Merging concept illustrated by two different jigsaw piece a silver and a gold one.

Teva Pharmaceuticals USA, Inc. (“Teva”) filed a Petition, seeking an IPR of claims 1–20 of Allergan’s U.S. Patent No. 8,642,556. [IPR2017-00579, Paper No. 9]  Along with the Petition, Teva filed a Motion for Joinder to join Mylan Pharmaceuticals Inc. v. Allergan, Inc., IPR2016-01129.  This blog has previously reported on the topic of joinder in IPR Petitions here and here.

Teva’s Petition was not timely, having been filed more than one year after Allergan filed a complaint alleging infringement of the ‘556 patent against Teva.  Teva’s Motion for Joinder, however, was filed within one month of the date that the Board instituted review in response to Mylan’s Petition.  Under 37 C.F.R. § 42.122(b), Teva’s Motion for Joinder with Mylan’s Petition was timely.

Teva’s Petition was substantively identical to Mylan’s, challenging the same claims based on the same art and the same grounds.  Teva proposed the same claim construction positions and relies upon the same exhibits as Mylan. In addition, Teva agreed to withdraw their own expert declaration and instead rely on that of Mylan’s expert.  Further, Teva offered to assume a “back-seat, ‘understudy’ role” in the 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 Teva.”  Allergan opposed Teva’s Motion for Joinder, arguing that the statute prohibits the joinder of time-barred petitions to existing IPR proceedings.

In their decision granting Teva’s Motion for Joinder, the Board noted that the one-year time bar [under 35 U.S.C. § 315(b)] does not apply to a request for joinder, and approved Teva’s proposed role:

In view of the foregoing, we find that joinder based upon the conditions stated in Teva’s Motion for Joinder will have little or no impact on the timing, cost, or presentation of the trial on the instituted grounds. Moreover, discovery and briefing will be simplified if the proceedings are joined.  Thus, Teva’s Motion for Joinder is granted.  [Paper 9, p. 5]

This decision is one example of a party timely filing a Motion for Joinder (i.e., no later than one month after the institution date of any IPR for which joinder is requested according to 37 C.F.R. § 42.122(b)) and exemplary conditions petitioners might consider to persuade the Board to permit joinder.