`571-272-7822
`
`
`
`
`Paper 14
`Entered: September 17, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PRAXAIR DISTRIBUTION, INC.,
`Petitioner,
`v.
`INO THERAPEUTICS LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00529
`Patent 8,846,112 B2
`_______________
`
`Before LORA M. GREEN, TINA E. HULSE, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`A conference call was held on August 21, 2015, between Judges
`
`Green, Hulse, and Pollock, and respective counsel for the parties (Dominick
`
`Conde and Raymond Mandra for Patent Owner and Sanjay Murthy for
`
`Petitioner). Patent Owner, via an August 20, 2015, email communication to
`
`the Board, requested an initial conference call to discuss “scheduling and
`
`procedural posture of the IPR.”
`
`Request for Guidance
`
`
`
`During the call, counsel for Patent Owner, INO Therapeutics LLC,
`
`requested guidance regarding how it should present its arguments in its
`
`
`
`
`
`Case IPR2015-00529
`Patent 8,846,112 B2
`
`
`
`Patent Owner Response in light of our decision not to institute inter partes
`
`review in related cases IPR2015-00522, IPR2015-00524, IPR2015-00525,
`
`and IPR2015-00526. Specifically, Patent Owner wanted to know whether,
`
`if it were to prevail in its claim construction arguments, Patent Owner would
`
`need to invest time and effort in arguing the patentability of the presently
`
`challenged claims, or any amended claims.1
`
`
`
`Counsel for Petitioner opposed the request for guidance on the
`
`grounds that Patent Owner was requesting an advisory opinion. We agree
`
`with Petitioner.
`
`
`
`At this stage of the proceeding, we have not rendered a final decision
`
`as to the construction of any claim term or the patentability of any claim.
`
`We, therefore, cannot provide any guidance as to how Patent Owner should
`
`prepare for, or structure, its defense. Such strategic decisions are solely up
`
`to Patent Owner based on the arguments and issues presented during trial.
`
`Scheduling
`
`
`
`Counsel for both parties reported conflicts with the March 24, 2016,
`
`date for oral argument. In a September 2, 2015, email from Patent Owner’s
`
`counsel (Ex. 3000), the parties have proposed alternative dates for Due
`
`Dates 1–7, including an alternative date of March 29, 2016, for the oral
`
`hearing (i.e., Due Date 7). Having no disagreement with the parties’
`
`proposal, the Board adopts the proposed dates for Due Dates 1–7.
`
`
`1 Although counsel for Patent Owner indicated that INO Therapeutics would
`“likely” file a motion to amend, no specifics were discussed and the
`requirement for conferring with the Board before filing a motion to amend
`has not been satisfied. See 37 C.F.R. § 42.121(a).
`
`2
`
`
`
`Case IPR2015-00529
`Patent 8,846,112 B2
`
`
`
`
`
`
`ORDER
`
`For the reasons given, it is
`
`
`
`ORDERED that Patent Owner’s request for an advisory opinion is
`
`denied;
`
`
`
`FURTHER ORDERED that Due Dates 1–7 are rescheduled as shown
`
`in the Due Date Appendix.
`
`
`
`
`
`3
`
`
`
`Case IPR2015-00529
`Patent 8,846,112 B2
`
`
`DUE DATE APPENDIX
`
`
`
`DUE DATE 1 ....................................................................... October 29, 2015
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................................... January 8, 2016
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ February 8, 2016
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ...................................................................... February 22, 2016
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ............................................................................ March 7, 2016
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 .......................................................................... March 14, 2016
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .......................................................................... March 29, 2016
`
`Oral argument (if requested)
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2015-00529
`Patent 8,846,112 B2
`
`
`
`
`PETITIONER:
`
`Sanjay K. Murthy
`sanjay.murthy@klgates.com
`
`Sara Kerrane
`Sara.kerrane@klgates.com
`
`Margaux Nair
`margaux.nair@klgates.com
`
`Maria Doukas
`maria.doukas@klgates.com
`
`
`PATENT OWNER:
`
`Dominick A. Conde
`dconde@fchs.com
`
`Raymond R. Mandra
`rmandra@fchs.com
`
`
`
`5
`
`
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