Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: August 14, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`LUPIN LIMITED,
`Petitioner,
`
`v.
`
`JANSSEN SCIENCES IRELAND UC,
`Patent Owner.
`____________
`
`Case IPR2015-01030
`Patent 8,518,987 B2
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, SHERIDAN K. SNEDDEN,
`and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: August 14, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`LUPIN LIMITED,
`Petitioner,
`
`v.
`
`JANSSEN SCIENCES IRELAND UC,
`Patent Owner.
`____________
`
`Case IPR2015-01030
`Patent 8,518,987 B2
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, SHERIDAN K. SNEDDEN,
`and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2015-01030
`Patent 8,518,987 B2
`
`I.
`
`INTRODUCTION
`Petitioner Lupin Limited (“Petitioner”) filed a Petition requesting
`inter partes review of claims 1–19 of U.S. Patent No. 8,518,987 B2 (Ex.
`1001). Paper 1 (“Pet.”). The Petition identifies Lupin Limited and Lupin
`Pharmaceuticals, Inc. as the only real parties-in-interest. Pet. 5. Patent
`Owner Janssen Sciences Ireland UC (“Patent Owner”) filed a Preliminary
`Response (Paper 9, “Prelim. Resp.”) asserting, inter alia, that two unnamed
`entities—Lupin Inc. and Lupin Atlantis Holdings SA—should have been
`identified as real parties-in-interest. Prelim. Resp. 3–7. Patent Owner
`asserts, in particular, that shared corporate leadership and intertwined
`business relationships between Petitioner and those unnamed entities, as
`well as the entities being “blurred in presentations to the public,” support a
`finding that the unnamed parties are real parties-in-interest. Id. at 5–6.
`Patent Owner requests dismissal of the Petition as untimely under 35 U.S.C.
`§ 315(b). Id. at 7.
`A few weeks after Patent Owner filed its Preliminary Response to the
`Petition, counsel for Petitioner contacted the Board to request authorization
`to file “a brief response, together with supporting declaration testimony” to
`address the real-party-in-interest issue raised in Patent Owner’s Preliminary
`Responses. In particular, Petitioner requested authorization to file a
`response of no more than ten pages, as well as supporting declaration
`testimony from no more than two declarants, directed solely to the real
`parties-in-interest issue. As part of the request, Petitioner proposed that
`Patent Owner may file a reply not more than five pages to Petitioner’s
`response.
`
`
`
`2
`
`
`
`IPR2015-01030
`Patent 8,518,987 B2
`
`Thereafter, on August 13, 2015, Judges Bonilla, Snedden, and Paulraj
`conducted a conference call with respective counsel for Petitioner and Patent
`Owner in relation to Petitioner’s request. During the call, Patent Owner
`indicated that it did not oppose Petitioner’s request for additional briefing,
`but wanted an opportunity to depose any declarants relied upon in
`Petitioner’s response.
`
`II. DISCUSSION
`Under 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 Petitioner has identified all real parties-in-interest is a threshold
`issue for our consideration.
`As discussed during the conference call, we have determined that
`limited additional briefing and evidence, directed solely to the real-party-in-
`interest issue raised in Patent Owner’s Preliminary Responses, would be
`beneficial. In the meantime, we point the parties to a recent Decision in
`Case IPR2015-00546, slip op. at 10–19 (PTAB July 28, 2015) (Paper 25).
`
`III. ORDER
`Accordingly, it is
`ORDERED that Petitioner may file no more than two (2) declarations
`of no more than five (5) pages each (excluding cover and service pages),
`directed solely to the real party-in-interest issue raised in Patent Owner’s
`Preliminary Response. The two declarations shall be filed no later than
`August 28, 2015;
`
`
`
`3
`
`
`
`IPR2015-01030
`Patent 8,518,987 B2
`
`FURTHER ORDERED that Petitioner shall file a response of no more
`than ten (10) pages, directed solely to the real party-in-interest issue raised in
`Patent Owner’s Preliminary Response. The response shall be filed no later
`than August 28, 2015;
`FURTHER ORDERED that Petitioner 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’s declarants for not more than three (3) hours of deposition time
`each;
`
`FURTHER ORDERED that Patent Owner shall file a reply of no
`more than five (5) pages to Petitioner’s response no later than September 11,
`2015; and
`FURTHER ORDERED that Petitioner shall not be permitted to file
`any further response to Patent Owner’s reply.
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2015-01030
`Patent 8,518,987 B2
`
`PETITIONER:
`DEANNE MAZZOCHI
`TARA RAGHAVAN
`dmazzochi@rmmslegal.com
`traghavan@rmmslegal.com
`
`
`
`PATENT OWNER:
`DIANNE ELDERKIN
`RUBEN MUNOZ
`IRENA ROYZMAN
`JANS-LUPIN@akingump.com
`LupinIPR@pbwt.com
`
`
`
`
`
`
`5
`
`
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