`Tel: 571-272-7822
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`Paper 12
` Entered: January 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owner.
`_______________
`
`Case IPR2017-00047
`Patent 6,331,415 B1
`_______________
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`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)
`
`
`
`
`
`
`
`
`IPR2017-00047
`Patent No. 6,331,415 B1
`
`I.
`
`INTRODUCTION
`Merck Sharp & Dohme Corp. (“Petitioner” or “Merck”) filed a
`Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1–4,
`11, 12, 14, 18–20, and 33 of U.S. Patent No. 6,331,415 B1 (Ex. 1001, “the
`’415 patent”). Petitioner filed also a Motion for Joinder (Paper 3, “Mot.”).
`The Motion for Joinder seeks to join this proceeding with Mylan
`Pharmaceuticals, Inc. v. Genentech, Inc. and City of Hope, Case IPR2016-
`00710 (“the ’710 IPR”). Mot. 1. Genentech Inc. and City of Hope
`(collectively, “Patent Owner” or “Genentech”) filed a Response to
`Petitioner’s Motion for Joinder. Paper 10.
`For the reasons explained below, we institute an inter partes review of
`challenged claims 1–4, 11, 12, 14, 18–20, and 33, and grant Petitioner’s
`Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds as those on
`which we instituted review in the ’710 IPR. Specifically, based on the
`Petition filed by Mylan Pharmaceuticals, Inc. (“Mylan”), on March 3, 2016,
`we instituted a trial in the ’710 IPR on the following grounds:
`References
`Basis
`Claims Challenged
`Bujard1 and Riggs & Itakura2
`§ 103(a)
`1, 3, 4, 11, 12, 14,
`
`19, and 33
`
`
`1 Bujard et al., US 4,495,280, issued Jan. 22, 1985 (“Bujard”) (Ex. 1002).
`2 Arthur D. Riggs and Keiichi Itakura, Synthetic DNA and Medicine, 31 AM.
`J. HUM. GENET., 531–538 (1979) (“Riggs & Itakura”) (Ex. 1003).
`
`
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`2
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`IPR2017-00047
`Patent No. 6,331,415 B1
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`
`References
`Bujard and Southern3
`
`Basis
`§ 103(a)
`
`Claims Challenged
`1, 2, 18, 20, and 33
`
`Mylan Pharmaceuticals, Inc. v. Genentech, Inc., Case IPR2016-00710, slip.
`op. at 15 (PTAB September 8, 2016) (Paper 13).
`Petitioner proposes an order in its Motion for Joinder in which the
`instant inter partes review is instituted only on the grounds for which inter
`partes review was instituted in the ’710 IPR. Mot. 12‒13. In view of the
`fact that the challenges presented by the instant Petition and the Petition in
`the ‘710 IPR are identical, and the evidence supporting the challenges is
`nearly so, see Mot. 1; Paper 10, 1 (noting that the Petition “raises the exact
`same art and arguments as in the petition in recently instituted IPR2016-
`00710”), we institute an inter partes review in this proceeding on the same
`grounds and for the same reasons as those on which we instituted the ’710
`IPR. We do not institute inter partes review on any other grounds or as to
`any additional claims.
`
`III. GRANT OF MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`review, subject to the provisions of 35 U.S.C. § 315(c), which governs
`joinder of inter partes review proceedings:
`(c) Joinder.—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
`
`3 P.J. Southern and P. Berg, Transformation of Mammalian Cells to
`Antibiotic Resistance with a Bacterial Gene Under Control of the SV40
`Early Region Promoter, 1 J. MOLECULAR AND APPLIED GENETICS 327–341
`(1982) (“Southern”) (Ex. 1004).
`
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`3
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`IPR2017-00047
`Patent No. 6,331,415 B1
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`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.
`As the moving party, Merck bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`asked-questions (last visited December 7, 2016).
`The Petition in this proceeding has been accorded a filing date of
`October 11, 2016 (Paper 4), and the ’710 IPR was instituted on September 8,
`2016 (’710 IPR, Paper 13). Petitioner contends that the Motion for Joinder
`“is submitted within one month of September 8, 2016, the date on which the
`[’710 IPR] was instituted.” Mot. 2. The Petition, therefore, satisfies the
`joinder requirement of being filed within one month of our instituting a trial
`in the ’710 IPR. 37 C.F.R. § 42.122(b).4
`
`In its Motion for Joinder, Merck contends that the grounds asserted in
`the instant Petition are the same grounds of unpatentability asserted in the
`’710 IPR. Mot. 1, 5, 6‒7. Merck contends further that joinder is appropriate
`as it will promote efficient resolution of the challenges to the claims of the
`’710 patent. Id. at 1. Merck represents that joinder will not impact the
`schedule of the ’710 IPR, as it “agrees that the Scheduling Order issued in
`
`
`4 In that regard, we note that October 8, 2016, was a Saturday, and October
`10, 2016, was a Federal Holiday.
`
`
`
`4
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`IPR2017-00047
`Patent No. 6,331,415 B1
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`the [’710 IPR] will apply to the joined proceeding.” Id. at 9. Merck agrees
`also to consolidated filings and discovery. Id. at 10‒12. Moreover, Merck
`states that “Mylan consents to Merck’s request for joinder.” Id. at 1.
`Patent Owner states that it does “not object to Merck’s motion to join
`the present petition to IPR2016-00710, provided that, as a condition to
`joinder, Merck should not be permitted to proceed with its already-pending
`petition in IPR2016-01373.” Paper 10, 1. Inasmuch as we decline to
`institute trial in IPR2016-01373 under 35 U.S.C. § 325(d) concurrently with
`this decision, we understand Patent Owner to have no residual objection to
`Merck’s motion for joinder.
`
`As discussed above, joinder is discretionary. In the instant
`proceeding, we agree with Merck that joinder of the instant proceeding with
`the ’710 IPR would promote the efficient resolution of the proceedings.
`Merck has brought the same challenges as presented by the ’710 IPR, thus,
`the substantive issues in the ’710 IPR would not be unduly complicated by
`joining with the instant IPR. In particular, joinder merely introduces the
`same grounds presented originally in the ’710 IPR, where all of the prior art
`asserted in this Petition is of record. In addition, Merck agrees to be limited
`to the grounds on which trial was instituted in the ’710 IPR. Mot. 6‒9.
`Moreover, the instant proceeding was filed timely. Finally, Patent Owner
`will be able to address the challenges in a single proceeding, promoting
`efficiency.
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that IPR2017-00047 is instituted and joined with
`IPR2016-00710;
`
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`5
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`IPR2017-00047
`Patent No. 6,331,415 B1
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`FURTHER ORDERED that the grounds on which IPR2016-00710
`was instituted are unchanged and no other grounds are instituted in the
`joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2016-00710 shall govern the schedule of the joined proceedings;
`FURTHER ORDERED that, throughout the joined proceeding, Mylan
`or Merck will file papers, except for motions that do not involve the other
`party, as a single, consolidated filing; that the filing party (either Mylan or
`Merck) will identify each such filing as a consolidated filing;
`FURTHER ORDERED that, throughout the joined proceeding, Mylan
`and Merck will designate an attorney to conduct the cross-examination of
`any witness produced by Patent Owner, as well as the redirect of any witness
`produced by Mylan and Merck within the time provided by 37 C.F.R.
`§ 42.53, and Merck will not receive any cross-examination or redirect time
`separate from that of Mylan;
`FURTHER ORDERED that IPR2017-00047 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceedings are to be
`made in IPR2016-00710;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-00710; and
`FURTHER ORDERED that the case caption in IPR2016-00710 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
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`6
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`IPR2017-00047
`Patent No. 6,331,415 B1
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`FOR PETITIONER MERCK SHARP & DOHME CORP.:
`
`Raymond N. Nimrod
`Matthew A. Traupman
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`raynimrod@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`
`Katherine A. Helm
`SIMPSON THACHER & BARTLETT LLP
`khelm@stblaw.com
`
`FOR PETITIONER MYLAN PHARMACEUTICALS INC.:
`
`Deanne Mazzochi
`Paul Molino
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`dmazzochi@rmmslegal.com
`paul@rmmslegal.com
`
`FOR PATENT OWNER:
`
`David Cavanaugh
`Heather M. Petruzzi
`Owen Allen
`WILMER CUTLER PICKERING HALE AND DORR LLP
`David.cavanaugh@wilmerhale.com
`Heather.petruzzi@wilmerhale.com
`owen.allen@wilmerhale.com
`
`Adam R. Brausa
`DURIE TANGRI
`abrausa@durietangri.com
`
`Michael Fleming
`IRELL & MANELLA LLP
`mfleming@irell.com
`
`
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`7
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`IPR2017-00047
`Patent No. 6,331,415 B1
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`Jeffrey P. Kushan
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
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`8
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS, INC., and
`MERCK SHARP & DOHME CORP.,
`Petitioners,
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`_______________
`
`Case IPR2016-007101
`Patent 6,331,415 B1
`_______________
`
`
`
`1 Case IPR2017-00047 has been joined with this proceeding.
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`9
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