Teva Pharmaceuticals USA, Inc.v.ViiV Healthcare Co.

Patent Trial and Appeal Board

Jun 25, 2015

08930225 (P.T.A.B. Jun. 25, 2015)

Trials@uspto.gov Paper No. 11
571.272.7822 Entered: June 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TEVA PHARMACEUTICALS USA, INC.,
Petitioner,

v.

VIIV HEALTHCARE CO. and
VIIV HEALTHCARE UK LTD.,
Patent Owner.
____________

Case IPR2015-00550
Patent 6,417,191 B1
____________

Before LORA M. GREEN, ZHENYU YANG, and TINA E. HULSE,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION
Denying Motion for Joinder and
Denying Institution of Inter Partes Review
37 C.F.R. §§ 42.108, 42.122

INTRODUCTION I.
Teva Pharmaceuticals USA, Inc. (“Petitioner Teva”) filed a Petition
requesting an inter partes review of claims 1–51 of U.S. Patent No.
6,417,191 B1 (Ex. 1001, “the ’191 patent”). Paper 2 (“Pet.”). ViiV
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Patent 6,417,191 B1

2
Healthcare Co. and ViiV Healthcare UK Ltd. (collectively, “Patent Owner”)
filed a Preliminary Response to the Petition. Paper 10 (“Prelim. Resp.”)
Concurrently with the filing of the Petition, Petitioner filed a motion
for joinder pursuant to 35 U.S.C. § 315(c). Paper 3 (“Mot. for Joinder”).
Specifically, Petitioner “moves to join this proceeding with Apotex Corp. v.
ViiV Healthcare Co. and ViiV Healthcare UK Ltd., IPR2014-000876 (the
‘Apotex IPR’), instituted on December 8, 2014.” Pet. 1. Petitioner Teva
timely filed its Joinder Motion within one month after institution of a trial in
IPR2014-00876, as required by 37 C.F.R. § 42.122(b). Paper 3, 2. Patent
Owner filed an Opposition to Motion for Joinder (Paper 9, “Opp. to
Joinder”); as did Petitioner, Apotex Corp. (“Petitioner Apotex”), in
IPR2014-00876. IPR2014-00876, Paper 24. We have jurisdiction under 35
U.S.C. § 314.
For the reasons provided below, we exercise our discretion under 35
U.S.C. § 315(c) and deny Petitioner Teva’s Motion to join the Petition to
IPR2014-00876. We also deny the Petition and do not institute an inter
partes review of the ’191 patent in this proceeding.
A. Related Proceedings
Patent Owner states that it has asserted the ’191 patent in ViiV
Healthcare UK Ltd. v. Lupin Ltd., No. 1:14-cv-00369-LPS (D. Del.). Paper
7, 2. Patent Owner states that it also asserted the ’191 patent in ViiV
Healthcare UK Ltd. v. Lupin Ltd., No. 1:11-cv-00576-RGA (D. Del.), and
ViiV Healthcare UK Ltd. v. Teva Pharmaceuticals USA, Inc., No. 1:11-cv-
00688-RMB (D. Del.), which were consolidated, and are currently on appeal
in the U.S. Court of Appeals for the Federal Circuit (Docket Nos. 14-1303,
14-1304, and 14-1315). Id.
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B. The Asserted Ground of Unpatentability
Petitioner challenges the patentability of claims 1–51 of the
’191 patent on the following ground (Pet. 14):
References Basis Claims Challenged
Cameron
1
and Daluge
2
§ 103 1–51

ANALYSIS II.
A. Decision on Motion for Joinder
The statutory provision governing joinder of inter partes review
proceedings is 35 U.S.C. § 315(c), which provides as follows:
(c) JOINDER.—If 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 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.
The Board determines whether to grant joinder on a case-by-case
basis, taking into account the particular facts of each case. When exercising
that 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. 37 C.F.R. § 42.1(b). Here, we
determine that Petitioner Teva’s stated reasons for allowing joinder do not
outweigh meaningful reasons not to allow joinder.

1
Cameron et al., EP 0513917 A1, published November 19, 1992 (Ex. 1002).
2
Daluge et al., 1592U89 Succinate – A Novel Carbocyclic Nucleoside
Analogue with Potent, Selective Anti-HIV Activity, ABSTRACTS OF THE 34TH
ICAAC, 7 Abstract I6 (October 5, 1994) (Ex. 1003).
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The Petition was filed on January 8, 2015. Petitioner Teva
acknowledges that, more than one year before filing the Petition, it was
served with a complaint alleging infringement of the ’191 patent in ViiV
Healthcare UK Ltd. v. Teva Pharmaceuticals USA, Inc., No. 1:11-cv-00688-
RMB (D. Del.). Pet. 5 n.2. Section 315(b) bars institution of inter partes
review when the petition is filed more than one year after the petitioner is
served with a complaint alleging infringement of the patent. 35 U.S.C.
§ 315(b); 37 C.F.R. § 42.101(b). The one-year time bar, however, does not
apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R.
§ 42.122(b). Thus, absent joinder of this proceeding to IPR2014-00876, the
Petition is barred under § 315(b).
As a moving party, Petitioner Teva has the burden of proof in
establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c),
42.122(b). A motion for joinder should: (1) set forth the reasons why
joinder is appropriate; (2) identify any new grounds of unpatentability
asserted in the petition; (3) explain what impact (if any) joinder would have
on the trial schedule for the existing review; and (4) specifically address how
briefing and discovery may be simplified. See, e.g., Kyocera Corp. v.
Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
(Paper 15); FAQ H5 on the Board’s website at
http://www.uspto.gov/patents-application-process/appealing-patent-
decisions/trials/patent-review-processing-system-prps-0.
Petitioner Teva contends that joinder will not affect the scheduling
order set in IPR2014-00876. Paper 3, 5. Specifically, Petitioner Teva
argues that it seeks review on the same ground, based on the same
Declaration, on which the Board instituted inter partes review in IPR2014-
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00876. Id. Petitioner contends further that joinder will enhance efficiency
and avoid duplicate efforts, as well as inconsistencies. Id. at 6. Moreover,
according to Petitioner, it could be prejudiced if it were not allowed to join
the existing inter partes review if Petitioner Apotex and Patent Owner were
to settle IPR2014-00876. Id. at 7. Most notably, Petitioner Teva argues
further that it and Apotex will address the same art and same challenge, it
“envisions few differences in the parties’ positions.” Id. at 8. Thus,
Petitioner asserts that it and Apotex will file consolidated papers, and it will
limit “itself to separate filings of only seven pages directed only to points of
disagreement with Apotex.” Id. at 9.
Patent Owner responds that “joinder will unnecessarily complicate
and disrupt the Apotex IPR.” Paper 26, 1. In particular, Patent Owner notes
that Apotex, Petitioner in IPR 2014-00876, opposes joinder. Id. Petitioner
Apotex agrees, noting that Petitioner Teva has not secured Apotex’s
agreement to consolidate filings. IPR2014-00876, Paper 24, 3. Specifically,
Petitioner Apotex states:
Teva’s Motion implies that Apotex and Teva have agreed to
work together to prepare filings and coordinate discovery.
Despite Teva’s implication, Teva has not secured Apotex’s
agreement to coordinate efforts. Nor can it. Teva is a direct
competitor of Apotex’s and Apotex does not consent to sharing
its draft briefs with Teva. Apotex’s draft briefs are attorney-
client-privileged documents and attorney work product, and
Teva fails to identify any authority suggesting that the Board
could or should require a party to divulge its privileged attorney
work product. Moreover, Apotex and Teva do not have a joint
defense agreement with respect to the ’191 patent and do not
have aligned interests with respect to IPR proceedings
involving the ’191 patent. The interests of justice do not
support requiring competitors to cooperate in a contested case.
Id. at 5.
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We agree with Patent Owner and Petitioner Apotex in IPR2014-00876
that Petitioner Teva has not established that joinder would be appropriate
given the circumstances of this case. In particular, we note that Petitioner in
this proceeding, Teva, has not obtained the agreement of Petitioner in
IPR2014-00876, Apotex, to consolidate filings. Thus every paper filed by
Petitioner in any joined proceeding could be subject to at least seven
additional pages of briefing by Petitioner in this proceeding, Teva, plus
additional responsive briefing by Patent Owner in the joined proceeding.
Moreover, there is reduced prejudice to Petitioner Teva that Petitioner
Apotex and Patent Owner ViiV Healthcare may settle, as Petitioner Apotex
has already filed its Reply to Patent Owner’s Response in IPR2014-00876,
and we would be less likely to allow settlement given the late stage of the
proceeding. See Blackberry Corp. v. Mobilemedia Ideas, Case IPR2013-
00036, slip op. at 2 (PTAB Jan. 21, 2014) (Paper 64) (noting that as set forth
in 37 C.F.R. § 42.74(a), the Board is not party to the settlement, and may
determine independently any question of patentability).
B. Denial of Inter Partes Review
Petitioner Teva admits that it was served with a complaint alleging
infringement of the ’191 patent more than one year prior to the date of filing
of the instant Petition. Pet. 5 n.5. Accordingly, in view of the denial of the
requested relief of joinder with IPR2014-00876, institution of an inter partes
review as requested by Petitioner is barred by statute. 35 U.S.C. § 315(b);
see also 37 C.F.R. § 42.101(b).

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CONCLUSION III.
We deny the Motion for Joinder, and, therefore, deny the Petition
because it was not filed within the time limits imposed under 35 U.S.C.
§ 315(b).

ORDER IV.
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s request for joinder is denied; and
FURTHER ORDERED that the Petition for inter partes review of
claims 1–51 of the ’191 patent is denied.

PETITIONER:
Ira J. Levy
ilevy@goodwinprocter.com

Eleanor M. Yost
eyost@goodwinprocter.com

PATENT OWNER:
F. Christopher Mizzo
chris.mizzo@kirkland.com

Charles Fernandez
charles.fernandez@kirkland.com

Eugene Goryunov
eugene.goryunov@kirkland.com