`571-272-7822
`
`Paper 31
`Entered: April 17, 2015
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`
`
`
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`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This order addresses issues common to both cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in both proceedings, provided
`that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`A consolidated telephonic conference call was held on April 15, 2015,
`
`in these proceedings and two related cases filed by a different petitioner
`
`(InnoPharma Licensing). See IPR2015-00902 and IPR2015-00903 (filed
`
`March 26, 2015). The participants on the call were Judges Prats, Franklin,
`
`and Obermann, as well as counsel for Petitioner in the instant proceedings
`
`(Metrics), counsel for InnoPharma Licensing, and counsel for Patent Owner
`
`in all four proceedings (Senju).
`
`The purpose of the call was to discuss the respective positions of
`
`InnoPharma Licensing, Metrics, and Senju, regarding InnoPharma
`
`Licensing’s Motions for Joinder in the related cases. See IPR2015-00902,
`
`Paper 3 and IPR2015-00903, Paper 3; see also Appendix (copy of email
`
`transmission from Board to the parties).
`
`Counsel for Senju supplied a court reporter for the call and agreed to
`
`file a true copy of the transcript of the call, as an exhibit in all four
`
`proceedings. That exhibit shall serve as the record of the content of the call.
`
`
`
`
`
`
`
`Proposed Joint Scheduling Order
`
`Concurrently herewith, by Orders entered in IPR2015-00902 and
`
`IPR2015-00903, InnoPharma Licensing is directed to file in those related
`
`cases, by May 19, 2015, a Proposed Scheduling Order to govern the
`
`schedule in the event that we institute an inter partes review in IPR2015-
`
`00902 and IPR2015-00903, and grant InnoPharma Licensing’s Motions for
`
`Joinder in those related cases.
`
`
`
`2
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`
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`
`
`
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`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`Patent Owner’s Preliminary Response in Related Cases
`
`
`
`Concurrently herewith, by Orders entered in IPR2015-00902 and
`
`IPR2015-00903, Senju’s due date for filing its Patent Owner’s Preliminary
`
`Responses in the related cases is changed from June 26, 2015, the date
`
`currently set, to May 26, 2015. The Board authorizes Senju to include in the
`
`Patent Owner’s Preliminary Responses its position regarding InnoPharma
`
`Licensing’s Proposed Scheduling Order. The time for filing of Senju’s
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`Oppositions to the Motions for Joinder remains April 19, 2015. See 37
`
`C.F.R. § 42.25(a)(1). InnoPharma Licensing’s time for filing a Reply to the
`
`Oppositions is governed by the rule relating to default filing times. See id.
`
`at § 42.25(a)(2).
`
`
`
`
`
`
`Metric’s Opposition to InnoPharma Licensing’s
`Motions for Joinder and Proposed Scheduling Order
`
`In the instant proceedings, we hereby authorize Metrics to file, by
`
`May 26, 2015, an Opposition to InnoPharma Licensing’s Motions for
`
`Joinder and Proposed Scheduling Order. See 37 C.F.R. § 42.5(a). That
`
`paper shall not exceed five (5) pages in length. No Reply to that Opposition
`
`is authorized at this time.
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`
`
`
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`3
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`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`It is
`
`
`
`ORDERED that Metrics is authorized to file, by May 26, 2015, an
`
`Opposition to InnoPharma Licensing’s Motion for Joinder and Proposed
`
`Scheduling Order; and
`
`FURTHER ORDERED that the Opposition so authorized shall not
`
`exceed five (5) pages in length.
`
`
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`
`
`
`
`4
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`
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`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`PETITIONER:
`
`Patrick D. McPherson
`Vincent L. Capuano
`Duane Morris LLP
`pdmcpherson@duanemorris.com
`VCapuano@duanemorris.com
`
`PATENT OWNER:
`
`Bryan Diner
`M. Andrew Holtman
`Justin Hasford
`Jonathan R. Stroud
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`bryan.diner@finnegan.com
`andy.holtman@finnegan.com
`justin.hasford@finnegan.com
`jonathan.stroud@finnegan.com
`
`
`
`5
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`
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`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`APPENDIX
`
`
`To Counsel in IPR2015-01041, IPR2015-01043, IPR2015-00902, and IPR2015-00903:
`
`The Board requests attendance by counsel for all parties at a conference call on Wednesday,
`April 15, 2015, at 11 am. Dial-in information follows. Counsel shall be prepared to discuss the
`following matters: (1) The status of the meet-and-confer that was planned for March 27th, 2015
`(as identified in the below email from Mr. Jonathan Stroud), and in particular, the parties’
`respective positions as to the practicality and appropriateness of joinder; (2) the substance and
`degree of any differences between the arguments and evidence advanced in the later-filed
`petitions (IPR2015-00902, -903) and the arguments and evidence advanced in the earlier-filed
`petitions (IPR2015-01041, -043); (3) regarding IPR2015-00902 and -903, any objections to
`changing the date for filing the Patent Owner’s Preliminary Response from June 26, 2015, the
`date currently set, to April 30, 2015, and the specific basis for any such objections.
`
`The Dial-in information is below:
`
`[omitted]
`
`6
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