`Tel: 571-272-7822
`
`
`
`Paper 9
` Entered: January 22, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ANTARES PHARMA, INC., LEO PHARMA A/S AND
`LEO PHARMA INC.,
`Petitioner,
`
`v.
`
`MEDAC GESELLSCHAFT FÜR KLINISCHE
`SPEZIALPRÄPARATE MBH.,
`Patent Owners.
`____________
`
`Case IPR2014-01091
`Patent 8,664,231 B2
`_____________
`
`Before TONI R. SCHEINER, ERICA A. FRANKLIN, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2014-01091
`Patent 8,664,231 B2
`
`
`The initial conference call for this case was held on January 21, 2015,
`between Mr. Sanya Sukduang, Mr. Thomas Jenkins, counsel for Petitioner,
`Antares Pharma, Inc., Leo Pharma A/S and Leo Pharma Inc.; Mr. James F.
`Haley, Mr. Ching-Lee Fukuda, counsel for Patent Owner, Medac
`Gesellschaft für klinische Spezialpräparate mbH; and Administrative Patent
`Judges Scheiner, Franklin, and Bonilla. The parties indicated that a court
`reporter was present on the call.1
`The following matters were discussed during the call.
`Scheduling Order
`Counsel for Patent Owner provided details regarding a request
`submitted to counsel for Petitioner to extend certain due dates listed in the
`Scheduling Order by one week. Petitioner’s counsel explained that they
`have not agreed yet to the proposed modification. We encouraged the
`parties to meet, confer, and agree upon requests to modify DUE DATES 1–5
`that are reasonable. The parties were reminded that once an agreement is
`reached, notice of such stipulation must be promptly filed. Additionally,
`counsel for each party confirmed their availability on August 17, 2015, for
`oral argument, if necessary.
`Related Cases
`The parties provided updates on the status of co-pending district court
`cases. We remind the parties of their obligation to update their mandatory
`notices within twenty-one (21) days of any changes in the information
`provided therein, including any further changes in the status of co-pending
`litigations. See 37 C.F.R. § 42.8(a)(3).
`
`
`1 We requested the parties to file with the Board as an Exhibit a copy of the
`transcript prepared by the court reporter.
`2
`
`
`
`
`
`IPR2014-01091
`Patent 8,664,231 B2
`
`Additional Discovery Request
`
`
`Counsel for Patent Owner described a request submitted to counsel for
`Petitioner for the discovery of documents containing information relating to,
`for example, the Safety and Tolerance Study disclosed in Grint, Ex. 1003,2
`and statements made in the Declaration of Dr. Michael E. Wineblatt, Ex.
`1012, ¶ 33. Both parties confirmed that they have not had an opportunity to
`meet and confer regarding this discovery request. We instructed the parties
`to do so, and encouraged them to consider points that each party raised
`during the discussion of the issue during this call. For example, if Petitioner
`is aware that any of the requested documents or information are publicly
`available, we recommended that Petitioner direct Patent Owner to that
`source. Further, we suggested that Patent Owner consider whether the
`limited information sought from the requested documents, i.e., the
`concentration of methotrexate administered in certain studies, may be
`obtained and confirmed in another acceptable manner, e.g., by deposition,
`stipulation, or the production of small portions of relevant documents. If the
`parties are unable to resolve satisfactorily the discovery request, counsel for
`Patent Owner may request a conference call to seek authorization to file a
`motion for such discovery. See 37 C.F.R. § 42.52(a)(2).
`Protective Order
`We noted that a protective order has not been entered in this
`proceeding. If either party seeks to have a protective order entered, we
`recommend the default protective order in the Office Trial Practice Guide.
`77 Fed. Reg. 48,756, Appendix B (Aug. 14, 2012). If the parties choose to
`deviate from the default protective order, we suggest scheduling a
`
`2 US 6,544,504 B1, issued Apr. 8, 2003.
`3
`
`
`
`
`
`IPR2014-01091
`Patent 8,664,231 B2
`
`conference with the Board for guidance. If either party seeks to file a
`motion to seal, and no protective order has been entered, a protective order
`must accompany the motion as an exhibit.
`Upon confirming that the parties did not have additional motions or
`matters to discuss, the initial conference call was adjourned.
`
`
`
`PETITIONER:
`
`Sanya Sukduang
`Thomas Jenkins
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`sanya.sukduang@finnegan.com
`thomas.jenkins@finnegan.com
`
`PATENT OWNER:
`
`James F. Haley, Jr.
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`james.haley@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`
`4
`
`
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