Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 40
`
` Entered: June 17, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)1
`____________
`
`
`
`Before TONI R. SCHEINER, DEBORAH KATZ, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`SCHEINER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in both cases. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`

`

`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)
`
`With respect to the “first” matter discussed in the attached email from
`
`Patent Owner, Patent Owner is authorized to file, within five (5) business
`days of the date of this Order, corrected Patent Owner Responses in
`IPR2015-01117 and IPR2015-01127, for the sole purpose of correcting the
`citations to Exhibit 2012 in each case.
`Petitioner is authorized to file, within five (5) business days of the
`date of Patent Owner’s corrected Patent Owner Responses, a reply, not to
`exceed three (3) pages, for the sole purpose of responding to Patent Owner’s
`arguments based on the correct citations to Exhibit 2012. Arguments not
`directed to Patent Owner’s corrected citations will not be considered. No
`other briefing on Petitioner’s part is authorized. No other briefing on Patent
`Owner’s part is authorized.
`With respect to the “second” matter discussed in Patent Owner’s
`email, Patent Owner is not authorized to file any other papers. The Board
`will determine what arguments, if any, are improper.
`
`It is
`
`ORDERED that Patent Owner is authorized to file, within five (5)
`
`business days of the date of this Order, corrected Patent Owner Responses in
`IPR2015-01117 and IPR2015-01127, for the sole purpose of correcting
`citations to Exhibit 2012;
`
`FURTHER ORDERED that Petitioner is authorized to file, within five
`(5) days of the date of Patent Owner’s corrected Patent Owner Responses, a
`reply, not to exceed three (3) pages, for the sole purpose of responding to
`Patent Owner’s arguments based on the correct citations to Exhibit 2012;
`and
`
`
`FURTHER ORDERED that no other briefing is authorized.
`2
`
`
`
`
`
`

`

`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)
`
`For PETITIONER:
`David H. Silverstein
`Aziz Burgy
`AXINN, VELTROP & HARKRIDER LLP
`dsilverstein@axinn.com
`aburgy@axinn.com
`
`For PATENT OWNER:
`Robert Green
`Emer L. Simic
`Jessica Tyrus
`GREEN, GRIFFITH & BORG-BREEN, LLP
`rgreen@greengriffith.com
`esimic@greengriffith.com
`jtyrus@greengriffith.com
`Lauren Stevens
`HORIZON PHARMA USA, INC.
`lstevens@horizonpharma.com
`Dennis Bennett
`GLOBAL PATENT GROUP, LLC
`dennisbennett@globalpatentgroup.com
`Matthew C. Phillips
`RENAISSANCE IP LAW GROUP LLP
`matthew.phillips@renaissanceiplaw.com
`
`
`
`
`
`
`
`
`3
`
`

`

`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)
`
`
`ATTACHMENT
`
`From: Emer Simic [mailto:esimic@greengriffith.com]
`Sent: Wednesday, June 08, 2016 3:02 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Robert Green <rgreen@greengriffith.com>; Dennis Bennett
`<dennisbennett@globalpatentgroup.com>; Lauren Stevens <LStevens@horizonpharma.com>;
`Matt Phillips <matthew.phillips@renaissanceiplaw.com>; Burgy, Aziz <aburgy@axinn.com>;
`Silverstein, David H. <DSilverstein@axinn.com>; Holland, Elizabeth J.
`<EHolland@goodwinprocter.com>; Hardman, Cynthia <CHardman@goodwinprocter.com>;
`Jessica Tyrus <jtyrus@greengriffith.com>
`Subject: RE: IPR2015-01117 (joined with IPR2016-00283) and IPR2015-01127 (joined with
`IPR2016-00284)
`
`To the Board:
`
`I write on behalf of Patent Owner to respectfully request a teleconference with the Board to
`address two separate matters.
`
`First, it has come to our attention upon receipt of Petitioner’s Reply that the Patent Owner
`Responses submitted in IPR2015-01117 and IPR2015-01127 inadvertently cite to an earlier
`version of Petitioner’s expert, Dr. Sondheimer’s transcript (Sondheimer Transcript 3.10.16) and
`not his final transcript, Exhibit 2012. However, the earlier version of Dr. Sondheimer’s transcript
`and the final version were provided to Petitioner prior to filing of the Patent Owner
`Response. In its Reply, Petitioner indicates that it was aware of a global problem with citation to
`Exhibit 2012 in the Patent Owner Response (see Petitioner’s Reply in IPR2015-01127 at pp. 1-2,
`4) but did not seek clarification on this issue from Patent Owner or the Board. To clarify the
`record, Patent Owner requests leave from the Board to file corrected Patent Owner Responses
`for the sole purpose of correcting the citation to Exhibit 2012. Attached to this email are Patent
`Owner’s corrected Responses that have been redlined to indicate the corrected citations. In
`addition, we attach the earlier version of the Sondheimer transcript, to which the Patent Owner
`Responses currently cite and Exhibit 2012, to which the corrected Patent Owner Responses cite,
`both of which have been highlighted to show the corresponding citations in the original and
`corrected responses. Patent Owner does not believe Petitioner will be prejudiced by the filing
`of the corrected Patent Owner Responses; however, Petitioner has objected to filing of the
`attached corrected responses on grounds of prejudice. Patent Owner apologizes for the
`additional burden placed on the Board in addressing this issue.
`
`The second matter Patent Owner seeks to raise with the Board relates to Petitioner’s Reply in
`IPR2015-01117 (Paper No. 30, filed May 27, 2016), which includes multiple arguments (listed
`below) that exceed the proper scope of the Reply and/or are improperly raised for the first time
`in Reply:
`
`
`
`4
`
`

`

`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)
`
`
`• Petitioner improperly relies on the Simell reference (Ex. 1005) for its alleged teaching
`of incomplete conversion of PAA to UPAGN in violation of 37 C.F.R. § 43.23(b). See
`Reply at 1, 6-7.
`• Petitioner improperly introduces new and previously undisclosed arguments in support
`of its claim construction position in violation of 37 C.F.R. § 43.23(b). See Reply at 3-4.
`• Petitioner improperly introduces a new and previously undisclosed argument relating
`to the coefficient of variation in support of its argument that a POSA would have been
`motivated to combine Brusilow ’91 with other prior art references in violation of 37
`C.F.R. § 43.23(b). See Reply at 20.
`
` In view of Petitioner’s violation of 37 C.F.R. § 42.23(b), Patent Owner requests leave from the
`Board to file a Motion to Strike Petitioner’s Reply. In the alternative, Patent Owner seeks leave
`from the Board to file a document identifying with particularity the improper arguments raised
`in Petitioner’s Reply and/or seeks leave to file a Sur-reply to respond to the new subject matter
`in the Reply.
`
`The Parties have met and conferred regarding the aforementioned matter but have been unable
`to reach agreement. The Parties are available for a teleconference with the Board the afternoon
`of June 10, 2016. Please let us know the Board’s availability for a teleconference.
`
`Sincerely,
`
`Emer L. Simic
`Member
`
`Green, Griffith & Borg-Breen LLP
`esimic@greengriffith.com
`Main: 312.883.8000 | Direct: 312.883.8017
`NBC Tower, 455 North Cityfront Plaza Drive, Suite 3100
`Chicago, Illinois 60611
`greengriffith.com
`
`This email transmission is confidential and intended solely for the person or
`organization to whom it is addressed. It may contain privileged and confidential
`information. If you are not the intended recipient, you must not copy, distribute or take
`any action in reliance on the information contained in this email. If you have received
`this email in error, please notify the sender as soon as possible and delete the email and
`any attachments from your system. Thank you.
`
`
`
`
`
`
`
`5
`
`