`571-272-7822
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` Paper No. 9
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` Entered: December 11, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LANNETT HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`ASTRAZENECA AB,
`Patent Owner.
`____________
`
`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)1
`
`____________
`
`
`
`Before ZHENYU YANG and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
`1 This order addresses issues that are common to both cases. We, therefore,
`issue a single order that has been entered in each case. For convenience,
`paper numbers refer to those filed in IPR2015-01629. The parties may use
`this style caption when filing a single paper in multiple proceedings,
`provided that such caption includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the caption.”
`
`
`
`
`
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`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)
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`
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`INTRODUCTION
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`On December 11, 2015, the Board held a telephonic conference at the
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`request of Lannett Holdings, Inc. (“Petitioner”). Petitioner requested the
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`conference to seek authorization to file a Reply to Patent Owner’s
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`Preliminary Response. Counsel for both parties and Judges Yang and
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`Paulraj attended the conference. This Order summarizes the issues
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`discussed during the conference.
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`
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`DISCUSSION
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`Petitioner filed IPR2015-01629 and IPR2015-01630, challenging the
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`patentability of all claims of U.S. Patent Nos. 6,750,237 B1 and
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`7,220,767 B2, respectively. Paper 2. ASTRAZENECA AB (“Patent
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`Owner”) timely filed its Patent Owner’s Preliminary Response. Paper 7.
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`According to Patent Owner, it had asserted the challenged patents against
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`Petitioner in a district court, and the complaint and summons were served on
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`Petitioner more than one year before the Petition was filed. Id. at 1–7. As a
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`result, Patent Owner asserts, Petitioner is barred under 35 U.S.C. § 315(b)
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`from seeking inter partes review of the patents-at-issue. Id.
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`During the conference call, Petitioner contended that the service
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`Patent Owner relies on was improper and ineffective. Petitioner also argued
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`that the infringement action lacks subject matter jurisdiction, and thus,
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`cannot be the basis for the statutory bar under § 315(b). Patent Owner
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`disputed both issues and objected to Petitioner’s request to file a Reply.
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`2
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`
`
`
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`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)
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`
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`The panel pointed out that Petitioner requested the conference call to
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`address § 315(b) time-bar more than one month after Patent Owner filed its
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`Preliminary Response. The parties are reminded that the Board has a large
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`amount of cases to manage and short statutory deadlines to meet. In the
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`future, the parties shall raise any issues requiring the Board’s attention in a
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`more timely manner.
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`Nevertheless, because of the severity of the consequence resulting
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`from the statutory bar under § 315(b), the panel authorized Petitioner to file
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`a Reply and Patent Owner to file a Sur-reply, both limited to the sole issue
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`of § 315(b) time-bar. The parties are authorized to submit additional
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`evidence, but not new testimonial evidence, to support their respective
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`position.
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`
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`Accordingly, it is
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`ORDER
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`ORDERED that Petitioner is authorized to file a Reply to Patent
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`Owner Preliminary Response;
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`FURTHER ORDERED that Petitioner must limit its Reply to seven
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`pages and must file the Reply within five business days of the entrance of
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`this Order;
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`FURTHER ORDERED that Patent Owner is authorized to file a Sur-
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`reply to Petitioner’s Reply;
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`3
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`
`
`
`
`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)
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`
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`FURTHER ORDERED that Patent Owner must limit its Sur-reply to
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`five pages and must file the Sur-reply within five business days of the filing
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`of Petitioner’s Reply;
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`FURTHER ORDERED that both the Reply and the Sur-reply must be
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`limited to the issue of statutory bar under 35 U.S.C. § 315(b); and
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`FURTHER ORDERED that the parties are authorized to submit
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`additional evidence, excluding new testimonial evidence, in support of their
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`respective position.
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`4
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`
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`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)
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`
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`PETITIONER:
`
`Joseph Posillico
`jposillico@foxrothschild.com
`
`
`
`Frank Carroll
`fcarroll@foxrothschild.com
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`PATENT OWNER:
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`Michael Flibbert
`michael.flibbert@finnegan.com
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`
`
`Maureen Queler
`maureen.queler@finnegan.com
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`
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`5