`571-272-7822
`
`
`
`
`
`Paper 10
`Entered: August 9, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ARGENTUM PHARMACEUTICALS LLC.,
`Petitioner,
`v.
`NOVARTIS AG,
`Patent Owner.
`_______________
`
`Case IPR2017-01550
`Patent 9,187,405 B2
`_______________
`
`Before LORA M. GREEN, CHRISTOPHER M. KAISER, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`DECISION
`Instituting Inter Partes Review and Granting Motion for Joinder
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`IPR2017-01550
`Patent 9,187,405 B2
`
`
`I.
`INTRODUCTION
`Argentum Pharmaceuticals LLC (“Argentum”) filed a Petition
`requesting an inter partes review of claims 1–6 of U.S. Patent
`No. 9,187,405 B2 (“the ’405 patent”). Paper 1 (“Pet.”). Along with the
`Petition, Argentum filed a Motion for Joinder to join this proceeding with
`IPR2017-00854. Paper 3 (“Mot.”). Argentum filed the Petition and Motion
`for Joinder in the present proceeding on June 9, 2017, within one month
`after we instituted trial in IPR2017-00854. Novartis AG, (“Novartis”) has
`not filed a Preliminary Response to the Petition, and any such response
`would have been due September 16, 2017.
`As explained further below, we institute trial on the same grounds as
`instituted in IPR2017-00854 and grant Argentum’s Motion for Joinder.
`
`II.
`DISCUSSION
`In IPR2017-00854, Apotex, Inc. and Apotex Corp. (“Apotex”)
`challenged claims 1–6 of the ’405 Patent on the following grounds:
`Ground Claims
`References
`Basis
`1
`1–6
`Kovarik1 and Thomson
`§ 103
`2
`1–6
`Chiba,2 Kappos 2005,3 and Budde4
`§ 103
`
`
`1 Kovarik and Appel-Dingemanse, WO 2006/058316, published June 1,
`2006.
`2 Chiba et al., US 6,004,565, issued Dec. 21, 1999. Ex. 1006.
`3 Kappos et al., “FTY720 in Relapsing MS: Results of a Double-Blind
`Placebo-Controlled Trial with a Novel Oral Immunomodulator,” 252 (Suppl
`2) J. NEUROLOGY Abstract O141 (2005). .
`4 Budde, et al., “First Human Trial of FTY720, a Novel Immunomodulator,
`in Stable Renal Transplant Patients,” 13 J. AM. SOC. NEPHROLOGY 1073-
`1083 (2002). .
`
`2
`
`
`
`IPR2017-01550
`Patent 9,187,405 B2
`
`Ground Claims
`3
`1–6
`
`
`References
`Kappos 20105
`
`Basis
`§ 102
`
`After considering the Petition and Patent Owner’s Preliminary
`Response, we instituted trial in IPR2017-00854 on each of the three asserted
`grounds. IPR2017-00854, Paper 11, 27.
`Argentum’s Petition in the instant matter is substantively identical to
`Apotex’s Petition, challenging the same claims based on the same art and the
`same grounds. Compare IPR2017-01550, Paper 1, with IPR2017-00854,
`Paper 2. For the reasons stated in our Decision on Institution in IPR2017-
`00854, we institute trial in this proceeding on the same three grounds.
`Having determined that institution is appropriate, we now turn to
`Argentum’s Motion for Joinder. 35 U.S.C. § 315(c). Section 315(c)
`provides, in relevant part, that “[i]f 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.”
`Id. When determining whether to grant a motion for joinder we consider
`factors such as timing and impact of joinder on the trial schedule, cost,
`discovery, and potential simplification of briefing. Kyocera Corp. v.
`SoftView, LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`(Paper 15).
`Under the circumstances of this case, we determine that joinder is
`appropriate. Argentum raises no new grounds of unpatentability from
`IPR2017-00854 and contends that there will be no impact on the trial
`
`
`5 Kappos et al., “A Placebo-Controlled Trial of Oral Fingolimod
`in Relapsing Multiple Sclerosis,” 362(5) N. Engl. J. Med. 387–401.
`
`3
`
`
`
`IPR2017-01550
`Patent 9,187,405 B2
`
`
`schedule previously set in that case. Mot. 5–6; see IPR2017-00854, Paper
`12. As Argentum notes, the Petition in IPR2017-00854 is substantively
`identical to the grounds, analysis, exhibits,6 and expert declarations relied on
`in the instant proceeding. Mot. 2, 4, 5. Argentum agrees “to coordinate with
`Apotex regarding questioning at depositions and at the oral hearing, which
`will not exceed the time allotted by the rules for one party, or as otherwise
`agreed between Apotex and Patent Owner or as ordered by the Board,” and
`invites the Board to adopt procedures similar to those used in other joinder
`cases, such as requiring Petitioners to make consolidated filings, for which
`Apotex is responsible. Id. at 6–7.
`Argentum represents that Apotex does not opposed Argentum’s
`Motion for Joinder. Id. at 3. By email to the Board dated August 4, 2017,
`counsel for Novartis represents that, 1) Novartis does not object to the
`Motion for Joinder; 2) Argentum has agreed not to pursue any arguments or
`make any filings separate from those made by Apotex; and 3) that Novartis
`will not submit a Preliminary Response in IPR2017-01550, and “instead will
`proceed with a Patent Owner Response to the Petitions in both IPRs
`simultaneously.” Ex. 3001.
`In view of the foregoing, we find that joinder based upon the
`conditions stated in Argentum’s Motion for Joinder and Novartis’ August 4
`email will have little or no impact on the timing, cost, or presentation of the
`trial on the instituted grounds. Moreover, discovery and briefing will be
`
`
`6 Argentum notes that it has “added one additional exhibit (EX1041) which
`is a copy of the Federal Circuit Decision of April 12, 2017 affirming the
`Final Written Decision in IPR2014-00784, an IPR related to the present
`proceeding.” Mot., 2–3.
`
`4
`
`
`
`IPR2017-01550
`Patent 9,187,405 B2
`
`
`simplified if the proceedings are joined. Thus, without opposition to the
`Motion for Joinder from any of the parties, the Motion is granted.
`
`III.
`
`ORDER
`
`Accordingly, it is
`ORDERED that inter partes review is instituted in IPR2017-01550 on the
`following grounds:
`
`Claims 1–6 under 35 U.S.C. § 103 as unpatentable over the
`combination of Kovarik and Thomson;
`
`Claims 1–6 under 35 U.S.C. § 103 as unpatentable over the
`combination of Chiba, Kappos 2005, and Budde;
`
`Claims 1–6 under 35 U.S.C. § 102 as anticipated by Kappos 2010.
`
`FURTHER ORDERED that Argentum’s Motion for Joinder with
`IPR2017-00854 is granted;
`
`FURTHER ORDERED that IPR2017-01550 is terminated and joined to
`IPR2015-00854, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the
`conditions discussed above;
`
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-00854 (Paper 12) shall govern the joined proceedings;
`
`FURTHER ORDERED that all future filings in the joined proceeding shall
`be made only in IPR2017-00854;
`
`FURTHER ORDERED that the case caption in IPR2017-00854 for all
`further submissions shall be changed to add Argentum as a named Petitioner
`after Apotex, and to indicate by footnote the joinder of IPR2017-01550 to
`that proceeding, as indicated in the attached sample case caption;
`
`5
`
`
`
`IPR2017-01550
`Patent 9,187,405 B2
`
`
`FURTHER ORDERED that a copy of this Decision shall be entered into the
`record of IPR2017-00854.
`
`
`
`
`
`FOR PETITIONER ARGENTUM:
`
`Teresa Stanek Rea
`Deborah H. Yellin
`Shannon M. Lentz
`CROWELL & MORING LLP
`TRea@Crowell.com
`DYellin@crowell.com
`SLentz@Crowell.com
`
`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS, LLC
`TLiu@agpharm.com
`
`
`FOR PATENT OWNER:
`
`Jane M. Love
`GIBSON, DUNN & CRUTCHER LLP
`jlove@gibsondunn.com
`
`
`FOR PETITIONER APOTEX (IPR2017-00854):
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`
`
`6
`
`
`
`IPR2017-01550
`Patent 9,187,405 B2
`
`
`Sample Case Caption
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APOTEX INC., APOTEX CORP., and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioners,
`v.
`NOVARTIS AG.,
`Patent Owner.
`____________
`
`Case IPR2017-008547
`Patent 9,187,405 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7 Case IPR2017-01550 has been joined with this proceeding.
`
`7
`
`