`571-272-7822
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`Paper: 11
`Date: May 12, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AMNEAL PHARMACEUTICALS LLC AND PAR PHARMACEUTICAL, INC.,
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Cases: IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)1
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`
`MURPHY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Decision addresses issues that are the same in the identified cases.
`We exercise our discretion to issue one Order to be filed in each case.
`The parties are not authorized to use this style heading.
`
`
`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`I.
`
`INTRODUCTION
`
`Petitioner Par Pharmaceutical, Inc. (“Par Inc.”) filed Petitions requesting
`inter partes review in each of the above-identified proceedings, and Petitioner
`Amneal Pharmaceuticals LLC (“Amneal”) filed Petitions requesting inter partes
`review in four of the above-identified proceedings, IPR2015-00545, IPR2015-
`00546, IPR2015-00547, and IPR2015-00554. Paper 3 (“Pet.”).2 The Petitions in
`IPR2015-00548 (Paper 1, 58) and IPR2015-00551 (Paper 1, 58) identify Par Inc. as
`the sole real-party-in-interest, and the Petitions in IPR2015-00545, IPR2015-
`00546, IPR2015,00547, and IPR2015-00554 identify Amneal and Par Inc. as the
`real-parties-in-interest. Pet. 59.
`
`Patent Owner Jazz Pharmaceuticals, Inc. (“Patent Owner”) filed a
`Preliminary Response (“Prelim. Resp.”) in each proceeding asserting that parent
`companies of Par Inc. – Par Pharmaceutical Companies, Inc. (“Par Co.”), Par
`Pharmaceutical Holdings, Inc. (“Par Holdings”),3 Sky Growth Intermediate
`Holdings I Corporation (“Sky I”), and Sky Growth Intermediate Holdings II
`Corporation (“Sky II”) – should have been identified as real-parties-in-interest in
`each of the above-identified proceedings. Prelim. Resp. 9–23. Patent Owner
`asserts, in particular, that “Par Inc.’s parent companies exercise control over Par
`Inc.’s business, including control over th[ese] IPR proceeding[s].” Id. at 9–10, 19–
`
`
`2 Citations are to IPR2015-00545 as representative unless otherwise indicated.
`3 Par Holdings was formed in 2012 as Sky Growth Holdings Corporation, but
`changed its name to Par Holdings on March 4, 2015. Prelim. Resp. 9 n.3 (citing
`Ex. 2015, 13).
`
`
`
`2
`
`
`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`21. Patent Owner requests dismissal of the Petitions as untimely pursuant to 35
`U.S.C. § 315(b). Id. at 10, 22–23.
`Approximately one week after Patent Owner filed its Preliminary Responses
`to the Petitions, counsel for Petitioners contacted the Board to request
`authorization to file a “short reply brief and declaration testimony from corporate
`officers” to address the real-party-in-interest issues raised in Patent Owner’s
`Preliminary Responses. Within an hour, counsel for Patent Owner advised the
`Board that it did not oppose the request of Par Inc. and Amneal to contest the real-
`party-in-interest issue, but asked that Par Inc. and Amneal “not be permitted to
`submit testimonial evidence with their oppositions.” In the event the Board was
`inclined to permit testimonial evidence, then Patent Owner requested the
`opportunity “to depose each of Petitioners’ declarants” and to file a reply to
`Petitioners’ arguments.
`
`II. DISCUSSION
`
`Pursuant to 35 U.S.C. § 312(a)(2), we may consider a petition for inter
`partes review “only if . . . the petition identifies all real parties in interest.” Our
`rules require Petitioners and Patent Owners to “[i]dentify each real party-in-interest
`for the party.” 37 C.F.R. § 42.8. Thus, the question of whether Petitioners have
`identified all real parties-in-interest is a threshold issue for our consideration.
`Having considered each party’s position, we have determined that limited
`additional briefing and evidence, directed solely to the real-party-in-interest issues
`raised by Patent Owner’s Preliminary Responses, would be beneficial to the Board.
`We are particularly interested in evidence relevant to Patent Owner’s contention
`3
`
`
`
`
`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`that “[a]t least Par Holdings and Par Co. are exercising control over th[ese] IPR”
`proceedings. Prelim. Resp. 19–21.
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner Par Inc. may file not more than two (2)
`declarations of not more than five (5) pages each (excluding cover and service
`pages), directed solely to the real-party-in-interest issues raised by Patent Owner’s
`Preliminary Responses. The two declarations shall be filed in each of the
`above-identified cases no later than May 26, 2015;
`FURTHER ORDERED that Petitioners Par Inc. and Amneal shall file a
`single, identical response of not more than ten (10) pages, directed solely to the
`real-party-in-interest issues raised by Patent Owner’s Preliminary Responses. The
`single, identical response shall be filed in each of the above-identified cases,
`adjusting only the names of Petitioners in the case captions and citation form, as
`necessary, not later than May 26, 2015;
`FURTHER ORDERED that Petitioner Par Inc. shall make each of its
`declarants available for deposition by counsel for Patent Owner, limited solely to
`the factual issues raised in each declarant’s declaration, at a time and location
`mutually agreeable to the parties and witnesses in order to permit the parties to
`comply with the filing date requirements of this Order;
`FURTHER ORDERED that counsel for Patent Owner may depose Petitioner
`Par Inc.’s declarants for not more than three (3) hours of deposition time each;
`
`
`
`4
`
`
`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`FURTHER ORDERED that Patent Owner shall file a single, identical reply
`of not more than five (5) pages to Petitioners’ response in each of the above-
`identified cases, adjusting only the names of Petitioners in the case captions and
`citation form, as necessary, not later than June 9, 2015; and
`FURTHER ORDERED that Petitioner shall not be permitted to file any
`further response to Patent Owner’s reply.
`
`
`PETITIONER:
`Dennies Varughese
`dvarughe-PTAB@skgf.com
`
`
`Deborah Sterling
`dsterlin-PTAB@skgf.com
`
`
`PATENT OWNER:
`Francis Cerrito
`nickcerrito@quinnemanuel.com
`
`John Biernacki
`jvbiernacki@jonesday.com
`
`
`
`
`5
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