throbber
Trials@uspto.gov
`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
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket