Takeaway: Joinder may be appropriate where a later-filed petitioner agrees to proceed based only upon the arguments and evidence advanced by an earlier-filed petitioner and accept a back-seat role, without any right to separate or additional briefing or discovery, unless authorized by the Board or the earlier-filed petitioner drops out of the proceedings.

In its Decision, the Board granted Petitioner’s motion for joinder and instituted inter partes review of claims 1-30 of the ‘131 patent. Petitioner sought to join a pending proceeding against claims 1-30 of the ‘131 patent, Lupin Ltd. et al. v. Senju Pharm. Co., Case IPR2015-01097.

The Board first addressed the Petition, which “is substantially identical to the petition in the Lupin IPR, with respect to the ground challenging claims 1-30 as obvious over Sallmann and Ogawa.” InnoPharma’s Petition, however, “includes additional grounds not authorized in the inter partes review instituted [in] the Lupin IPR.” Moreover, “InnoPharma’s Petition is supported by the declaration of a different witness”; however, both declarants “provide essentially the same testimony regarding the ground challenging claims 1-30 as obvious over Sallmann and Ogawa.” Instead of addressing the grounds of unpatenability in the Petition, Patent Owner requested that the Board exercise its discretion “to deny InnoPharma’s Petition pursuant to 35 U.S.C. § 325(d) and 37 C.F.R. § 42.208(b).” Patent Owner argued that InnoPharma “has not only intentionally delayed in filing its piecemeal IPRs, but also unduly procrastinated to potentially resolve the joinder issue.” The Board found, however, that Patent Owner “has not persuasively supported those assertions or shown that the Petition was untimely filed.” As such, the Board determined, “under the present circumstances,” that it “is appropriate to exercise our discretion to institute an inter partes review of the challenged claims based upon the same ground authorized and for the same reasons discussed in our Institution Decision in the Lupin IPR” and “that proceeding in this manner is equitable for the parties.”

The Board next addressed Petitioner’s Motion for Joinder. “A motion for joinder should: set forth the reasons joinder is appropriate; identify any new grounds of unpatentability asserted in the petition; and explain what impact (if any) joinder would have on the trial schedule for the existing review.” In its evaluation, the Board noted that “Petitioner timely filed its Joinder Motion within one month of the institution of the Lupin IPR.” Moreover, the Board described a February 4, 2016 e-mail to the Board wherein InnoPharma offered “certain concessions”:

InnoPharma will agree to proceed . . . based only upon the arguments and evidence advanced by Lupin in its earlier-filed actions and accept a back-seat, “understudy” role in those joined proceedings, without any right to separate or additional briefing or discovery, unless authorized by the Board upon a request to address an issue that is unique to InnoPharma. Only if Lupin drops out of the proceedings for any reason, will InnoPharma cease its understudy role. . . . Moreover, InnoPharma has contacted Lupin, and Lupin has agreed to permit InnoPharma to rely upon its declarant (Dr. Lawrence) in the joined proceedings.

Based on the foregoing, the Board determined that “InnoPharma has established persuasively that joinder is appropriate and will have little to no impact on the timing, cost, or presentation of the trial on the instituted ground.” Thus, the Motion for Joinder is granted.

InnoPharma Licensing, Inc., et al. v. Senju Pharm. Co., IPR2016-00089
Paper 13: Decision on Institution of Inter Partes Review and Grant of Motion for Joinder
Dated: February 25, 2016
Patent: 8,754,131 B2
Before: Francisco C. Prats, Erica A. Franklin, and Grace Karaffa Obermann
Written by: Obermann