`571-272-7822
`
`
`
`
`
`Paper No. 7
` Entered: September 2, 2014
`
`
`
`
`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 IPR2014-00998
`Patent 8,475,832 B2
`____________
`
`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 IPR2014-00998
`Patent 8,475,832 B2
`
`
`
`
`
`
`
`On August 26, 2014, a conference call was conducted between respective
`counsel for the parties and Judges Scheiner, Bonilla, and Yang. BioDelivery
`Sciences International, Inc. (“Petitioner”) was represented by counsel, Danielle
`Herritt. RB Pharmaceuticals Limited (“Patent Owner”) was represented by
`counsel, James Bollinger and Daniel Ladow. The purpose of the call was to:
`(1) conduct an initial conference call in related Case No. IPR2014-00325,
`involving the same parties, where Petitioner challenges the same claims of the ’832
`patent at issue in this proceeding (see IPR2014-00325, Paper 21), and (2) discuss
`Petitioner’s request in this proceeding for authorization to file a motion for joinder
`of this case with IPR2014-00325.
`As discussed during the call, joinder may be authorized when warranted, but
`the decision to grant joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R.
`§ 42.122. As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief.1 37 C.F.R. §§ 42.20(c), 42.122(b). A motion
`for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify
`any new grounds of unpatentability asserted in the petition; (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing review;
`and (4) address specifically how briefing and discovery may be simplified. See
`Frequently Asked Question (“FAQ”) H5 on the Board’s website at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp. We also pointed the parties to
`guidance in the following cases: SAP America Inc. v. Clouding IP, LLC, IPR2014-
`00306, Paper 13; Enzymotec Ltd. v. Neptune Techs. & Bioresrouces, Inc.,
`
`
`1 During the call, Petitioner stated that its Petition in this proceeding is not time-
`barred under 35 U.S.C. § 315(b), and therefore, a joinder under 35 U.S.C. § 315(c)
`is not necessary for the Petition to avoid a time-bar under § 315(b).
`2
`
`
`
`
`
`
`
`
`
`Case IPR2014-00998
`Patent 8,475,832 B2
`
`
`IPR2014-00556, Paper 19; and Sony Corp. of America v. Network-1 Security
`Solutions, Inc., IPR2013-00386, Paper 16.
`During the call, we authorized Petitioner to file its Motion for Joinder, which
`Petitioner filed on August 29, 2014 (Paper 6). During the call, we also indicated to
`the parties that, while we have not considered the Petition or the Motion for
`Joinder in this case, the parties may wish to confer amongst themselves regarding a
`possible proposed schedule in the event that the two proceedings are joined. This
`could be beneficial to Patent Owner in the event that it does not oppose joinder, or
`would like to work out with Petitioner as how the schedule could be modified in
`IPR2014-00325, in the event that joinder occurs. We also authorized Patent
`Owner, if it so wishes, to file a 15-page opposition to Petitioner’s Motion for
`Joinder by the due date for the filing of Patent Owner’s preliminary response, i.e.,
`October 1, 2014.
`
`It is
`ORDERED that the Petitioner is authorized to file a Motion for Joinder; and
`FURTHER ORDERED that Patent Owner is authorized, if it so wishes, to
`file a 15-page opposition to Petitioner’s Motion for Joinder by October 1, 2014.
`
`
`
`3
`
`
`
`Case IPR2014-00998
`Patent 8,475,832 B2
`
`
`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
`
`4
`
`
`
`
`
`
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