Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: April 17, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`_________________________
`
`Case IPR2015-00902 (Patent 8,669,290 B2)
`Case IPR2015-00903 (Patent 8,129,431 B2)1
`________________________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5
`
`
`
`
`
`1 This order addresses issues common to both cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in both proceedings, provided
`that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
`
`
`571-272-7822
`
`Paper 9
`Entered: April 17, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`_________________________
`
`Case IPR2015-00902 (Patent 8,669,290 B2)
`Case IPR2015-00903 (Patent 8,129,431 B2)1
`________________________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5
`
`
`
`
`
`1 This order addresses issues common to both cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in both proceedings, provided
`that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
`
`
`
`IPR2014-00902 (Patent 8,669,290 B2)
`IPR2014-00903 (Patent 8,129,431 B2)
`
`
`A consolidated telephonic conference call was held on April 15, 2015,
`
`in these proceedings and two related cases filed by a different petitioner
`
`(Metrics). See IPR2014-01041 and IPR2014-01043 (filed July 22, 2014).
`
`The participants on the call were Judges Prats, Franklin, and Obermann, as
`
`well as counsel for Petitioner in the instant proceedings (InnoPharma
`
`Licensing), counsel for Metrics, and counsel for Patent Owner in all four
`
`proceedings (Senju).
`
`The purpose of the call was to discuss the respective positions of
`
`InnoPharma Licensing, Metrics, and Senju, regarding InnoPharma
`
`Licensing’s Motions for Joinder. See Paper 32; see also Appendix (copy of
`
`email transmission from Board to the parties).
`
`Counsel for Senju supplied a court reporter for the call and agreed to
`
`file a true copy of the transcript of the call, as an exhibit in all four
`
`proceedings. That exhibit shall serve as the record of the content of the call.
`
`
`
`
`
`
`
`Proposed Joint Scheduling Order
`
`InnoPharma Licensing is directed to file in the instant proceedings, by
`
`May 19, 2015, a Proposed Scheduling Order to govern the schedule in the
`
`event that we institute an inter partes review in IPR2015-00902 and
`
`IPR2015-00903, and grant InnoPharma Licensing’s Motions for Joinder.
`
`
`
`
`
`
`
`2 The Motions for Joinder bear the same paper number in both proceedings.
`
`2
`
`
`
`
`
`
`
`IPR2014-00902 (Patent 8,669,290 B2)
`IPR2014-00903 (Patent 8,129,431 B2)
`
`
`Patent Owner’s Preliminary Response in Related Cases
`
`
`
`As discussed during the conference call, Senju’s due date for filing its
`
`Patent Owner’s Preliminary Responses in the instant proceedings is changed
`
`from June 26, 2015, the date currently set, to May 26, 2015. The Board
`
`authorizes Senju to include in the Patent Owner’s Preliminary Responses its
`
`position regarding InnoPharma Licensing’s Proposed Scheduling Order.
`
`The deadline for filing of Senju’s Oppositions to the Motions for Joinder
`
`remains April 19, 2015. See 37 C.F.R. § 42.25(a)(1). InnoPharma
`
`Licensing’s time for filing a Reply to the Oppositions is governed by the rule
`
`relating to default filing times. See id. at § 42.25(a)(2).
`
`
`
`
`
`
`Metric’s Opposition to InnoPharma Licensing’s
`Motions for Joinder and Proposed Scheduling Order
`
`Concurrently herewith, by Orders entered in IPR2014-01041 and
`
`IPR2014-01043, Metrics is authorized to file in those related proceedings,
`
`by May 26, 2015, an Opposition to InnoPharma Licensing’s Motions for
`
`Joinder and Proposed Scheduling Order, not to exceed five (5) pages in
`
`length. No Reply to that Opposition is authorized at this time.
`
`
`
`
`
`
`
`It is
`
`ORDERED that InnoPharma Licensing is directed to file in the instant
`
`proceedings, by May 19, 2015, a Proposed Scheduling Order to govern the
`
`schedule in the event that InnoPharma Licensing’s Motions for Joinder are
`
`granted;
`
`
`
`
`
`3
`
`
`
`IPR2014-00902 (Patent 8,669,290 B2)
`IPR2014-00903 (Patent 8,129,431 B2)
`
`
`FURTHER ORDERED that Senju’s due date for filing Patent
`
`Owner’s Preliminary Responses in the instant proceedings is changed from
`
`June 26, 2015, the date currently set, to May 26, 2015; and
`
`FURTHER ORDERED that the Patent Owner’s Preliminary
`
`Responses may include Senju’s position regarding InnoPharma Licensing’s
`
`Proposed Scheduling Order.
`
`
`
`4
`
`
`
`
`
`
`
`
`
`IPR2014-00902 (Patent 8,669,290 B2)
`IPR2014-00903 (Patent 8,129,431 B2)
`
`
`
`
`PETITIONER:
`
`Jitendra Malik
`Alston & Bird LLP
`jitty.malik@alston.com
`
`PATENT OWNER:
`
`Bryan Diner
`M. Andrew Holtman
`Justin Hasford
`Jonathan R. Stroud
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`bryan.diner@finnegan.com
`andy.holtman@finnegan.com
`justin.hasford@finnegan.com
`jonathan.stroud@finnegan.com
`
`
`
`5
`
`
`
`
`
`
`
`IPR2014-00902 (Patent 8,669,290 B2)
`IPR2014-00903 (Patent 8,129,431 B2)
`
`
`APPENDIX
`
`
`To Counsel in IPR2015-01041, IPR2015-01043, IPR2015-00902, and IPR2015-00903:
`
`The Board requests attendance by counsel for all parties at a conference call on Wednesday,
`April 15, 2015, at 11 am. Dial-in information follows. Counsel shall be prepared to discuss the
`following matters: (1) The status of the meet-and-confer that was planned for March 27th, 2015
`(as identified in the below email from Mr. Jonathan Stroud), and in particular, the parties’
`respective positions as to the practicality and appropriateness of joinder; (2) the substance and
`degree of any differences between the arguments and evidence advanced in the later-filed
`petitions (IPR2015-00902, -903) and the arguments and evidence advanced in the earlier-filed
`petitions (IPR2015-01041, -043); (3) regarding IPR2015-00902 and -903, any objections to
`changing the date for filing the Patent Owner’s Preliminary Response from June 26, 2015, the
`date currently set, to April 30, 2015, and the specific basis for any such objections.
`
`The Dial-in information is below:
`
`[omitted]
`
`
`6
`
`
`
`
`
`
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