`571-272-7822
`
`
`
`
`
`Paper No. 29
` Entered: January 30, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BIODELIVERY SCIENCES INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`RB PHARMACEUTICALS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2014-00325
`Patent 8,475,832
`____________
`
`Before TONI R. SCHEINER, JACQUELINE WRIGHT BONILLA, and
`ZHENYU YANG, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00325
`Patent 8,475,832
`
`
`
`
`On January 28, 2015, a conference call was conducted between respective
`counsel for the parties and Judges Scheiner, Bonilla, and Yang. The purpose of the
`call was to address Petitioner’s request, by e-mail correspondence sent to the Board
`and parties on January 26, 2015, of five additional pages for its reply to Patent
`Owner’s Response. In its e-mail, Petitioner requested additional pages on the basis
`that “Patent Owner presents inconsistent and shifting positions on claim
`construction, and relies on 50 new exhibits, including their own documents which
`contradict their arguments.” See attached.
`As stated during the call, Petitioner contends that “unusual circumstances”
`exist here because (1) Patent Owner’s expert rejects Patent Owner’s data in certain
`instances, but relies on it in other instances; (2) Patent Owner cites 50 new exhibits
`in its Response; and (3) Patent Owner’s expert appears to agree with the Board’s
`claim construction in certain instances, but relies on different claim construction in
`other instances. Patent Owner opposes any extra pages in the reply, responding
`that the issues raised by Petitioner are not unusual, but rather normal advocacy
`positions raised by an opposing party.
`As explained during the call, we do not grant Petitioner additional pages in
`its reply. We are not persuaded that extra pages are justified in this instance. We
`agree with Patent Owner that the “circumstances” presented by Petitioner
`correspond to the type of positions one might expect to present, or respond to, in a
`reply.
`Accordingly, it is
`ORDERED that Petitioner’s request for five additional pages for its reply is
`denied.
`
`
`
`
`2
`
`
`
`Case IPR2014-00325
`Patent 8,475,832
`
`
`
`PETITIONER:
`
`
`
`
`
`
`Danielle L. Herritt
`McCarter & English, LLP
`dherritt@mccarter.com
`
`Kia L. Freeman
`McCarter & English, LLP
`kfreeman@mccarter.com
`
`
`
`PATENT OWNER:
`
`
`James M. Bollinger
`Troutman Sanders LLP
`james.bollinger@troutmansanders.com
`
` Daniel A. Ladow
`Troutman Sanders LLP
`daniel.ladow@troutmansanders.com
`
`
`
`
`
`3
`
`
`
`From: Herritt, Danielle [mailto:dherritt@mccarter.com]
`Sent: Monday, January 26, 2015 1:17 PM
`To: Trials
`Cc: Bollinger, James Moore; Ladow, Daniel A.; 'Essunger, Magnus'; IPR832
`Subject: IPR2014-00325 - Request for Telephone Conference
`
`Dear Mr. Patrick E. Baker,
`
`
`We request a telephone conference this afternoon with the Board to request 5 additional pages for
`Petitioner’s Reply due this Friday, January 30, 2015. Patent Owner presents inconsistent and shifting
`positions on claim construction, and relies on 50 new exhibits, including their own documents which
`contradict their arguments. We believe the Board will benefit from the additional briefing to identify
`Patent Owner’s inconsistency.
`
`
`Counsel for Patent Owner has indicated they are available this afternoon and tomorrow.
`
`
`Sincerely,
`Danielle Herritt
`
`
`
`
`This email message from the law firm of McCarter & English, LLP is for the sole use of the
`intended recipient(s) and may contain confidential and privileged information. Any unauthorized
`review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please
`contact the sender by reply email and destroy all copies of the original message.
`
`
`
`
`
`
`Danielle L. Herritt | Partner
`McCARTER & ENGLISH, LLP
`
`265 Franklin Street | Boston, Massachusetts 02110
`T: 617-449-6513
`F: 617-206-9397
`dherritt@mccarter.com | www.mccarter.com
`
`BOSTON | HARTFORD | STAMFORD | NEW YORK | NEWARK
`EAST BRUNSWICK | PHILADELPHIA | WILMINGTON | WASHINGTON, DC
`
`
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