Trials@uspto.gov
`571-272-7822
`
`Paper 23
`Entered: March 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`____________________
`
`Case IPR2014-01041 (Patent 8,129,431 B2)
`Case IPR2014-01043 (Patent 8,669,290 B2)1
`____________________
`
`
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY AND ORDER
`Conduct of the Proceeding
`Granting Extension of Time for Motion
`37 C.F.R. §§ 42.5, 42.123(a)
`
`
`
`
`
`1 The parties are not authorized to use this style caption.
`
`
`571-272-7822
`
`Paper 23
`Entered: March 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`____________________
`
`Case IPR2014-01041 (Patent 8,129,431 B2)
`Case IPR2014-01043 (Patent 8,669,290 B2)1
`____________________
`
`
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY AND ORDER
`Conduct of the Proceeding
`Granting Extension of Time for Motion
`37 C.F.R. §§ 42.5, 42.123(a)
`
`
`
`
`
`1 The parties are not authorized to use this style caption.
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`A consolidated initial conference call in both proceedings was held on
`March 17, 2015, between counsel for the parties and Judges Prats, Franklin,
`and Obermann. Patent Owner supplied a court reporter and agreed to file a
`true copy of the transcript of the call, as an exhibit in both proceedings.
`Petitioner and Patent Owner each filed a list of proposed motions. The
`following matters were discussed during the call.
`
`Scheduling Order
`Neither party expressed concerns about, or proposed any changes to,
`the schedule. Lead counsel for Patent Owner and lead counsel for Petitioner
`both confirmed their availability to attend the final oral hearing scheduled
`for November 12, 2015 (Due Date 7).
`
`
`Related Cases
`The parties indicated that neither of the two related district court
`actions is currently stayed pending the outcome of these administrative
`proceedings. See Senju Pharmaceutical Co. v. Lupin, Ltd., C.A. No. 1:14-
`CV-00667-MAS-LHG (D.N.J.); Senju Pharmaceutical Co. v. Metrics, Inc,
`C.A. No. 1:14-cv-03962-JBS-KMW (D.N.J.). We directed counsel to
`jointly apprise the Board, within five (5) business days, should a request to
`stay, or a motion to dismiss, be granted in either district court action.
`
`
`2
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`Motion to Seal and Joint Motion for a Protective Order
`Patent Owner indicated that it is considering filing a motion to seal
`confidential information and a related motion to enter a protective order.
`We advised counsel for both parties that a protective order does not
`exist in these proceedings 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 need arise for a
`protective order. 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 that deviates 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 this proceeding 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 our final written decision, and a
`motion to expunge the information will not necessarily 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.
`
`3
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`
`Motion to Amend
`Patent Owner indicated that it is considering filing a motion to amend
`as well as a motion to waive the page limits related to motions to amend.
`We instructed Patent Owner that, should it decide to file a motion to
`amend, counsel must confer with the Board before filing the motion. We
`directed counsel to the guidance for motions to amend that is posted on the
`Board’s web site, www.uspto.gov/ptab. We also directed counsel to the
`guidance provided in Idle Free Systems, Inc. v. Bergstrom, Inc., Case
`IPR2012-00027, Paper 26 (PTAB June 11, 2013) (providing general
`guidance on motions to amend); see also Paper 66, slip op. at 26–38 (PTAB
`Jan. 7, 2014). A conference, concerning the motion to amend, should be
`requested in time to occur at least two weeks before May 19, 2015 (Due
`Date 1).
`We advised Patent Owner also that a motion to waive page limits is
`premature at this time. Counsel must seek Board pre-authorization before
`filing such a motion and, in the event that such authorization is sought, we
`will require Patent Owner to demonstrate good cause for that unusual
`remedy. The appropriate time to seek authorization for that purpose is
`during the conference call on the motion to amend.
`
`Motions to Exclude
`Patent Owner indicated that it is considering filing a motion to
`exclude. All motions to exclude must be filed no later than October 8, 2015
`
`4
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`(Due Date 4). We encouraged each party to file a single motion to exclude
`in each proceeding by that date, and explained that, generally, such motions
`are resolved in the Final Written Decision.
`
`Motion to File Supplemental Information
`Petitioner indicated that it may request authorization to file a motion
`to submit supplemental information under 37 C.F.R. § 42.123(a). Petitioner
`informed that Board that the supplemental information, sought to be
`submitted, is, in fact, supplemental evidence raised in response to Patent
`Owner’s objections to the authenticity of certain exhibits filed by Petitioner.
`Specifically, Petitioner stated that the supplemental evidence is limited to a
`certificate of foreign translation and certain publication information, which
`has not yet been served on Patent Owner in response to those objections.
`See 37 C.F.R. § 42.64(b)(2). We explained that any request for
`authorization to file a motion, therefore, is premature.
`Petitioner’s time for requesting authorization to file a motion to
`submit supplemental information, under 37 C.F.R. § 42.123(a), will expire
`in these proceedings on March 19, 2015. Counsel for both parties agreed to
`meet and confer, prior to March 26, 2015, in an effort to resolve without
`Board involvement, any dispute surrounding the sufficiency of Petitioner’s
`supplemental evidence. To the extent a dispute remains, counsel for
`Petitioner requested, and we granted, an extension of the time to request
`authorization to file a motion to submit supplemental information under 37
`
`5
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`C.F.R. § 42.123(a) to March 26, 2015. See 37 C.F.R. § 42.5(c) (Board may
`modify by order the times set by a rule).
`We emphasized that our grant of an extension of time is limited
`strictly to a request for authorization to file a motion to submit the
`supplemental information that Petitioner identified during the conference
`call; that is, a certificate of foreign translation, and certain publication
`information. Furthermore, such a request for authorization shall be
`submitted only in the event that the parties are unable to resolve the instant
`dispute, for which purpose that evidence is raised, regarding Patent Owner’s
`objections to the authenticity of certain of Petitioner’s exhibits.
`
`Motion for Additional Discovery
`Petitioner indicated that it may seek authorization to file a motion for
`additional discovery. Petitioner advised that the discovery relates to the
`authentication of certain exhibits filed by Petitioner in these proceedings.
`Petitioner identified by number each exhibit, about which no dispute is
`remaining. The transcript of the call shall serve as evidence of those
`numbers. During the course of the telephone conference, it became apparent
`that additional discussion between the parties, regarding the authenticity of
`other exhibits at issue, may be productive. We directed the parties to meet
`and confer in a good faith effort to resolve those remaining disputes without
`Board involvement.
`The parties are reminded that a motion for additional discovery
`requires Board pre-authorization, and will be granted only when the
`
`6
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`statutory standard, which is “necessary in the interest of justice,” is satisfied.
`Before either party seeks authorization to file a motion for additional
`discovery, counsel should be familiar with the factors that bear on that
`standard. See Garmin Int’l, Inc. v. Cuozzo Speed Tech., LLC, Case
`IPR2012-00001, Paper 20 (PTAB February 14, 2013) (explaining that the
`“standard is not a mathematical formula” and enumerating some factors that
`may be important).
`
`Requests for Telephone Conferences with the Board
`At several junctures, we directed the parties to make every effort to
`meet and confer to resolve disputes before seeking a telephone conference
`with the Board.
`
`It is
`ORDERED that Petitioner’s request for an enlargement of time, to
`March 26, 2015, to request authorization to file a motion to submit
`supplemental information, under 37 C.F.R. § 42.123(a), is granted subject to
`the conditions set forth in this Order.
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`PETITIONER:
`
`Patrick McPherson
`Vincent Capuano
`DUANE MORRIS LLP
`pdmcpherson@dunemorris.com
`vcapuano@dunemorris.com
`
`
`PATENT OWNER:
`
`M. Andrew Holtman
`Jonathan Stroud
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`any.holtman@finnegan.com
`jonathan.stroud@finnegan.com
`
`8
`
`
`
`
`
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