`571-272-7822 Entered: March 31, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AKORN INC.,
`Petitioner,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00601
`Patent 9,248,191 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
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`
`
`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)
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`
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`
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`IPR2017-00601
`Patent 9,248,191 B2
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`I.
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`INTRODUCTION
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`Akorn Inc. (“Akorn”) filed a Petition, seeking an inter partes review
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`of claims 1–27 of U.S. Patent No. 9,248,191 B2 (Ex. 1001, “the ’191
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`patent”). Paper 2 (“Pet”). Along with the Petition, Akorn filed a Motion for
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`Joinder to join this proceeding with Mylan Pharmaceuticals Inc. v. Allergan,
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`Inc., IPR2016-01132. Paper 3 (“Mot”). Akorn filed the Petition and Motion
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`for Joinder in the present proceeding on January 6, 2017, within one month
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`after we instituted trial in IPR2016-01132. 37 C.F.R. § 42.122(b). Patent
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`Owner Allergan, Inc. (“Allergan”) did not file an opposition to Akorn’s
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`Motion for Joinder. Via e-mail correspondence to the Board on March 30,
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`2017, Allergan indicated that it did not intend to file a Preliminary Response
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`to Akorn’s Petition. Ex. 3001.
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`As explained further below, we institute trial on the same grounds as
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`instituted in IPR2016-01132 and grant Akorn’s Motion for Joinder.
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`II. DISCUSSION
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`In IPR2016-01132, Mylan Pharmaceuticals Inc. (“Mylan”) challenged
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`claims 1–27 of the ’191 patent on the following grounds:
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`References
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`Basis
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`Claim(s) challenged
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`Ding ’9791 and Sall2
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`§ 103(a)
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`1–16 and 21–27
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`
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`1 Ding et al., US 5,474,979, issued Dec. 12, 1995 (Ex. 1006).
`2 Sall et al., Two Multicenter, Randomized Studies of the Efficacy and Safety
`of Cyclosporine Ophthalmic Emulsion in Moderate to Severe Dry Eye
`Disease, 107 OPHTHALMOLOGY 631–39 (2000) (Ex. 1007).
`1
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`IPR2017-00601
`Patent 9,248,191 B2
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`References
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`Basis
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`Claim(s) challenged
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`Ding ’979, Sall, and
`Acheampong3
`Ding ’979, Sall, and Glonek4
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`Ding ’979, Sall, Acheampong,
`and Glonek
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`§ 103(a)
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`1–16 and 21–27
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`§ 103(a)
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`17–20
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`§ 103(a)
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`20
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`After considering the Petition and the Patent Owner Preliminary
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`Response, we instituted trial in IPR2016-01132 on all four grounds.
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`IPR2016-01132, Paper 8, 24.
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`Akorn’s Petition is substantially the same as Mylan’s Petition,
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`challenging the same claims based on the same art and the same grounds.
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`Compare IPR2016-01132, Paper 3 with IPR2017-00601, Paper 2. For the
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`same reasons stated in our Decision on Institution in IPR2016-01132, we
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`institute trial in this proceeding on the same four grounds. See IPR2016-
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`01132, Paper 8.
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`Having determined that institution is appropriate, we now turn to
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`Akorn’s Motion for Joinder. Based on authority delegated to us by the
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`Director, we have discretion to join an inter partes review to a previously
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`instituted inter partes review. 35 U.S.C. § 315(c). Section 315(c) provides,
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`in relevant part, that “[i]f the Director institutes an inter partes review, the
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`
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`3 Acheampong et al., Cyclosporine Distribution into the Conjunctiva,
`Cornea, Lacrimal Gland, and Systemic Blood Following Topical Dosing of
`Cyclosporine to Rabbit, Dog, and Human Eyes, LACRIMAL GLAND, TEAR
`FILM, AND DRY EYE SYNDROMES 2: BASIC SCIENCE AND CLINICAL
`RELEVANCE 1001–04 (David A. Sullivan et al. eds., 1998) (Ex. 1008).
`4 Glonek et al., US 5,578,586, issued Nov. 26, 1996 (Ex. 1009).
`2
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`IPR2017-00601
`Patent 9,248,191 B2
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`Director, in his or her discretion, may join as a party to that inter partes
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`review any person who properly files a petition under section 311.” Id.
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`When determining whether to grant a motion for joinder we consider factors
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`such as timing and impact of joinder on the trial schedule, cost, discovery,
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`and potential simplification of briefing. Kyocera Corp. v. SoftView, LLC,
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`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`Under the circumstances of this case, we determine that joinder is
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`appropriate. As Akorn notes, the Petition in IPR2017-00601 is substantially
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`the same as the Mylan Petition, presenting the same arguments and relying
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`on the same expert testimony and exhibits. Mot. 5–6.
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`Akorn has also agreed to assume an “understudy role” in the joined
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`proceedings. Id. at 6. As long as Mylan remains a party, Akorn agrees to
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`“consolidated filings for all substantive papers in the respective proceedings,
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`except for motions that do not involve Mylan.” Id. at 6. Akorn also agrees
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`that cross-examination will not be extended in light of the joinder, and that
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`the oral argument will be conducted by Mylan. Id. Akorn further contends
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`that there will be no impact on the trial schedule of IPR2016-01132, and that
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`joinder will simplify the proceedings without prejudice to the parties. Id. at
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`6–7.
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`In view of the foregoing, we find that joinder based upon the
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`conditions stated in Akorn’s Motion for Joinder will have little or no impact
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`on the timing, cost, or presentation of the trial on the instituted grounds.
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`Moreover, discovery and briefing will be simplified if the proceedings are
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`joined. Thus, Akorn’s Motion for Joinder is granted.
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`3
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`IPR2017-00601
`Patent 9,248,191 B2
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`Accordingly, it is
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`III. ORDER
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`ORDERED that trial is instituted in IPR2017-00601 on the following
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`grounds:
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`A. Claims 1–16 and 21–27 as obvious over Ding ’979 and Sall;
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`B. Claims 1–16 and 21–27 as obvious over Ding ’979, Sall, and
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`Acheampong;
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`C. Claims 17–20 as obvious over Ding ’979, Sall, and Glonek; and
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`D. Claim 20 as obvious over Ding ’979, Sall, Glonek, and
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`Acheampong.
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`FURTHER ORDERED that Akorn’s Motion for Joinder with
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`IPR2016-01132 is granted;
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`FURTHER ORDERED that IPR2017-00601 is terminated and joined
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`to IPR2016-01132, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the
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`conditions stated in Akorn’s Motion for Joinder (Paper 3), as discussed
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`above;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2016-01132 shall govern the joined proceedings;
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`FURTHER ORDERED that all future filings in the joined proceeding
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`are to be made only in IPR2016-01132;
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`FURTHER ORDERED that the case caption in IPR2016-01132 for all
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`further submissions shall be changed to add Akorn as a named Petitioner
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`4
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`IPR2017-00601
`Patent 9,248,191 B2
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`with Mylan, and to indicate by footnote the joinder of IPR2017-00601 to
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`that proceeding, as indicated in the attached sample case caption; 5
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2016-01132.
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`5 We note that Petitioner Teva Pharmaceuticals USA, Inc. has also filed a
`Motion for Joinder of IPR2017-00586 with IPR2016-01132. Concurrent
`with this decision, the Board has entered a decision granting Akorn’s
`motion, as well. Accordingly, the sample case caption also reflects joinder
`of IPR2017-00586.
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`5
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`IPR2017-00601
`Patent 9,248,191 B2
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`FOR PETITIONER:
`
`Michael Dzwonczyk
`mdzwonczyk@sughrue.com
`
`Azadeh Kokabi
`akokabi@sughrue.com
`
`Travis Ribar
`tribar@sughrue.com
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`
`
`Gary J. Speier
`Mark D. Schuman
`CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN,
`P.A.
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
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`
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`FOR PATENT OWNER:
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`Dorothy P. Whelan
`Michael Kane
`FISH & RICHARDSON P.C.
`whelan@fr.com
`kane@fr.com
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`6
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`Trials@uspto.gov
`571.272.7822
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`Paper No.
`Filed:
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`Sample Case Caption
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`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.
`
`ALLERGAN, INC.,
`Patent Owner.
`____________
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`Case IPR2016-011321
`Patent 9,248,191 B2
`____________
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`1 Cases IPR2017-00586 and IPR2017-00601 have been joined with this
`proceeding.
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