UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`MYLAN PHARMACEUTICALS INC.
`and
`DR. REDDY’S LABORATORIES, INC.,
`Petitioner1
`
`v.
`
`
`HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY
`Patent Owners.
`
`___________
`
`
`Case IPR2017-01995
`Patent 9,220,698
`
`___________
`
`
`PATENT OWNERS’ BRIEFING
`REGARDING CLICK-TO-CALL TECHS., L.P. v. INGENIO, INC.
`
`
`
`
`
`1 Petitioner Dr. Reddy’s Laboratories, Inc., from IPR2018-00894, has been joined
`as a Petitioner to this proceeding.
`
`
`
`___________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`MYLAN PHARMACEUTICALS INC.
`and
`DR. REDDY’S LABORATORIES, INC.,
`Petitioner1
`
`v.
`
`
`HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY
`Patent Owners.
`
`___________
`
`
`Case IPR2017-01995
`Patent 9,220,698
`
`___________
`
`
`PATENT OWNERS’ BRIEFING
`REGARDING CLICK-TO-CALL TECHS., L.P. v. INGENIO, INC.
`
`
`
`
`
`1 Petitioner Dr. Reddy’s Laboratories, Inc., from IPR2018-00894, has been joined
`as a Petitioner to this proceeding.
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`INTRODUCTION ........................................................................................ 1
`THE STATUTORY BARS OF § 315 ARE TRIGGERED BY
`EARLIER CLAIMS, EVEN IF THOSE CLAIMS ARE
`DISMISSED ................................................................................................. 2
`III. MYLAN’S PETITION IS BARRED UNDER § 315(b) AND/OR
`§ 315(a) ........................................................................................................ 3
`IV. CONCLUSION ............................................................................................ 5
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`Amkor Tech., Inc. v. Tessera, Inc.,
`IPR2013-00242, Paper 98 (P.T.A.B. Jan. 31, 2014) .......................................... 5
`Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.,
`905 F.3d 1311 (Fed. Cir. 2018) .......................................................................... 3
`Bonneville Associates, Ltd. Partnership v. Barram,
`165 F.3d 1360 (Fed. Cir. 1999) .......................................................................... 3
`Click-to-Call Techs., L.P. v. Ingenio, Inc.,
`899 F.3d 1321 (Fed. Cir. 2018) ...................................................................... 1, 2
`Graves v. Principi,
`294 F.3d 1350 (Fed. Cir. 2002) .......................................................................... 3
`Oracle Corp. v. Click-to-Call Technologies, LP,
`IPR2013-00312, Paper 52 (P.T.A.B. Oct. 28, 2014) ......................................... 1
`St. Jude Med., Cardiology Div., Inc. v. Volcano Corp.,
`IPR2013-00258, Paper 29 (P.T.A.B. Oct. 16, 2013) ......................................... 4
`Voltstar Techs., Inc. v. Superior Commc’ns, Inc.,
`No. 2018-2093, 2018 U.S. App. LEXIS 31334 (Fed. Cir. Nov. 6,
`2018) ................................................................................................................... 3
`Statutes
`35 U.S.C.
`§ 315(a) ...................................................................................................... passim
`§ 315(b) ..................................................................................................... passim
`Other Authorities
`157 Cong. Rec. S1375 (Mar. 8, 2011)..................................................................... 5
`Fed. R. Civ. P. 13(b) ................................................................................................ 5
`
`
`ii
`
`
`
`Case No. IPR2017-01995
`Patent No. 9,220,698
`
`I.
`
`INTRODUCTION
`Before Patent Owners ever asserted the ’698 patent against Mylan in district
`
`court, Mylan filed for declaratory judgment of invalidity and non-infringement.
`
`Patent Owners answered, identified asserted claims, and served infringement
`
`contentions—all more than one year before Mylan filed its Petition. As Patent
`
`Owners raised in their Preliminary Response (Paper 10) and Request for Rehearing
`
`(Paper 24), Mylan’s declaratory judgment counterclaims triggered the statutory
`
`bars of 35 U.S.C. § 315(a)(1) and/or § 315(b).
`
`The Board never reached the issue of whether Mylan’s petition is barred
`
`under § 315(a)(1) and/or § 315(b). Instead, because Mylan’s declaratory judgment
`
`counterclaims in Case II were subsequently consolidated with a later-filed case
`
`(Case III), the Board treated the voluntary dismissal of Mylan’s claims in Case II
`
`as if they had never been brought. See, e.g., Paper 34 at 4.
`
`The Federal Circuit, however, rejected the premise that the voluntary
`
`dismissal of a civil action nullifies the trigger of § 315(b)’s time bar. See Click-to-
`
`Call Techs., L.P. v. Ingenio, Inc., 899 F.3d 1321, 1355 (Fed. Cir. 2018). The Court
`
`vacated the Board’s decision in Oracle Corp. v. Click-to-Call Technologies, LP,
`
`IPR2013-00312, Paper 52 (P.T.A.B. Oct. 28, 2014)—on which this Panel
`
`previously relied.
`
`1
`
`
`
`Case No. IPR2017-01995
`Patent No. 9,220,698
`In light of Click-to-Call, Mylan’s declaratory judgment counterclaims, and
`
`Patent Owner’s answer and infringement contentions filed in Case II cannot be
`
`ignored. Mylan’s counterclaim seeking declaratory judgment of non-infringement
`
`and subsequent infringement litigation triggered the time bar of § 315(b). Mylan
`
`filed its Petition long after the one year cut-off date. In addition, Mylan’s
`
`counterclaim seeking declaratory judgment of invalidity triggered the § 315(a)(1)
`
`bar. Mylan’s Petition was thus not instituted properly and must be terminated.
`
`II. THE STATUTORY BARS OF § 315 ARE TRIGGERED BY EARLIER
`CLAIMS, EVEN IF THOSE CLAIMS ARE DISMISSED
`In Click-to-Call, the Federal Circuit explicitly overruled the Board’s
`
`conclusion that a dismissal without prejudice leaves the parties as if the underlying
`
`complaint had never been served. The Court held that the one-year time bar of
`
`§ 315(b) “applies to bar institution when an IPR petitioner was served with a
`
`complaint for patent infringement more than one year before filing its petition, but
`
`the district court action in which the petitioner was so served was voluntarily
`
`dismissed without prejudice.” Click-to-Call, 899 F.3d at 1328, n.3.
`
`The Court noted that the plain and unambiguous language of the statute
`
`contains no exceptions or exemptions for claims that are subsequently dismissed.
`
`Id. at 1330. The Court examined the legislative history of § 315(b) and found that
`
`it similarly failed to support the Board’s interpretation that such dismissed claims
`
`could not trigger the § 315(b) time bar. Further, the Court expressly rejected the
`
`2
`
`
`
`Case No. IPR2017-01995
`Patent No. 9,220,698
`Board’s reliance on Bonneville Associates, Ltd. Partnership v. Barram, 165 F.3d
`
`1360, 1364 (Fed. Cir. 1999) and Graves v. Principi, 294 F.3d 1350, 1356-57 (Fed.
`
`Cir. 2002). Click-to-Call, 899 F.3d at 1334-35.
`
`This Federal Circuit precedent is now firmly established. The Federal
`
`Circuit has applied the Click-to-Call rule to two additional cases and extended the
`
`holding to cases in which a first complaint was involuntarily dismissed. See
`
`Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311, 1316
`
`(Fed. Cir. 2018); Voltstar Techs., Inc. v. Superior Commc’ns, Inc., No. 2018-2093,
`
`2018 U.S. App. LEXIS 31334, at *2-3 (Fed. Cir. Nov. 6, 2018).
`
`III. MYLAN’S PETITION IS BARRED UNDER § 315(b) AND/OR § 315(a)
`As Click-to-Call held, the trigger for the § 315(b) time bar is not eliminated
`
`when an earlier action is dismissed. Therefore, Mylan’s Petition, which was not
`
`filed until August 24, 2017, is time-barred under § 315(b). By the time Mylan filed
`
`its Petition, the parties had been litigating infringement of the ’698 patent for over
`
`eighteen months. On February 19, 2016, Mylan served counterclaims seeking
`
`declaratory judgment that the ’698 patent was not infringed. On March 7, 2016,
`
`Patent Owners served their answer to Mylan’s non-infringement counterclaim,
`
`agreeing with Mylan that a case or controversy existed as to Mylan’s infringement
`
`of the ’698 patent. On March 31, 2016, Patent Owners served Mylan with their
`
`disclosure of asserted claims of the ’698 patent, pursuant to District of New
`
`3
`
`
`
`Case No. IPR2017-01995
`Patent No. 9,220,698
`Jersey’s Local Patent Rule 3.6(B). See Ex. 2072 at 5-6. On April 25, 2016, Patent
`
`Owners served infringement contentions on Mylan. Thus, there can be no dispute
`
`that all parties were litigating infringement of the ’698 patent more than a year
`
`before Mylan filed the instant IPR petition. Mylan’s petition is time-barred.
`
`That the litigation began with counterclaims filed by Mylan does not change
`
`this conclusion. The Board has previously found that “complaint” in § 315(b)
`
`should be construed broadly to cover counterclaims. St. Jude Med., Cardiology
`
`Div., Inc. v. Volcano Corp., IPR2013-00258, Paper 29 at 2-7 (P.T.A.B. Oct. 16,
`
`2013). Otherwise, the section would apply to “some, rather than all, accused
`
`infringers” and “would leave a patent open to serial attack, even after years of
`
`patent infringement litigation ….” Id. at 3.
`
`The rationale of Click-to-Call also applies to § 315(a). The statutory
`
`language is plain and the legislative intent is clear: the trigger for the § 315(a) bar
`
`is not erased when an earlier action is dismissed. § 315(a) prohibits the filing of
`
`an IPR by a party who previously filed a civil action challenging the patent’s
`
`validity. As set forth in Patent Owners’ Preliminary Response and Request for
`
`Rehearing, it was Mylan, not Patent Owners, who brought the ’698 patent into the
`
`district court litigation by seeking declaratory judgment of invalidity and non-
`
`infringement before the ’698 patent was ever asserted. That Mylan styled these
`
`claims as permissive counterclaims is of no moment—Mylan could have brought
`
`4
`
`
`
`Case No. IPR2017-01995
`Patent No. 9,220,698
`these claims in a separate civil action. Fed. R. Civ. P. 13(b); see also Amkor Tech.,
`
`Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 at 8 n.5 (P.T.A.B. Jan. 31, 2014)
`
`(“[A] counterclaim basically is a defendant’s complaint. In other words, the
`
`defendant, by filing a counterclaim, commences a civil action against the plaintiff.
`
`The counterclaim stands alone as its own cause of action and can be adjudicated
`
`separately, even if the plaintiff’s complaint is dismissed.”) (internal quotations and
`
`citations omitted). Mylan thus initiated a civil action challenging the validity of
`
`the ’698 patent and is barred from seeking subsequent inter partes review.
`
`§ 315(a)(3) does not excuse Mylan’s gamesmanship. § 315(a)(3) was
`
`designed to address counterclaims filed in response to allegations of infringement.
`
`See, e.g., 157 Cong. Rec. S1375 (Mar. 8, 2011) (“[§] 315(a) . . . bars a party from
`
`seeking or maintaining such a review if he has sought a declaratory judgment that
`
`the patent is invalid. This restriction applies, of course, only if the review petitioner
`
`has filed the civil action. These two subsections (a) do not restrict the rights of an
`
`accused infringer who has been sued and is asserting invalidity in a
`
`counterclaim.”). That is not the case here as Mylan had not been sued over the
`
`’698 patent.
`
`IV. CONCLUSION
`Federal Circuit precedent mandates that Mylan’s Petition was barred by
`
`§ 315(a)(1) and (b) and should not have been instituted.
`
`5
`
`
`
`
`Dated: February 8, 2019
`
`
`
`
`
`Case No. IPR2017-01995
`Patent No. 9,220,698
`
`Respectfully submitted,
`
`
`
`By: /Thomas A. Blinka/
`Thomas A. Blinka, Ph.D.
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., N.W. Suite 700
`Washington, DC 20004-2400
`Tel: (202) 842-7800
`Fax: (202) 842-7899
`tblinka@cooley.com
`
`USPTO Reg. No. 44,541
`
`6
`
`
`
`
`
`
`
`Case No. IPR2017-01995
`Patent No. 9,220,698
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
`
`I, Thomas A. Blinka, hereby certify that on this 8th day of February 2019, the
`
`foregoing PATENT OWNERS’ BRIEFING REGARDING CLICK-TO-CALL
`
`TECHS., L.P. v. INGENIO, INC. was served electronically via email on the
`
`following:
`
`Brandon M. White
`Emily J. Greb
`PERKINS COIE LLP
`bmwhite@perkinscoie.com
`egreb@perkinscoie.com
`EsoNaproxen@perkinscoie.com
`
`Alan Pollack
`Stuart D. Sender
`Louis Weinstein
`BUDD LARNER PC
`apollack@buddlarner.com
`ssender@buddlarner.com
`lweinstein@buddlarner.com
`
`
`Date: February 8, 2019
`
`
`
`
`BY:
`
`
`/Thomas A. Blinka/
`Thomas A. Blinka, Ph.D.
`Reg. No. 44,541
`Counsel for Patent Owner
`
`7
`
`
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