`Trials@uspto.gov
`571-272-7822
`
` Entered: November 13, 2017
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`
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`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
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`IPR2017-01429
`Patent 7,214,506 B2
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`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
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`IPR2017-01429
`Patent 7,214,506 B2
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`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).
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`IPR2017-01429
`Patent 7,214,506 B2
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`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;
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`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.
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`IPR2017-01429
`Patent 7,214,506 B2
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`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;
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`IPR2017-01429
`Patent 7,214,506 B2
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`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;
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`IPR2017-01429
`Patent 7,214,506 B2
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`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.
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`IPR2017-01429
`Patent 7,214,506 B2
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`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
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`IPR2017-01429
`Patent 7,214,506 B2
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`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
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`____________
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`Case IPR2017-00190
`Patent 7,214,506 B2
`____________
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`1 Case IPR2017-01429 has been joined with the instant proceeding.
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