Takeaway: Failure of a petitioner to obtain agreement to file consolidated papers with the petitioner in a proceeding to be joined will likely weigh against a motion for joinder.

In its Decision, the Board exercised its discretion under 35 U.S.C. § 315(c) to deny Petitioner’s Motion to Join the Petition to IPR2014-00876 and denied institution of the instant proceeding. Petitioner timely filed its Motion for Joinder within one month of the institution of trial in IPR2014-00876 (“the Apotex IPR”). Both Patent Owner in the instant proceeding and the petitioner in the Apotex IPR filed oppositions to the Motion for Joinder. The Board determined that the reasons for joinder “do not outweigh meaningful reasons not to allow joinder.”

Petitioner was served with a complaint alleging infringement of the ‘191 patent more than one year prior to filing the Petition, and was therefore barred by the one-year time bar under 35 U.S.C. § 315(b) absent joinder with the Apotex IPR. Petitioner has the burden of proof to establish it is entitled to the requested relief.

The Board stated that 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.”

Petitioner argued the schedule in the Apotex IPR would not be affected by joinder, noting that Petitioner sought review “on the same ground, based on the same Declaration, on which the Board instituted inter partes review in [the Apotex IPR],” and that joinder would enhance efficiency. “Most notably,” according to the Board, Petitioner argued that “it and Apotex will address the same art and same challenge” and will file consolidated papers with Petitioner filing “only seven pages directed only to points of disagreement with Apotex.”

Patent Owner opposed and noted that even Apotex similarly opposed joinder. Apotex stated in its opposition that Petitioner “has not secured Apotex’s agreement to consolidate filings.” According to the opposition of Apotex filed in its IPR, Apotex would not consent to such consolidated filings because, among other reasons, Apotex does not wish to share its draft briefs with Teva, its direct competitor, its draft briefs are privileged documents, and there is no joint defense agreement in place.

The Board agreed with Patent Owner and Apotex that joinder would not be appropriate. Because Apotex has not agreed to consolidated filings, “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 … plus additional responsive briefing by Patent Owner.”

Further, Petitioner argued that it would be prejudiced if the parties to the Apotex IPR settled. The Board noted that Apotex had already filed its Reply to Patent Owner’s Response, and therefore, the Board “would be less likely to allow settlement given the late stage of the proceeding.” Therefore, the stated prejudice to Petitioner based on settlement was reduced.

Thus, the Board denied Petitioner’s Motion for Joinder. Because Petitioner was time-barred absent joinder, the Board also denied institution.

Teva Pharmaceuticals USA, Inc. v. ViiV Healthcare Co. and ViiV Healthcare UK Ltd., IPR2015-00550

Paper 11: Decision Denying Motion for Joinder and Denying Institution of Inter Partes Review

Dated: June 25, 2015

Patent: 6,417,191 B1

Before: Lora M. Green, Zhenyu Yang, and Tina E. Hulse

Written by: Green

Related Proceedings: ViiV Healthcare UK Ltd. v. Lupin Ltd., No. 1:14-cv-00369-LPS (D. Del.); ViiV Healthcare UK Ltd. v. Lupin Ltd., No. 1:11-cv-00576-RGA (D. Del.), andViiV Healthcare UK Ltd. v. Teva Pharmaceuticals USA, Inc., No. 1:11-cv-00688-RMB (D. Del.) (consolidated and on appeal in the U.S. Court of Appeals for the Federal Circuit (Docket Nos. 14-1303, 14-1304, and 14-1315)); IPR2014-00876