited (“Torrent”) moves to join its
`
`concurrently filed petition for inter partes review of U.S. Patent No. 6,858,650
`
`(“the ‘650 patent”) (“the Torrent IPR”) with the inter partes review requested by
`
`Mylan Pharmaceuticals Inc. and Mylan Laboratories Limited against the same
`
`patent. See Mylan Pharmaceuticals Inc., et al. v. UCB Pharma GmbH, IPR2016-
`
`00510 (“the Mylan IPR”). The Board instituted trial in the Mylan IPR on July 20,
`
`2016. This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as it is submitted within one month of the date on which the Mylan IPR was
`
`instituted.
`
`
`
`Joinder is appropriate because of the substantial similarity between the
`
`Torrent IPR and the Mylan IPR. The Torrent IPR relies on the same grounds as
`
`those instituted by the Board in the Mylan IPR. Other factors relevant to joinder
`
`also favor granting this motion, including that: (i) the same schedule for various
`
`proceedings can be adopted; (ii) Torrent is not advancing any new expert
`
`testimony, and thus, discovery will not be impacted by joinder; (iii) joinder will not
`
`materially affect the range of issues needing to be addressed by the Board and by
`
`the parties in the joined proceedings; (iv) joinder will not prejudice any party; and
`
`(v) Torrent is willing to agree to procedural safeguards to minimize burden. See
`
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013);
`
`
`14018886.4
`
`1
`
`
`
`InnoPharma Licensing Inc. et al. v. Senju Pharmaceutical Co. Ltd., IPR2016-
`
`00089, Paper 13 at 7 (PTAB Feb. 25, 2016) (permitting joinder based on
`
`InnoPharma’s agreement to abide by certain procedural safeguards). Because
`
`these factors support joining these proceedings, Torrent requests that the Board
`
`grant this motion for joinder.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Torrent requests joinder under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22
`
`and 42.122(b) of the Torrent IPR with the related and instituted Mylan IPR.
`
`III. STATEMENT OF RELEVANT FACTS
`UCB is the owner of the ‘650 patent.
`1.
`
`2.
`
`On February 2, 2016, Mylan filed its petition for inter partes review
`
`of claims 1-5 and 21-24 of the ‘650 patent.
`
`3.
`
`On July 20, 2016, a decision instituting inter partes review of claims
`
`1-5 and 21-24 of the ‘650 patent was entered in the Mylan IPR (Paper 12,
`
`IPR2016-00510) on the grounds that claims 1-5 and 21-24 were unpatentable over
`
`the Postlind, Bundgaard, Detrol® Label, and Berge publications under 35 U.S.C. §
`
`103, and that claims 1-5 and 21-24 were unpatentable over the Brynne, Bundgaard,
`
`and Johansson publications.
`
`4.
`
`5.
`
`
`14018886.4
`
`Oral argument is currently set for April 5, 2017 in the Mylan IPR.
`
`Concurrently with this Motion for Joinder, Torrent is filing a Petition
`
`2
`
`
`
`for inter partes review of claims 1-5 and 21-24 of the ‘650 patent.
`
`6.
`
`The Petition includes grounds that are the same as the grounds
`
`instituted in the Mylan IPR.
`
`IV. LEGAL STANDARD
`35 U.S.C. § 315(c) states:
`
`If the Director institutes an inter partes review, the Director, in
`
`his or her discretion, may join as a party to that inter partes
`
`review any person who properly files a petition under section
`
`311 that the Director, after receiving a preliminary response
`
`under section 313 or the expiration of the time for filing such a
`
`response, determines warrants the institution of an inter partes
`
`review under section 314.
`
`37 C.F.R. § 42.122(b) states:
`
`Joinder may be requested by a patent owner or petitioner. Any
`
`request for joinder must be filed, as a motion under §42.22, no
`
`later than one month after the institution date of any inter partes
`
`review for which joinder is requested. The time period set forth
`
`in §42.101(b) shall not apply when the petition is accompanied
`
`by a request for joinder.
`
`
`
`The Board has repeatedly allowed joinder of IPR proceedings when a second
`
`
`14018886.4
`
`3
`
`
`
`petition raises the same ground(s) of unpatentability as those instituted in a first
`
`proceeding. See, e.g., InnoPharma Licensing Inc. et al. v. Senju Pharmaceutical
`
`Co. Ltd., IPR2016-00089, Paper 13 at 7 (PTAB Feb. 25, 2016); Mylan Pharms.
`
`Inc. v. Novartis AG, et al., IPR2015-00268, Paper 17 (PTAB Apr. 10, 2015);
`
`Apple, Inc. v. Smartflash LLC, CBM2015-00119, Paper 11 (PTAB Aug. 6, 2015);
`
`LG Elec., Inc. v. Innovative Display Techs. LLC, IPR2015-00493, Paper 10 (July
`
`15, 2015); Cisco Sys., Inc., et al. v. Straight Path IP Grp., Inc., IPR2015-01006,
`
`Paper 12 (PTAB June 5, 2015).
`
`
`
`Indeed, there is a “policy preference for joining a party that does not present
`
`new issues that might complicate or delay an existing proceeding.” See Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 at 10 (PTAB July 29,
`
`2013) (citing 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
`
`Kyl) (“The Office anticipates that joinder will be allowed as of right – if an inter
`
`partes review is instituted on the basis of a petition, for example, a party that files
`
`an identical petition will be joined to that proceeding, and thus allowed to file its
`
`own briefs and make its own arguments.”) (emphasis added).
`
`That is precisely the situation here. Indeed, each factor identified by the
`
`Board as supporting joinder is met. The Board has explained that a motion for
`
`joinder should: (1) explain the reasons why joinder is appropriate; (2) identify any
`
`new grounds of unpatentability asserted in the petition; (3) explain what impact (if
`
`
`14018886.4
`
`4
`
`
`
`any) joinder would have on the trial schedule for the existing review; and (4)
`
`address specifically how briefing and discovery may be simplified. Kyocera,
`
`IPR2013-00004, Paper 15 at 4 (representative order).
`
`Each of these factors is addressed below, and when considered together,
`
`strongly support granting this motion for joinder.
`
`V. ARGUMENT
`Joinder is Appropriate Under the Governing Law, Rules, and
`A.
`Precedent
`
`Joinder of the Torrent IPR and the Mylan IPR is appropriate because they
`
`involve the same patent, the same claims, the same art, the same expert
`
`declarations, and the same arguments and legal rationales. As discussed above, the
`
`Board has granted numerous requests for joinder of IPR proceedings under highly
`
`similar circumstances. See, e.g., Samsung Elecs. Co., Ltd. v. Summit 6 LLC,
`
`IPR2016-00029, Paper 9 at 9 (PTAB Apr. 4, 2016) (granting joinder where
`
`concurrently-filed IPR “rel[ied] on the same prior art, same arguments, and same
`
`evidence, including the same supporting expert declaration”); ION Geophysical
`
`Corp., et al. v. WesternGeco LLC, IPR2015-00565, Paper 14 at 4-5 (PTAB Apr.
`
`23, 2015); LG Elec. Inc., IPR2015-00493, Paper 10; Mylan Pharms. Inc.,
`
`IPR2015-00268, Paper 17; Apple, Inc., CBM2015-00119, Paper 11; Cisco Sys.
`
`Inc., IPR2015-01006, Paper 12. Thus, in accordance with the Board’s previously-
`
`applied rationale, joinder of these proceedings is appropriate and will “secure the
`5
`
`
`14018886.4
`
`
`
`just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. §
`
`42.1(b).
`
`Moreover, permitting joinder will not prejudice UCB or Mylan. Torrent
`
`raises no issues that are not already before the Board, and consequently, joinder
`
`would not affect the timing of the Mylan IPR nor the content of any of UCB’s
`
`responses. In sharp contrast, Torrent and the Board would be substantially
`
`prejudiced if the proceedings are not joined. Without joinder, the Board will be
`
`burdened by having to needlessly adjudicate and preside over two proceedings
`
`involving the same patent, same issues, same patent owner, same evidence, and
`
`same expert declarations, with the potential for inconsistent results. By allowing
`
`all grounds of invalidity to be addressed in a single proceeding, the interests of all
`
`parties and the Board will be well served.
`
`Accordingly, because of the strong similarity of the Torrent IPR to the
`
`Mylan IPR and the significant efficiencies that will be gained by trying all issues in
`
`a single proceeding, joinder is appropriate and should be granted here.
`
`B. No New Grounds of Unpatentability Are Presented
`Torrent’s petition proposes institution of trial on the same grounds that were
`
`instituted by the Board in the Mylan IPR, and Torrent relies on the same
`
`arguments, exhibits, and expert testimony included in the Mylan IPR. Thus, this
`
`factor favors joinder of the Torrent IPR with the Mylan IPR.
`
`
`14018886.4
`
`6
`
`
`
`Joinder Will Have No Impact on the Existing Schedule.
`
`C.
`Granting this motion for joinder will have no impact on the trial schedule
`
`because Torrent does not raise any issues that are not already before the Board.
`
`UCB does not need to specifically address any issues raised by Torrent, and thus,
`
`joinder would have no impact on the cost of the proceeding. In addition, Torrent is
`
`willing to adhere to the schedule already established for the Mylan IPR. See, e.g.,
`
`Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 2-3 (June
`
`20, 2013) (identifying “impact of the joinder on the schedule and costs of the
`
`proceeding” as a factor relevant to decide whether to join proceedings). Thus, this
`
`factor favors joinder.
`
`Procedural Safeguards Will Simplify Briefing and Discovery
`
`D.
`Briefing and discovery in the joined proceeding can be simplified to
`
`minimize any impact to the schedule or the volume of materials submitted to the
`
`Board. Given that Mylan and Torrent will rely upon the same prior art and the
`
`same bases for rejection of the same claims using the same expert(s), Torrent
`
`envisions few, if any, differences in position.
`
`Further, to minimize any burden on the parties and the Board, Torrent will
`
`maintain a secondary, “understudy” role in the joined proceeding.
`
` See
`
`InnoPharma, IPR2016-00089, Paper 13 at 7 (granting joinder where InnoPharma
`
`agreed to “back-seat” role); Summit 6, IPR2016-00029, Paper 9 at 9 (granting
`
`
`14018886.4
`
`7
`
`
`
`joinder where Samsung agreed to “understudy” role). Torrent will assume a
`
`primary role only if Mylan ceases to participate in the IPR. As part of that
`
`secondary role, Torrent will coordinate with Mylan to provide consolidated filings
`
`within the page limits set forth by the Board, and will not submit any separate
`
`filings unless and until Mylan settles with UCB or the Mylan IPR is otherwise
`
`terminated. See Summit 6, IPR2016-00029, Paper 9 at 10 (granting joinder based
`
`on, inter alia, Samsung’s representations that it would “coordinate . . . regarding
`
`the consolidation of all filings” and would not “submit any separate filings unless
`
`and until Google settles with Patent Owner . . . .”). Torrent will also not seek
`
`additional time for depositions or oral argument.
`
`These concessions by Torrent remove any alleged “complication or delay”
`
`caused by joinder, while providing the parties an opportunity to address all issues
`
`that may arise and avoiding any undue burden on Mylan, UCB, and the Board. See
`
`InnoPharma, IPR2016-00089, Paper 13 at 7.
`
`VI. CONCLUSION
`For the foregoing reasons, Torrent requests that the Board grant this motion
`
`and join this proceeding with the Mylan IPR. Joinder will ensure a just, speedy,
`
`and inexpensive resolution in both proceedings, and it will promote efficiency by
`
`avoiding duplicative filings and reviews of the same issues.
`
`8
`
`
`
`
`14018886.4
`
`
`
`Respectfully submitted,
`
`WILEY REIN LLP
`
`By:
`
`/Neal Seth, #67,075/
`
`Neal Seth, Reg. No. 67,075
`
`
`
`
`
`
`
`
`
`
`
`14018886.4
`
`9
`
`
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105(A)
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
`
`that, on the 18th day of August 2016, a complete and entire copy of this document
`
`was provided to the Patent Owner by mailing a copy of the same via FedEx® to the
`
`following attorneys of record for the Patent Owner:
`
`Jeffrey Ginsberg
`Kenyon & Kenyon LLP
`One Broadway
`New York, New York 10004-1007
`
`with a courtesy copy to counsel for Pfizer and UCB Pharma GMBH as follows:
`
`Jack Blumenfeld
`Morris, Nichols, Arsht & Tunnell LLP
`1201 North Market Street
`Wilmington DE 19899
`
`Dimitrios T. Drivas
`Jeffrey J. Oelke
`James S. Trainor, Jr.
`Ryan P. Johnson
`Robert Counihan
`WHITE & CASE LLP
`1155 Avenue of the Americas
`New York, NY 10036
`
`
`
`
`/Neal Seth, #67,075/
`Neal Seth, Reg. No. 67,075
`
`10
`
`
`
`
`14018886.4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
