`Tel: 571-272-7822
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`Paper 14
` Entered: October 31, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NOVEN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners.
`____________
`
`Case IPR2014-00549 (Patent 6,316,023 B1)
` Case IPR2014-00550 (Patent 6,335,031 B1)1
`_____________
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`1 This decision addresses issues that are identical in the two cases. We,
`therefore, exercise our discretion to issue one order to be filed in each case.
`The parties are not authorized to use this style heading for any papers.
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`
`
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`
`
`IPR2014-00549 (Patent 6,316,023 B1)
`IPR2014-00550 (Patent 6,335,031 B1)
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`The initial conference call for this case was held on October 30, 2014,
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`between Mr. Steven J. Lee, Mr. Michael K. Levy, counsel for Petitioner,
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`Noven Pharmaceuticals, Inc.; Mr. Raymond R. Mandra, Mr. Nicholas N.
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`Kallas, counsel for Patent Owner, Novartis AG and LTS Lohmann Therapie-
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`Systeme AG; and Administrative Patent Judges Prats, Franklin, and
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`Kamholz. Petitioner and Patent Owner each filed a List of Proposed
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`Motions (Papers 12 and 13)2.
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`The following matters were discussed during the call.
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`Scheduling Order
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`Both parties confirmed that they have stipulated to modify DUE
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`DATES 1-3 of the Scheduling Order. The parties are reminded that a
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`stipulation is not effective until a notice of it is filed with the Board.
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`Related Cases
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`The parties were reminded of their obligation to update their
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`mandatory notices within twenty-one (21) days of any change in the
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`information provided therein, including changes in the status of co-pending
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`litigation. See 37 C.F.R. § 42.8(a)(3).
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`Pro Hac Vice Motion
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`Patent Owner anticipates filing a motion for pro hac vice admission of
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`Ms. Charlotte C. Jacobsen. We reminded the parties that such motion is
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`authorized in the Notice of Filing Date Accorded to the Petition (Paper 4).
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`Such motion shall be filed in accordance with the “Order -- Authorizing
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`Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a
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`copy of which is available on the Board Web site under “Representative
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`Orders, Decisions, and Notices.” The parties are advised that under 37
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`2 Paper numbers cited in this Order relate to each case.
`2
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`
`
`
`
`IPR2014-00549 (Patent 6,316,023 B1)
`IPR2014-00550 (Patent 6,335,031 B1)
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`C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of
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`good cause. We also advised Patent Owner to indicate in the motion
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`whether Petitioner opposes the motion. Petitioner was advised that a party
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`seeking to oppose a motion for pro hac vice admission must file its
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`opposition no later than one week after the filing of the underlying motion.
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`Protective Order
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`We noted that a protective order has not been entered in these
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`proceedings. Petitioner and Patent Owner indicated that they may seek entry
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`of a protective order. If the parties file a motion to seal, and no protective
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`order has been entered, a protective order must accompany the motion as an
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`exhibit. The panel recommended the default protective order in the Office
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`Trial Practice Guide. 77 Fed. Reg. 48,756, Appendix B (Aug. 14, 2012). If
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`the parties choose to deviate from the default protective order, we suggested
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`that the parties schedule a conference with the Board for guidance.
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`Moreover, if the parties deviate from the default protective order, the
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`modifications should be indicated in “redline” when the modified default
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`protective order is submitted to the Board.
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`Motion to Seal
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`We reminded the parties that the Board has a strong interest in the
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`public availability of the proceedings. Any motion to seal must be narrowly
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`tailored to the confidential information. The parties are encouraged to
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`stipulate to facts or use other means to present the evidence without the need
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`for a motion to seal. The parties are reminded that information subject to a
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`protective order will become public if identified in a final written decision in
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`this proceeding, and that a motion to expunge the information will not
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`necessarily prevail over the public interest in maintaining a complete and
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`3
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`
`
`IPR2014-00549 (Patent 6,316,023 B1)
`IPR2014-00550 (Patent 6,335,031 B1)
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`understandable file history. See Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,761 (Aug. 14, 2012). Board authorization is not required
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`before the filing of a motion to seal.
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`Motion to Amend
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`In Patent Owner’s List of Proposed Motions, Patent Owner stated that
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`it does not intend to request to file a motion to amend the challenged claims
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`of the patents at issue in these proceedings.
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`Remaining Motions
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`The parties confirmed that the remaining motions included in their
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`respective lists of proposed motions are not intended to be filed imminently
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`and do not require Board attention at this time. The parties are reminded
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`that, except as otherwise provided in the Rules, Board authorization is
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`required before filing a motion. 37 C.F.R. § 42.20(b). The party seeking to
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`file a motion should request a conference to obtain authorization to file the
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`motion.
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`Responses to Objections to Evidence
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`Petitioner sought guidance regarding responding to Patent Owner’s
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`objections to evidence. As provided by 37 C.F.R. § 42.64(b)(2), the party
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`relying on evidence to which an objection is served timely may respond to
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`the objection by serving supplemental evidence within ten business days of
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`service of the objection. If the parties agree that the supplemental evidence
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`cures the alleged defect in the evidence, the parties are directed to seek
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`authorization to file a motion to correct the relevant exhibit(s) or paper(s). If
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`an objection is not resolved, the party who timely served the objection may
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`file a motion to exclude evidence to preserve the objection no later than
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`DUE DATE 4. See 37 C.F.R. § 42.64(c).
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`
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`4
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`
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`IPR2014-00549 (Patent 6,316,023 B1)
`IPR2014-00550 (Patent 6,335,031 B1)
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`PETITIONER:
`
`Steven J. Lee
`Michael K. Levy
`KENYON & KENYON LLP
`slee@kenyon.com
`mlevy@kenyon.com
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`PATENT OWNER:
`
`Raymond R. Mandra
`Nicholas N. Kallas
`FITZPATRICK, CELLA, HARPER & SCINTO
`rmandra@fchs.com
`ExelonPatchIPR@fchs.com
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`5
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