`571-272-7822
`
`Paper 8
`Entered: October 14, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PHARMACOSMOS A/S,
`Petitioner,
`
`v.
`
`LUITPOLD PHARMACEUTICALS. INC.,
`Patent Owner.
`____________
`
`
`
`
`
` Cases1 IPR2015-01490; Patent 7,754,702 B2
` IPR2015-01493; Patent 8,431,549 B2
` IPR2015-01495; Patent 8,895,612 B2
`
`____________
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`the three 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.”
`
`
`
`IPR2015-01490; Patent 7,754,702 B2
`IPR2015-01493; Patent 8,431,549 B2
`IPR2015-01495; Patent 8,895,612 B2
`
`
`A conference call was held on Friday, October 6, 2015 among
`
`Lisa Kole, representing Petitioner; George Quillin representing Patent
`
`Owner; and Judges Green, Scheiner, and Paulraj. Patent Owner requested
`
`the call to discuss authorization to file a certificate of correction relating to
`
`the claims.
`
`
`
`In particular, Patent Owner noted that in claim 26 of U.S. Patent No.
`
`7,754,702 B2, as well as claim 12 of U.S. Patent No. 8,895,612 B2, “n”
`
`should be defined as 103, rather than 103. Patent Owner also stated that it
`
`wished to rewrite dependent claim 28 of U.S. Patent No. 7,754,702 B2, as
`
`well as dependent claim 12 of U.S. Patent No. 8,431,549 B2, in independent
`
`form.
`
`
`
`When asked whether it objected to the filing of the certificate of
`
`correction, Petitioner noted that when it asked Patent Owner earlier in the
`
`week what corrections it was seeking, Patent Owner declined to state what it
`
`would be seeking to correct. Thus, Petitioner stated that it would need some
`
`time to review the requested corrections. Petitioner noted also that there are
`
`other ways to correct the claims in the context of the proceeding, such as
`
`through the filing of a motion to amend. Finally, Petitioner also expressed
`
`concern as to the rewriting of several claims in independent form. Patent
`
`Owner responded that, as to correcting “103” to read “103,” Petitioner has
`
`already treated the claim language as referring to “103” in the Petitions.
`
`
`
`We reminded both Patent Owner and Petitioner that the parties should
`
`confer and attempt to resolve issues with each other first before requesting a
`
`2
`
`
`
`IPR2015-01490; Patent 7,754,702 B2
`IPR2015-01493; Patent 8,431,549 B2
`IPR2015-01495; Patent 8,895,612 B2
`
`conference call. Moreover, we agreed with Petitioner that rewriting a
`
`dependent claim in independent form would more appropriately be the
`
`subject matter of a motion to amend, rather than that the use of a certificate
`
`of correction.
`
`Patent Owner was authorized to file a five (5) page motion, limited to
`
`requesting authorization to file a certificate of correction to change “103” to
`
`“103” in claim 26 of US Patent No. 7,754, 702, as well as claim 12 of US
`
`Patent No. 8,895,612. The motion is due no later than October 20, 2015.
`
`Petitioner is authorized, but not obligated, to file a five (5) page opposition,
`
`no later than October 30, 2015. In addition, Petitioner should promptly
`
`notify us if it decides not to oppose Patent Owner’s motion requesting
`
`authorization to file a certificate of correction.
`
`Accordingly, it is:
`
`ORDERED that Patent Owner is authorized to file to file a five (5)
`
`page motion requesting authorization to file a certificate of correction, the
`
`motion is due no later than October 20, 2015;
`
`FURTHER ORDERED that Petitioner is authorized to file a five (5)
`
`page opposition, no later than October 30, 2015; and
`
`FURTHER ORDERED that Petitioner should promptly notify us if it
`
`does not intend to oppose Patent Owner’s motion requesting authorization to
`
`file a certificate of correction.
`
`
`
`
`
`3
`
`
`
`IPR2015-01490; Patent 7,754,702 B2
`IPR2015-01493; Patent 8,431,549 B2
`IPR2015-01495; Patent 8,895,612 B2
`
`
`
`PETITIONER:
`
`Lisa Kole
`lisa.kole@bakerbotts.com
`
`Steven Lendaris
`steven.lendaris@bakerbotts.com
`
`Paul Ragusa
`paul.ragusa@bakerbotts.com
`
`
`
`
`PATENT OWNER:
`
`George Quillin
`gquillin@foley.com
`
`Michael Kaminski
`mkaminski@foley.com
`
`
`
`
`4
`
`
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