Takeaway: If a patent owner is opposing joinder, it needs to show how it will be unduly burdened by the joinder.

In its Decision, the Board granted inter partes review of challenged claims 1-22 of the ’431 Patent and granted joinder with IPR2015-00903.

Regarding institution, the Board found that the argument and evidence presented in the Petition was essentially identical in substance to the Petition in IPR2015-00903. The Board further noted that although the petitioners provided declarations from different witnesses, the substance of the declarations were almost identical. The Board then relied upon its determination in IPR2015-00903 that institution was warranted to determine that institution of inter partes review was appropriate in this proceeding.

The Board then turned to the Motion for Joinder. The Board noted that Petitioner agreed to rely on the same expert as the petitioner in IPR2015-00903 even though Petitioner had provided its own declaration. The Board also noted that the petitioners had reached an agreement as to their respective roles should the Board permit joinder of the proceedings. Petitioner also agreed to withdraw any arguments that differ from the arguments presented by the petitioner in IPR2015-00903.

The Board requested Patent Owner explain what burden it would bear if joinder were to occur. However, the Board found that none of Patent Owner’s arguments were persuasive. Patent Owner argued, for example, that Petitioner watched others challenge the ’431 Patent before making its own challenge, but the Board noted that Patent Owner had not sufficiently established the conditions required for finding that delay precludes a petitioner from seeking relief at the Board. Therefore, the Board permitted joinder in this case.

Lupin Ltd. and Lupin Pharmaceuticals Inc. v. Senju Pharmaceutical Co., Ltd., IPR2015-01871

Paper 13: Decision Instituting Inter Partes Review and Granting Petitioner’s Motion for Joinder

Dated: January 25, 2016

Patent 8,129,431

Before: Francisco C. Prats, Erica A. Franklin, and Grace Karaffa Obermann Written by: Obermann