`571-272-7822
`
`
`
`Paper 16
`Entered: October 29, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ENDO PHARMACEUTICALS, INC.
`Petitioner
`
`v.
`
`DEPOMED, INC.
`Patent Owner
`_______________
`
`Case IPR2014-00652 (Patent 6,723,340)
`Case IPR2014-00654 (Patent 6, 340,475)
`Case IPR2014-00656 (Patent 6,635,280)1
`______
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN,
`GEORGIANNA W. BRADEN, and TINA E. HULSE, Administrative
`Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This decision addresses issues that are identical in the three 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.
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6, 340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`
`The initial conference call for this case was held on October 28, 2014.
`Petitioner and Patent Owner each filed a list of proposed motions (Papers 14,
`15 in each case). The following matters were discussed during the call.
`Scheduling Order
`Neither party expressed concerns about the schedule or proposed
`changes. Lead counsel for Patent Owner and lead counsel for Petitioner
`each confirmed their availability on June 8, 2015 for oral argument (Due
`Date 7).
`Related Cases
`The parties indicated that Petitioner has filed a motion to stay the
`related litigation, Depomed, Inc. v. Endo Pharmaceuticals Inc., 3:13-cv-
`02467-JAP-TJB (D.N.J.), pending the outcome of these proceedings. Patent
`Owner confirmed that it has opposed the motion to stay. The parties
`indicated that the district court has not yet ruled on that motion.
`Pro Hac Vice Motions
`
`
`Petitioner anticipates filing two or three motions for pro hac vice
`admission. Such motions are authorized in the Notice of Filing Date
`Accorded to the Petition, Paper 3 at p. 2. The parties are advised that under
`37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing
`of good cause. Such motions shall be filed in accordance with the “Order --
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
`Paper 7, a copy of which is available on the Board Web site under
`“Representative Orders, Decisions, and Notices.”
`
`2
`
`
`
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6, 340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`
`Protective Order
`Patent Owner indicated that it was considering filing a motion relating
`to a protective order. The parties are encouraged to agree to the terms of a
`protective order. Board authorization is not required before the filing of a
`motion to seal.
`A protective order does not exist in these proceedings, however, until
`one is filed and approved by the Board. If a motion to seal is filed by either
`party, the proposed protective order should be presented as an exhibit to the
`motion. The parties are urged to operate under the Board’s default
`protective order, should a protective order become necessary. See Default
`Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`App. B (Aug. 14, 2012).
`If the parties choose to propose a protective order deviating from the
`default protective order, they should submit the proposed protective order
`jointly. A marked-up comparison of the proposed and default protective
`orders should be presented as an additional exhibit to the motion, so that
`differences can be understood readily. If the parties cannot agree on the
`terms of the proposed protective order, they should contact the Board.
`Redactions to documents filed in these proceedings should be limited
`strictly to isolated passages consisting entirely of confidential information,
`and the thrust of the underlying argument or evidence must be clearly
`discernible from the redacted versions. Information subject to a protective
`order will become public if identified in a final written decision in these
`proceedings, and a motion to expunge the information will not necessarily
`
`3
`
`
`
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6, 340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`prevail over the public interest in maintaining a complete and
`understandable file history. See Office Patent Trial Practice Guide, 77
`Fed. Reg. at 48,761.
`Motion to Amend
`Should Patent Owner decide to file a motion to amend, it must confer
`with the Board before filing the motion. Guidance for motions to amend
`may be found on the Board’s web site, www.uspto.gov/ptab. The
`conference should be requested at least two weeks before Due Date 1.
`
`
`For PETITIONER:
`
`Bruce Haas
`Henry Renk
`Stephen Yam
`FITZPATRICK, CELLA, HARPER & SCINTO
`Endo-ipr@fchs.com
`syam@fchs.com
`
`For PATENT OWNER:
`
`Arlene L. Chow
`Eric Lobenfeld
`HOGANL LOVELLS US LLP
`Arlene.chow@hoganlovells.com
`eric.lobenfeld@hoganlovells.com
`
`
`4
`
`
`
`
`
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