`Trials@uspto.gov
`Paper 42 (IPR2015-00644)
`Tel: 571-272-7822
`Paper 36 (IPR2015-00830)
`
` Entered: January 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS INC. and AMNEAL
`PHARMACEUTICALS LLC,
`Petitioners,
`
`v.
`
`YEDA RESEARCH & DEVELOPMENT CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-00643 (8,232,250 B2)
`Case IPR2015-00644 (8,399,413 B2)
`Case IPR2015-00830 (8,969,302 B2)1
`____________
`
`
`Before SHERIDAN K. SNEDDEN and TINA E. HULSE,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 Case IPR2015-01976 has been joined with Case IPR2015-00643; Case
`IPR2015-01980 has been joined with Case IPR2015-00644; and Case
`IPR2015-01981 has been joined with Case IPR2015-00830.
`
`
`
`IPR2015-00643 (8,232,250 B2)
`IPR2015-00644 (8,399,413 B2)
`IPR2015-00830 (8,969,302 B2)
`
`
`A conference call was held on January 21, 2016, among counsel for
`Petitioners Mylan Pharmaceuticals Inc. and Amneal Pharmaceuticals LLC
`(collectively, “Petitioners”), counsel for Patent Owner Yeda Research and
`Development Co. Ltd. (“Patent Owner”), and Judges Snedden and Hulse. A
`court reporter was also present on the call, and Petitioner Mylan agreed to
`file a transcript as an exhibit in due course.2
`Patent Owner initiated the conference call to request authorization to
`file a motion to submit supplemental information under 37 C.F.R.
`§ 42.123(b). Specifically, Patent Owner seeks to file eight or nine references
`cited in the Declaration of Henry G. Grabowski, Ph.D. (Ex. 2133) and a
`corrected version of Exhibit 2133 that refers to the supplemental information
`by exhibit number. Patent Owner asserts that the supplemental information
`was inadvertently omitted due to a filing error. Petitioner opposes Patent
`Owner’s request, arguing that Patent Owner cannot show that it reasonably
`could not have obtained the supplemental information earlier, as required by
`the rule.
`After considering the parties’ arguments, we authorized Patent Owner
`to file a five-page motion to submit supplemental information by Friday,
`January 22. Petitioners are authorized to file a joint five-page opposition by
`Wednesday, January 27. No reply is authorized at this time.
`
`
`2 This order summarizes the statements made during the conference call. A
`more detailed record may be found in the transcript.
`
`2
`
`
`
`IPR2015-00643 (8,232,250 B2)
`IPR2015-00644 (8,399,413 B2)
`IPR2015-00830 (8,969,302 B2)
`
`
`Accordingly, it is
`ORDERED that Patent Owner’s request for authorization to file a
`motion to submit supplemental information under 37 C.F.R. § 42.123(b) is
`granted;
`FURTHER ORDERED that Patent Owner’s motion shall be no more
`than 5 pages and filed no later than January 22, 2016;
`FURTHER ORDERED that Petitioners are authorized to file a joint
`opposition to Patent Owner’s motion, which shall be no more than 5 pages
`and filed no later than January 27, 2016; and
`FURTHER ORDERED that no reply is authorized at this time.
`
`
`
`
`
`
`PETITIONERS:
`
`Jeffrey W. Guise
`jguise@wsgr.com
`
`Richard Torczon
`rtorczon@wsgr.com
`
`Brandon M. White
`bmwhite@perkinscoie.com
`
`Shannon Bloodworth
`sbloodworth@perkinscoie.com
`
`David Anstaett
`danstaett@perkinscoie.com
`
`
`
`3
`
`
`
`IPR2015-00643 (8,232,250 B2)
`IPR2015-00644 (8,399,413 B2)
`IPR2015-00830 (8,969,302 B2)
`
`PATENT OWNER:
`
`Elizabeth J. Holland
`eholland@goodwinprocter.com
`
`William G. James
`wjames@goodwinprocter.com
`
`Eleanor M. Yost
`eyost@goodwinprocter.com
`
`4
`
`
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