Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Entered: April 22, 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.
`
`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.”
`
`
`
`571-272-7822
`
`Paper 32
`Entered: April 22, 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.
`
`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)
`
`
`This Order addresses the briefing schedule relating to Motions for
`Joinder filed by a different Petitioner (“InnoPharma Licensing”) in two
`related proceedings. See IPR2015-00902, Paper 3; IPR2015-00903, Ex. 0.
`This Order modifies the Order entered April 17, 2015. Paper 31.2
`Petitioner (“Metrics”) is authorized to file, by May 26, 2015, an Opposition
`to the Motions for Joinder. That Opposition shall include Metrics’ position
`regarding InnoPharma Licensing’s Proposed Scheduling Order, which is due
`on May 19, 2015. That Opposition shall not exceed five (5) pages in length.
`Based on information provided by counsel for Patent Owner
`(“Senju”), in an Order entered concurrently herewith in IPR2015-00902 and
`IPR2015-00903, the Board extends, to May 26, 2015, Senju’s time for filing
`an Opposition to InnoPharma Licensing’s Motions for Joinder in the related
`proceedings. See Appendix (copy of email transmissions between the Board
`and the parties). Instructions relating to that Opposition are provided in that
`Order. See IPR2015-00902, Paper 10; IPR2015-00903, Paper 8.
`In that Order, the Board further authorizes InnoPharma Licensing to
`file a Consolidated Reply Brief, in all four proceedings, that addresses both
`Senju’s and Metrics’ Oppositions to the Motions for Joinder (as both
`Oppositions are now due on May 26, 2015). Id. Instructions relating to that
`Consolidated Reply Brief are provided in that Order Id.
`
`
`
`
`
`
`
`2 The paper numbers are identical in IPR2014-01041 and IPR2014-01043.
`
`2
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`It is
`ORDERED Metrics is authorized to file, by May 26, 2015, an
`
`Opposition to InnoPharma Licensing’s Motions for Joinder;
`FURTHER ORDERED that Metrics’ Opposition shall include
`Metrics’ position regarding InnoPharma Licensing’s Proposed Scheduling
`Order, which is due on May 19, 2015; and
`FURTHER ORDERED that the Opposition shall not exceed five (5)
`pages in length.
`
`
`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
`
`
`
`3
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`APPENDIX
`
`
`Counsel: Based on the information provided by counsel, in IPR2014‐00903
`and ‐902, the Board extends, to May 26, 2015, Senju’s time for filing an
`Opposition to InnoPharma Licensing’s Motions for Joinder. That Opposition
`shall be a paper filed separately from Patent Owner’s Preliminary
`Response, which is also due on May 26, 2015. That Opposition shall include
`Senju’s position on InnoPharma Licensing’s Proposed Scheduling Order,
`which is due for filing on May 19, 2015.
`
`In addition, the Board authorizes InnoPharma Licensing to file a
`Consolidated Reply Brief, in all four proceedings, that addresses both
`Senju’s and Metrics’ Oppositions to Joinder (as both are now due on May
`26, 2015). The time for filing that Consolidated Reply Brief shall be set for
`June 9, 2015. The Consolidated Reply Brief shall be limited to ten (10)
`pages in length. Orders to that effect will issue shortly.
`
`Thank you,
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
` [omitted]
`
`
`From: Stroud, Jonathan [omitted]
`Sent: Friday, April 17, 2015 5:27 PM
`To: Trials
`Cc: [omitted]
`Subject: Request for Filing Date Clarification: IPR2014-01041, -01043, IPR2015-00903,
`IPR2015-00902
`
`Board,
`
` Counsel for Patent Owner in IPR2014-01041, IPR2014-01043, IPR2015-00903,
`IPR2015-00902 seeks clarification of today’s Order in these four cases. See, e.g,
`IPR2014-01041, Paper 31. In it, the Board indicated: “The time for filing of Senju’s
`Oppositions to the Motions for Joinder remains April 19, 2015. See 37 C.F.R.
`§ 42.25(a)(1).”
`
`4
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
` However, during the conference call of April 15, 2015, Judge Obermann indicated that
`the preliminary response would include any opposition to joinder. See, e.g., IPR2014-
`01041, EX2026.
`
`
`
`
`
` Subsequently during the call, Judge Obermann decided to move the Patent Owner
`Preliminary Response date to May 26, 2015. Given that the Order was entered on April
`17, 2015, counsel for Senju seeks clarification as to when they should include their
`opposition to the motion for joinder and whether, like Metrics, the Patent Owner’s
`opposition to the joinder motion should be due on May 26, 2015.
`
` Thank you,
`
`
`Jonathan Stroud
`[omitted]
`
`5
`
`
`
`
`
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