`571.272.7822
`
`Paper No. 7
`Filed: November 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FRESENIUS-KABI USA LLC,
`Petitioner,
`
`v.
`
`ASTRAZENECA AB,
`Patent Owner.
`____________
`
`Case IPR2017-01910 (Patent 6,774,122)
`Case IPR2017-01912 (Patent 8,466,139)
`Case IPR2017-01913 (Patent 8,329,680)1
`____________
`
`
`Before GRACE KARAFFA OBERMANN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER
`Denying Petitioner’s Request for
`Authorization to File a Motion to Withdraw the Petitions
`And
`Denying Petitioner’s Motions for Joinder
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.122(b)
`
`
`1 This order addresses issues common to each case, therefore, we enter the
`word-for-word identical order in each proceeding identified in the heading.
`We refer to the cases, respectively, as IPR910, IPR912, and IPR913. Exhibit
`and paper numbers are the same in each proceeding. The parties may use
`this style heading when filing an identical paper in multiple proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`
`
`Case IPR2017-01910 (Patent 6,774,122)
`Case IPR2017-01912 (Patent 8,466,139)
`Case IPR2017-01913 (Patent 8,329,680)
`
`
`On November 1, 2017, a telephonic conference call was held among
`
`counsel for both parties and Judges Obermann, Yang, and Pollock. Neither
`
`party retained a court reporter. This order constitutes the record of the call.
`
`Patent Owner requested the call “to determine how to proceed” under
`
`these circumstances: Petitioner filed a motion seeking joinder in IPR910,
`
`IPR912, and IPR913 with proceedings initiated by a different petitioner—
`
`namely, InnoPharma Licensing—in, respectively, IPR2017–00900
`
`(IPR900), IPR2017–00904 (IPR904), and IPR2017–00905 (IPR905).
`
`Ex. 3001, 2 (email correspondence); Paper 3 (motion for joinder).2 The
`
`earlier-filed petitions submitted by InnoPharma Licensing were denied by
`
`the Board a few days after Petitioner filed the instant petitions and motions
`
`for joinder. Ex. 3001, 2 (earlier-filed petitions were denied on August 30,
`
`2017); Paper 1 (petition, filed August 24, 2017); Paper 3 (motion for joinder,
`
`filed August 24, 2017).
`
`A second purpose of the call was to discuss Petitioner’s request for
`
`authorization to file a motion to withdraw the petitions and motions for
`
`joinder in the instant proceedings. Ex. 3001, 2. Patent Owner opposed that
`
`request. Id. at 1.
`
`Two facts became apparent during the call. First, Petitioner has not
`
`been served with a complaint for infringement of any patent at issue in these
`
`proceedings; therefore, no impending time bar, arising under 35 U.S.C.
`
`§ 315(b), would prevent Petitioner from filing a follow-on petition in any
`
`proceeding, in an attempt to improve the challenges with the benefit of our
`
`
`2 The earlier-filed cases were misidentified in the email correspondence as
`IPR2017-01900, IPR2017-01904, and IPR2017-01905. Ex. 3001, 2. As we
`explained during the call, that was harmless error.
`
`
`
`2
`
`
`
`Case IPR2017-01910 (Patent 6,774,122)
`Case IPR2017-01912 (Patent 8,466,139)
`Case IPR2017-01913 (Patent 8,329,680)
`
`analysis set forth in the decisions that denied the petitions filed by
`
`InnoPharma Licensing in IPR900, IPR904, and IPR905. Second, under
`
`questioning, counsel for Petitioner would admit only that Petitioner has no
`
`plans to file any follow-on petitions “at this time.”
`
`Denying Petitioner’s Request for
`Authorization to File a Motion to Withdraw the Petitions
`
`
`
`Both parties were provided an opportunity to argue their positions
`
`relative to Petitioner’s request for authorization to file a motion to withdraw
`
`the petitions. In a nutshell, Petitioner recognized that no applicable rule
`
`contemplates the withdrawal of a petition by a petitioner over the objections
`
`of a patent owner. Petitioner argued, however, that the Board is empowered
`
`to grant such a request under its broad authority to manage cases on its
`
`docket. Specifically, according to Petitioner, the Board is authorized to
`
`grant a petitioner’s request to withdraw a petition, over the objections of a
`
`patent owner, under the provisions of Rule 42.5(a) (relating to the Board’s
`
`authority to “determine a proper course of conduct in a proceeding for any
`
`situation not specifically covered by” the rules) or under the provisions of
`
`Rule 42.71(a) (relating to the Board’s authority to “dismiss any petition”).
`
`Petitioner further argued that authorization of a motion to withdraw would
`
`serve the interests of economy and efficiency by ending these cases
`
`immediately, thereby sparing the parties and the Board from incurring any
`
`further burden or expense.
`
`
`
`Patent Owner opposed Petitioner’s request, arguing that authorizing a
`
`motion to withdraw the petitions, over Patent Owner’s objections, would
`
`unfairly prejudice Patent Owner. Specifically, Patent Owner pointed out
`
`(and Petitioner confirmed) that the instant petitions are virtually identical to
`
`
`
`3
`
`
`
`Case IPR2017-01910 (Patent 6,774,122)
`Case IPR2017-01912 (Patent 8,466,139)
`Case IPR2017-01913 (Patent 8,329,680)
`
`the petitions that were filed by InnoPharma Licensing and denied by the
`
`Board in IPR900, IPR904, and IPR905. Petitioner copied verbatim the
`
`earlier-filed petitions, and supporting declarations, submitted by InnoPharma
`
`Licensing.
`
`Patent Owner, for its part, indicated a desire to defend against the
`
`instant petitions by using the same, or essentially the same, arguments and
`
`evidence that led to the Board’s denial of the petitions filed by InnoPharma
`
`Licensing. In Patent Owner’s view, Patent Owner would be prejudiced by
`
`the withdrawal of the instant petitions as an alternative to the Board ruling
`
`on the merits of them. Of particular concern to Patent Owner, in that regard,
`
`was an erosion of its ability to successfully defend against any follow-on
`
`petitions filed by Petitioner.
`
`On that point, Patent Owner observed that the Board, in a recently-
`
`designated precedential decision, enumerated a non-exclusive list of factors
`
`applicable to the discretionary denial of a follow-on petition under 35 U.S.C.
`
`§ 314(a). General Plastic Industrial Co., Ltd. v Canon Kabushiki Kaisha,
`
`Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential).
`
`Patent Owner argued that a grant of a request to withdraw the instant
`
`petitions, under circumstances that leave open the possibility that Petitioner
`
`will file follow-on petitions, would prejudice Patent Owner by undercutting
`
`its ability to make out the third General Plastic factor, relating to “whether
`
`at the time of filing of the second petition the petitioner already . . . received
`
`the Board’s decision on whether to institute review in the first petition.” Id.
`
`at 9. Stated somewhat differently, Patent Owner suggested that Petitioner
`
`
`
`4
`
`
`
`Case IPR2017-01910 (Patent 6,774,122)
`Case IPR2017-01912 (Patent 8,466,139)
`Case IPR2017-01913 (Patent 8,329,680)
`
`should be required to bear the consequences of its deliberate decision to file
`
`petitions identical to those submitted by InnoPharma Licensing.
`
`
`
`At the conclusion of the call, we held that none of the Board’s rules
`
`expressly contemplates the withdrawal of a petition by a petitioner over the
`
`objections of a patent owner. We also held that the particular circumstances
`
`of this case disfavor granting the requested relief under our general powers
`
`of case management. Specifically, only Patent Owner stands to benefit from
`
`any economy or efficiency that would result from a grant of Petitioner’s
`
`request. Yet Patent Owner raised no concerns related to the burden or
`
`expense of defending against the petitions, but rather, indicated a firm desire
`
`to proceed by filing a preliminary response to the petitions. On that point,
`
`we observed that Petitioner will incur no further burden or expense during
`
`the pre-institution stage. Petitioner will face additional burden or expense
`
`only if the petition is granted in one or more proceeding. Should that occur,
`
`we advised Petitioner that it may seek authorization to file a motion for
`
`termination of trial as provided by our rules. 37 C.F.R. § 42.72. Further,
`
`given that Petitioner’s counsel provided no assurances that Petitioner will
`
`not file follow-on petitions challenging the patents at issue in these
`
`proceedings, we found that a grant of Petitioner’s request, over Patent
`
`Owner’s objections, would prejudice Patent Owner by undercutting its
`
`ability to defend against such petitions. Accordingly, we denied Petitioner’s
`
`request for authorization to file a motion to withdraw the petitions.
`
`Denying Petitioner’s Motions for Joinder
`
`
`
`Given that the petitions in IPR900, IPR904, and IPR905, filed by
`
`InnoPharma Licensing, were denied several days after Petitioner filed the
`
`
`
`5
`
`
`
`Case IPR2017-01910 (Patent 6,774,122)
`Case IPR2017-01912 (Patent 8,466,139)
`Case IPR2017-01913 (Patent 8,329,680)
`
`motions for joinder in the instant cases, the parties agreed that those motions
`
`are moot. Accordingly, we denied Petitioner’s motions for joinder.
`
`
`
`The petitions will be taken up for consideration by the Board in due
`
`course. 37 C.F.R. § 42.71(a).
`
`
`
`It is
`
`
`
`ORDERED that Petitioner’s request for authorization to file a motion
`
`to withdraw the petition in each proceeding is denied; and
`
`
`
`FURTHER ORDERED that the motion for joinder in each proceeding
`
`is denied as moot.
`
`
`
`PETITIONER:
`
`Imron Aly
`Jason Harp
`SCHIFF HARDIN LLP
`ialy@schiffhardin.com
`jharp@schiffhardin.com
`
`PATENT OWNER:
`
`Filko Prugo
`Caitlin Hogan
`Marc Pensabene
`Carolyn Wall
`O’MELVENY & MYERS LLP
`fprugo@omm.com
`chogan@omm.com
`mpensabene@omm.com
`cwall@omm.com
`
`
`
`6
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`