`571.272.7822
`
`
`
`
`
`
`
` Paper No. 64
`
` Entered: June 24, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COALITION FOR AFFORDABLE DRUGS VI, LLC,
`Petitioner,
`
`v.
`
`CELGENE CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2015-01092 (Patent 6,045,501)
`Case IPR2015-01096 (Patent 6,315,720 B1)
`Case IPR2015-01102 (Patent 6,315,720 B1)
`Case IPR2015-01103 (Patent 6,315,720 B1)1
`____________
`
`
`
`
`
`
`Before MICHAEL P. TIERNEY, GRACE KARAFFA OBERMANN, and
`TINA E. HULSE, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`
`ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order addresses issues common to all 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.
`
`
`
`
`
`Case IPR2015-01092 (Patent 6,045,501)
`Case IPR2015-01096 (Patent 6,315,720 B1)
`Case IPR2015-01102 (Patent 6,315,720 B1)
`Case IPR2015-01103 (Patent 6,315,720 B1)
`
`
`A conference call was held on June 13, 2016 between respective
`counsel for the parties and Judges Tierney, Obermann and Hulse. The
`purpose of the call was to discuss Patent Owner’s allegation that Petitioner’s
`replies exceed the scope of a proper reply under 37 C.F.R. § 42.23(b) and
`Patent Owner’s allegation that Petitioner’s replies exceed the word limit set
`forth in 37 C.F.R. § 42.24(c).
`
`Word Count
`Patent Owner alleged that Petitioner’s replies in IPR2015-01092, -
`1102, and -1103 exceeded the 5,600 word limit provided by rule.
`Specifically, Patent Owner alleged that Petitioner exceeded the word limit in
`amounts ranging from 62 to 93 words. Petitioner noted that the alleged
`discrepancy in word count arose from the use of block quotes appearing in
`images that were not counted by its word processor.
`When certifying word count, a party need not go beyond the routine
`word count supplied by their word processing program. However, parties
`should be careful not to abuse the process. Excessive words in figures,
`drawings or images, deleting spacing between words, or using excessive
`acronyms or abbreviations for word phrases, in order to circumvent the rules
`on word count, may lead to dismissal of a party’s brief. See, e.g., Pi-Net
`Int’l, Inc. v. JPMorgan Chase & Co., 600 Fed. App’x. 774 (Fed. Cir. 2015)
`(per curiam). The alleged discrepancy in word count is noted but, based on
`the record presented, no action will be taken as the noted discrepancies are
`not excessive and do not appear to be an attempt to circumvent the rules on
`word count.
`
`2
`
`
`
`Case IPR2015-01092 (Patent 6,045,501)
`Case IPR2015-01096 (Patent 6,315,720 B1)
`Case IPR2015-01102 (Patent 6,315,720 B1)
`Case IPR2015-01103 (Patent 6,315,720 B1)
`
`
`
`Sur-Reply
`Patent Owner alleges that Petitioner improperly raised new issues in
`its replies and requests that the Board strike the replies. Specifically, Patent
`Owner alleges that Petitioner’s replies rely upon three (3) references that
`were not previously relied upon. Patent Owner requests authorization to
`strike the replies and/or antedate the additional references.
`Petitioner disagrees with Patent Owner’s characterization of
`Petitioner’s replies, and contends that the additional references are not new
`exhibits, but were already of record.
`Based upon the facts presented the Board authorized Patent Owner to
`file a sur-reply in each case limited to addressing: 1) the alleged new issues
`raised in Petitioner’s reply; and 2) antedating the references cited in
`Petitioner’s reply. Petitioner is authorized to file an opposition in each case
`to Patent Owner’s sur-reply.
`The Board and the parties agreed that Patent Owner’s sur-replies
`would be due June 29, 2016 and Petitioner’s oppositions due July 11, 2016.
`To accommodate the additional briefing, the Board exercised its authority
`and set Due Date 6 to July 15, 2016.
`
`
`3
`
`
`
`
`
`
`
`
`
`Case IPR2015-01092 (Patent 6,045,501)
`Case IPR2015-01096 (Patent 6,315,720 B1)
`Case IPR2015-01102 (Patent 6,315,720 B1)
`Case IPR2015-01103 (Patent 6,315,720 B1)
`
`
`PETITIONER:
`
`Sarah E. Spires
`Skiermont Derby LLP
`1092CFAD6@skiermontderby.com
`
`
`Parvathi Kota
`Skiermont Derby LLP
`1092CFAD6@skiermontderby.com
`
`
`
`PATENT OWNER:
`
`F. Dominic Cerrito
`Quinn Emanuel Urquhart & Sullivan, LLP
`nickcerrito@quinnemanuel.com
`
`Frank C. Calvosa
`Quinn Emanuel Urquhart & Sullivan, LLP
`frankcalvosa@quinnemanuel.com
`
`Anthony M. Insogna
`Jones Day
`aminsogna@jonesday.com
`
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
