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Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 15
`Entered: March 5, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GALDERMA S.A. &
`Q-MED AB,
`Petitioners,
`
`v.
`
`ALLERGAN INDUSTRIE, SAS, ALLERGAN USA INC., ALLERGAN SALES
`LLC, ALLERGAN HOLDINGS FRANCE SAS, ALLERGAN HOLDINGS
`LIMITED, ALLERGAN HOLDINGS INC., ALLERGAN PUERTO RICO
`HOLDINGS INC., and ALLERGEN INC.,
`Patent Owners.
`_______________
`
`Case IPR2014-01417
`Patent 8,450,475
`_______________
`
`
`Before LORA M. GREEN, SHERIDAN K. SNEDDEN, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

`

`IPR2014-01417
`Patent 8,450,475
`
`
`I. INTRODUCTION
`Petitioners, Galderma S.A. and Q-Med AB (collectively, “Petitioners”), filed
`a Petition (Paper 4, “Pet.”) to institute inter partes review of claims 1–9 and 18–37
`of U.S. Pat. No. 8,450,475 B2 (Ex. 1001, “the ’475 patent”) pursuant to 35 U.S.C.
`§§ 311–319.1. Patent Owners Allergan Industrie, SAS, Allergan USA Inc.,
`Allergan Sales LLC, Allergan Holdings France SAS, Allergan Holdings Limited,
`Allergan Holdings Inc., Allergan Puerto Rico Holdings Inc., and Allergen Inc.
`(“Allergan” or “Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim.
`Resp.”), arguing that the Petition does not identify all real parties-in-interest. See
`35 U.S.C. § 312(a)(2) (A petition filed may be considered only if, among other
`things, it identifies all real-parties-in-interest.). Petitioners filed a Reply to Patent
`Owner’s Preliminary Response addressing the real party-in-interest issues raised in
`the Preliminary Response. (Paper 12, “Reply”). Patent Owner subsequently filed
`a Sur-Reply in further support of the Preliminary Response (Paper 14, “Sur-
`Reply”). The Board authorized the filing of the Reply and Sur-Reply by email
`correspondence dated January 26, 2015 and February 5, 2015, respectively. We
`have jurisdiction under 35 U.S.C. § 314; 37 C.F.R. § 42.4(a).
`Upon consideration of the arguments and evidence presented by Petitioners
`and Patent Owner, we determine that the Petition failed to identify “all the real
`parties-in-interest,” as required by 35 U.S.C. § 312(a). Accordingly, the Petition is
`denied.
`
`II. BACKGROUND
`
`A. Related Proceedings
`In addition to the instant Petition directed to the ’475 patent, Galderma filed
`petition, IPR2014-01422, for inter partes review of claims 1–11, 22, 24–38 and
`
` 2
`
`
`
`
`
`

`

`IPR2014-01417
`Patent 8,450,475
`
`40–41 of U.S. Pat. No. 8,357,795 B2 (“the ’795 patent”). The ’475 and ’795
`patents, issued May 28, 2013, and January 22, 2013, respectively. The two patents
`share the same disclosure and filing dates, including claims to benefit of priority
`under 35 U.S.C. § 119(e).
`According to the parties, the ’475 and ’795 patents are also involved in the
`co-pending district court litigation, Allergan USA, Inc. v. Medicis Aesthetics, Inc.,
`8:13-cv-01436-AG-JPR (C.D. Cal.). “Petitioner, as the supplier of the allegedly
`infringing products, has assumed the defense in that action.” Pet. 1. Allergan
`asserts, and Petitioner does not deny, that it served its complaint alleging
`infringement of the ’475 patent on all defendants by October 9, 2013. See Prelim.
`Resp. 12.
`
`B. Real Parties-in-interest
`Petitioners identify Galderma S.A. and Q-Med AB as the real parties-in-
`interest pursuant to 37 C.F.R. § 42.8(b)(1). Pet. 1. Petitions do not name any other
`entity as a real party-in-interest.
`
`III. ANALYSIS
`The relevant facts and arguments with respect to the real party-in-interest
`analysis are set forth in IPR2014-01422. We adopt here the analysis and
`conclusions of our concurrent Decision in that matter.
`In sum, we find that Petitioners fails to comply with the statutory
`requirement to identify all real parties-in-interest. At a minimum, Petitioners’
`failure to identify Nestlé Skin Health S.A. violates the statutory and regulatory
`requirements that the petition identify all real parties-in-interest. 35 U.S.C.
`§ 312(a); 47 C.F.R. § 42.8(b)(1).
`Having determined that the Petition does not identify each real party-in-
`
` 3
`
`
`
`
`
`

`

`IPR2014-01417
`Patent 8,450,475
`
`interest, we determine that the Petition is incomplete. 37 C.F.R. § 42.106(b)
`provides that “[w]here a party files an incomplete petition, no filing date will be
`accorded, and the Office will dismiss the petition if the deficiency in the petition is
`not corrected within one month from the notice of an incomplete petition.”
`In this instance, however, curing the omission of at least Nestlé Skin Health
`S.A.as a real party-in-interest would be futile, as it is uncontroverted that a
`complaint alleging infringement of the ’475 patent was served no later than
`October 9, 2013. Thus, even if corrected, the earliest filing date that could be
`accorded to the Petition would not fall within the one-year period specified by
`35 U.S.C. § 315(b), and would be denied as untimely.
`
`IV.
` ORDER
`After due consideration of the record before us, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
` 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2014-01417
`Patent 8,450,475
`
`PETITIONERS:
`
`Weihong Hsing
`Stephan Murray
`William Schwarze
`PANITCH SCHWARZE BELISARIO & NADEL LLP
`whsing@panitchlaw.com
`smurray@panitchlaw.com
`wschwarze@panitchlaw.com
`
`
`PATENT OWNERS:
`
`Dorothy P. Whelan
`J. Patrick Finn III
`Michael Kane
`FISH & RICHARDSON P.C.
`whelan@fr.com
`dpw@fr.com
`IPR13351-0031IP1@fr.com
`
` 5
`
`
`
`
`
`

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