`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Entered: September 9, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.
`Petitioners,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.
`Patent Owners.
`_______________
`
`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 Proceedings
`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 identical papers 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)
`
`
`
`On September 8, 2014, counsel for Patent Owner requested a conference call
`
`with the Board to address alleged “further substantive and procedural errors”
`
`contained in Petitioner’s recently filed revised Mandatory Notices. Email dated
`
`Sept. 8, 2014 (attached). Counsel for Patent Owner further sought leave to request
`
`as relief “that the Board deny inter partes review in these proceedings.” Id. A
`
`conference call was held on September 9, 2014. During the conference call, it
`
`became apparent that Petitioner’s revised Mandatory Notices filed September 4,
`
`2014, did not contain or involve substantive or procedural errors warranting
`
`dismissal of the Petition. It also became apparent, however, that Patent Owner’s
`
`Mandatory Notices are incomplete.
`
`
`
`Patent Owner’s request to deny inter partes review based on Petitioner’s
`
`failure to comply with Board rules regarding the filing of revised mandatory
`
`notices is denied. Patent Owner shall file revised mandatory notices no later than
`
`September 10, 2014.
`
`
`
`Going forward, the parties shall make reasonable efforts to meet and confer
`
`to resolve disputes before involving the Board. When a party in these proceedings
`
`sends an email to the Board requesting a telephonic conference call, counsel shall
`
`include a certification that the meet-and-confer has taken place, or a full statement
`
`explaining why a meet-and-confer could not take place prior to involving the
`
`Board. That email shall also fairly describe the nub of the dispute, providing the
`
`facts and authority that relate to the dispute, without attorney argument.
`
`
`
`For the foregoing reasons, it is
`
`ORDERED that Patent Owner’s request for denial of inter partes review
`
`based on Petitioner’s failure to comply with Board rules regarding the filing of
`
`mandatory notices is denied;
`
`
`
`2
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`FURTHER ORDERED that Patent Owner shall file updated mandatory
`
`notices no later than September 10, 2014; and
`
`FURTHER ORDERED that the parties shall comply with the meet-and-
`
`confer requirements set forth in this order before involving the Board in future
`
`disputes.
`
`
`
`
`
`
`For Petitioner:
`
`Patrick McPherson
`pdmcpherson@duanemorris.com
`
`
`
`
`For Patent Owner:
`
`M. Andrew Holtman
`andy.holtman@finnegan.com
`
`Jonathan Stroud
`jonathan.stroud@finnegan.com
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`ATTACHMENT
`
`Subject: IPR2014-01041 and IPR2014-01043: Seeking Board Conference Call
`
`Mrs. Vignone—Patent Trial and Appeal Board,
`
`Patent Owner Senju would like to request a conference call with the Board and the parties to
`discuss further substantive and procedural errors related to Metrics’ improper, delayed, and
`unauthorized filing of Mandatory Notices on September 4, 2014 in IPRs2014-01041 and -01043,
`and to request that the Board deny inter partes review in these proceedings.
`
`Patent Owner’s counsel is available Monday afternoon and Tuesday all day, or later in the week
`at the Board’s convenience.
`
` Warm regards,
`
`
`Jonathan R.K. Stroud
`Patent Attorney
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4469 | fax: 202.408.4400 | jonathan.stroud@finnegan.com | www.finnegan.com
`LinkedIn | SSRN | Profile | Finnegan AIA Blog
`
`
`
`
`4
`
`
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