`Tel: 571-272-7822
`
`
`Paper 33
`Entered: December 22, 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
`
`
`
`On December 22, 2015, the panel held a conference call with respective
`
`counsel for Petitioner and Patent Owner to discuss Petitioner’s request for
`
`authorization to file a Motion for Additional Discovery pursuant to 37 C.F.R.
`
`§ 42.51(b)(2) to depose Drs. James S. Baldassarre, Douglas A. Greene, and David
`
`L. Wessel regarding their declarations submitted during the prosecution of U.S.
`
`Patent No. 8,846,112 B2 (“the ’112 patent”), at issue in this proceeding. For the
`
`reasons set forth below, the request is denied.
`
`
`
`IPR2015-00529
`Patent 8,846,112 B2
`
`Petitioner, represented by Mr. Benjamin Weed, argued that short depositions
`
`of Drs. Baldassarre, Greene, and Wessel are warranted because Patent Owner
`
`substantively relies on their declarations submitted during prosecution of the ’112
`
`patent. Opposing the request, Patent Owner’s representative, Mr. Bob Steinberg,
`
`argued that these declarations were not prepared for the instant proceeding, but are
`
`part of the prosecution history of record in this case. Alluding to the burden and
`
`timeliness of Petitioner’s request, Mr. Steinberg further noted that none of the
`
`declarants is presently employed by Patent Owner, and that any such depositions
`
`would need to be completed prior to the January 15, 2016 due date of Petitioner’s
`
`Reply brief.
`
`Where the parties do not agree to additional discovery between themselves,
`
`the Board may grant additional discovery upon a showing that such discovery “is
`
`in the interests of justice.” 37 C.F.R. § 42.51(b) (2). Having heard the parties’ oral
`
`arguments, we are not persuaded that Petitioner can make this showing.
`
`Mr. Steinberg emphasized that the declarations at issue are part of the
`
`prosecution history of record in this case. Neverthess, depending on the context in
`
`which Patent Owner relies on those declarations, the panel may accord the
`
`testimony little or no weight as Petitioner has not been offered a fair opportunity to
`
`challenge the testimony. See Mexichem Amanco Holdings v. Honeywell Int’l, Case
`
`IPR2013-00576, slip op. at 3 (PTAB : September 5, 2014 ) (Paper 36). Thus,
`
`while we deny Petitioner’s Motion for Additional Discovery, Patent Owner may
`
`wish to reconsider its position regarding the cross-examination of Drs. Baldassarre,
`
`Greene, and Wessel.
`
`It is, therefore,
`
` 2
`
`
`
`
`
`
`
`IPR2015-00529
`Patent 8,846,112 B2
`
`ORDERED that Petitioner’s Motion for Additional Discovery pursuant to 37
`
`C.F.R. § 42.51(b)(2) is denied.
`
`
`
`
`
` 3
`
`
`
`
`
`
`
`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:
`
`Robert Steinberg
`bob.steinberg@lw.com
`
`Daniel G. Brown
`daniel.brown@lw.com
`
` 4
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`
`
`
`
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