Paper 40
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 13, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`KAKEN PHARMACEUTICAL CO., LTD. and VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner.
`
`Case IPR2017-01429
`Patent 7,214,506 B2
`
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`ROBERT A. POLLOCK Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 13, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`KAKEN PHARMACEUTICAL CO., LTD. and VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner.
`
`Case IPR2017-01429
`Patent 7,214,506 B2
`
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`ROBERT A. POLLOCK Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01429
`Patent 7,214,506 B2
`
`INTRODUCTION
`Petitioner Argentum Pharmaceuticals LLC (“Petitioner”) filed a
`Petition requesting an inter partes review of claims 1 and 2 of U.S. Patent
`7,214,506 B2 (Ex. 1001, “the ’506 patent”). Paper 2 (“Pet.”). Pursuant to
`37 C.F.R. § 42.122(b), Petitioner also filed a Motion for Joinder, seeking to
`join the instant proceeding with Acrux DDS Pty Ltd. v. Kaken
`Pharmaceutical Co., Ltd., IPR2017-00190 (PTAB). Paper 3 (“Mot.”).
`Kaken Pharmaceutical Co., Ltd. and Valeant Pharmaceuticals
`International, Inc. (collectively, “Patent Owner”) filed an Opposition to
`Petitioner’s Motion for Joinder (Paper 7, “Opp.”), which it later withdrew in
`light of Petitioner’s Reply to Patent Owner’s Opposition and further
`agreement reached between the parties detailed below. In a separate
`decision, entered concurrently, we institute an inter partes review as to the
`same claims on the same grounds of unpatentability for which we instituted
`trial in IPR2017-00190. For the reasons set forth below, Petitioner’s Motion
`for Joinder is granted.
`
`ANALYSIS
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`acting on behalf of the Director, has the discretion to join an inter partes
`review with another inter partes review. 35 U.S.C. § 315.
`The statutory provision governing joinder of inter partes review
`proceedings is 35 U.S.C § 315(c), which provides:
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`
` 2
`
`
`
`
`
`
`
`IPR2017-01429
`Patent 7,214,506 B2
`
`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.
`
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When
`exercising its discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
`issues and procedural matters on the proceedings.
`As the moving party, Petitioner bears the burden to show that joinder
`is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its Motion for Joinder,
`Petitioner contends that joinder, in this particular situation, is appropriate
`because: (1) the Petition is limited to the same grounds instituted in the
`IPR2017-00190 Petition (Mot. 4); (2) the Petition relies on the same prior art
`analysis and expert testimony submitted in IPR2017-00190, i.e. is “nearly
`identical” to the Petition in IPR2017-00190 (id.); (3) joinder will promote
`the just, speedy, and inexpensive resolution of patentability issues such as
`the patentability of the challenged claims of the ’506 Patent (id. at 4–5); (4)
`joinder will not negatively impact the schedule in IPR2017-00190 because
`Petitioner “anticipates participating in the proceeding in a limited capacity as
`an understudy, absent termination of Acrux [Petitioner in ’190 IPR] as a
`party” (id. at 5); and (5) Petitioner agrees to consolidated filings and
`discovery (id. at 6–7).
`
` 3
`
`
`
`
`
`
`
`IPR2017-01429
`Patent 7,214,506 B2
`
`We agree that the substantive issues in IPR2017-00190 would not be
`affected by joinder, because the Petition is substantively identical to the
`Petition filed in IPR2017-00190. Notably, the Petition asserts identical
`grounds of unpatentability, challenging the same claims of the ’506 patent.
`Compare Pet. 23–65, with IPR2017-00190, Paper 1 (“’190 Pet.”), 21–63.
`Petitioner also submits the same Declaration of Dr. Kenneth Walters.
`Compare Ex. 1005, with ’190, Ex. 1005. Moreover, we institute the instant
`trial based on the same grounds for which we instituted trial in
`IPR2017-00190. See ’190 Dec. 25. Therefore, the Petition raises no new
`issues beyond those already before us in IPR2017-00190.
`Patent Owner originally opposed Petitioner’s Motion for Joinder. See
`Paper 7. Patent Owner withdrew its opposition, however in light of
`statements made in Petitioner’s Reply to the Motion for Joinder and the
`following agreements reached by the parties.
`1. Petitioner agrees not to offer a rebuttal expert of its own;
`
`2. Petitioner clarifies its statement on page 4 of its Reply to the
`Motion for Joinder that “to address specific issues unique to
`Argentum” means Petitioner may raise issues for which only it,
`and not Acrux, would have a basis to raise, or may respond to
`issues raised by Patent Owner that are relevant only to Petitioner
`and not Acrux;
`
`
`
`3. Petitioner clarifies its statement on page 4 of its Reply to the
`Motion for Joinder that its reference to “apportion hearing time” is
`limited to addressing specific issues unique to Petitioner in any
`oral communication with the Board, including conference calls and
`oral hearing.
`
` 4
`
`
`
`
`
`
`
`IPR2017-01429
`Patent 7,214,506 B2
`
`We agree with the parties that conducting a single joined proceeding
`for reviewing claims 1 and 2 of the ’506 patent is more efficient than
`conducting multiple proceedings, eliminating duplicate filings and
`discovery. Petitioner agrees to consolidated filings and discovery. Id. at 6–
`7. Moreover, joinder will not require any change to the trial schedule in
`IPR2017-00190 as Petitioner will assume an “understudy role,” allowing the
`trial to be completed within one year. Id. at 5–6. Given that the Petition
`raises no new issues, and Petitioners agree to consolidated filings and
`discovery, the impact of joinder on IPR2017-00190 will be minimal, and
`joinder will streamline the proceedings, reducing the costs and burdens on
`the parties and the Board.
`For the foregoing reasons, Petitioner has met its burden of
`demonstrating that joinder of the instant proceeding with IPR2017-00190 is
`warranted under the circumstances.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion for Joinder with IPR2017-00190
`is granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2017-00190;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2017-00190 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2017-00190
`shall govern the joined proceeding;
`
` 5
`
`
`
`
`
`
`
`IPR2017-01429
`Patent 7,214,506 B2
`
`FURTHER ORDERED that the instant proceeding is instituted,
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`joined proceeding shall be made only in IPR2017-00190;
`FURTHER ORDERED that, throughout IPR2017-00190, Petitioner
`Acrux DDS Pty Ltd., Acrux Limited Acrux, and Argentum Pharmaceuticals
`LLC will file papers, except for motions which do not involve the other
`parties, as consolidated filings subject to the page limits set forth in
`37 C.F.R. § 42.24;
`FURTHER ORDERED that Patent Owner will conduct the cross-
`examination of witnesses, as well as the redirect examination of any witness
`it produces, in the timeframes set forth in 37 C.F.R. § 42.53(c);
`FURTHER ORDERED that Petitioner Argentum Pharmaceuticals
`LLC will not offer any additional rebuttal expert than who is offered by
`Acrux DDS Pty Ltd. and Acrux Limited Acrux;
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to conduct the cross-examination of any witnesses produced by
`Patent Owner and the redirect examination of any witnesses produced by
`Petitioners, within the timeframes set forth in 37 C.F.R. § 42.53(c) for one
`party; no individual Petitioner will receive any cross-examination or redirect
`examination time in addition to the time normally allotted by 37 C.F.R.
`§ 42.53(c) for one party;
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to present at the oral hearing (if requested) as a consolidated
`presentation;
`
` 6
`
`
`
`
`
`
`
`IPR2017-01429
`Patent 7,214,506 B2
`
`FURTHER ORDERED that the case caption in IPR2017-00190 shall
`be changed to reflect the joinder with the instant proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2017-00190.
`
`
` 7
`
`
`
`
`
`
`
`IPR2017-01429
`Patent 7,214,506 B2
`
`PETITIONER:
`Teresa Rea
`Shannon Lentz
`CROWELL & MORING LLP
`trea@crowell.com
`slentz@crowell.com
`
`Tyler Liu
`Argentum Pharmaceuticals, LLC
`tliu@agpharm.com
`
`
`
`PATENT OWNER:
`
`John Livingstone
`Naoki Yoshida
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`John.livingstone@finnegan.com
`Naoki.yoshida@finnegan.com
`
`Toan Vo
`VALEANT PHARMACEUTICALS NORTH AMERICA LLC
`Taon.vo@bausch.com
`
`
`
`
`
`
`
`
`
` 8
`
`
`
`
`
`
`
`IPR2017-01429
`Patent 7,214,506 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACRUX DDS PTY LTD., ACRUX LIMITED, and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`KAKEN PHARMACEUTICAL CO., LTD. and VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner.
`
`Case IPR2017-001901
`Patent 7,214,506 B2
`
`____________
`
`Case IPR2017-00190
`Patent 7,214,506 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2017-01429 has been joined with the instant proceeding.
`
` 9
`
`
`
`
`
`
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
