`571-272-7822
`
`
`
`
`
`
` Paper 74
` Entered: April 18, 2016
`
`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
`Expunging Exhibit 2277 Filed Without Authorization
`37 C.F.R. § 42.5(a)
`
`
`1 IPR2015-01871 has been joined with IPR2015-00903. This Order
`addresses issues common to both cases identified in the caption.
`
`
`
`
`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`
`On April 13, 2016, Patent Owner filed Updated Mandatory Notices
`
`(“Notices”) pursuant to 37 C.F.R. § 42.8(b)(2). Paper 79.2 One purpose of
`
`the Notices, according to Patent Owner, is to update the Board on the status
`
`of co-pending district court litigation related to the instant inter partes
`
`reviews. Paper 79, 2. Specifically, Patent Owner states in the Notices that a
`
`bench trial was held in a related district court action on April 4, 2016. Id.
`
`With the Notices, Patent Owner filed Exhibit 2277, which consists of
`
`a 1319-page trial transcript of the related district court proceeding. Id. (“the
`
`trial transcript is combined as filed as Exhibit 2277”).
`
`Petitioner sent an email to the Board on April 14, 2016, objecting to
`
`Patent Owner’s filing of Exhibit 2277. Ex. 3001. That email goes beyond
`
`identifying the issue at hand, by improperly including factual and legal
`
`argument—in essence, an unauthorized brief on the issue. Id. The parties
`
`are not authorized to submit email communications to the Board that
`
`contain factual or legal arguments. Email communications with the Board
`
`shall be limited to identifying the issue at hand, without argument, and
`
`requesting a conference call with the panel or other relief.
`
`Exhibit 2277 is a 1319-page transcript of the entire trial transcript
`
`from related district court litigation. Patent Owner directs us to no authority,
`
`in our rules or governing statute, which permits the filing of Exhibit 2277
`
`without Board preapproval. Id. at 2–3. Patent Owner filed Exhibit 2277
`
`without requesting and receiving Board authorization to do so.
`
`
`2 Substantially identical papers were filed in both proceedings. For
`convenience, we refer to the paper filed in IPR2014-00902. The exhibit as
`issue (Exhibit 2277) bears the same number in both proceedings.
`
`
`
`
`2
`
`
`
`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`
`Although our rules contemplate a motion for late submissions of
`
`supplemental information, “more than one month after the date the trial is
`
`instituted,” a party contemplating such a motion “must request authorization
`
`to file a motion to submit the information.” 37 C.F.R. § 42.123(b). The rule
`
`relating to updated mandatory notices is not an alternative vehicle by which
`
`a party may introduce supplemental information into the record. 37 C.F.R.
`
`§ 42.8.
`
`Accordingly, Exhibit 2277 shall be expunged from the record of these
`
`proceedings.
`
`
`
`It is
`
`ORDERED that Exhibit 2277 shall be expunged from the record in
`
`IPR2015-00902;
`
`FURTHER ORDERED that Exhibit 2277 shall be expunged from the
`
`record in IPR2015-00903; and
`
`FURTHER ORDERED that the parties shall refrain from submitting
`
`email communications to the Board that contain factual or legal arguments.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`PETITIONER:
`
`Jitendra Malik
`jitty.malik@alston.com
`
`Lance Soderstrom
`lance.soderstrom@alston.com
`
`James Abe
`james.abe@alston.com
`
`
`
`
`PATENT OWNER:
`
`Bryan Diner
`bryan.diner@finnegan.com
`
`Justin Hasford
`justin.hasford@finnegan.com
`
`Joshua Goldberg
`joshua.goldberg@finnegan.com
`
`
`
`
`
`4
`
`
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