`571-272-7822
`
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`
`
`
`
`
`
`
`
` Paper No. 9
`
`
` Entered: December 11, 2015
`
`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
`
`
`
`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.”
`
`
`
`
`
`
`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)
`
`
`
`INTRODUCTION
`
`On December 11, 2015, the Board held a telephonic conference at the
`
`request of Lannett Holdings, Inc. (“Petitioner”). Petitioner requested the
`
`conference to seek authorization to file a Reply to Patent Owner’s
`
`Preliminary Response. Counsel for both parties and Judges Yang and
`
`Paulraj attended the conference. This Order summarizes the issues
`
`discussed during the conference.
`
`
`
`DISCUSSION
`
`Petitioner filed IPR2015-01629 and IPR2015-01630, challenging the
`
`patentability of all claims of U.S. Patent Nos. 6,750,237 B1 and
`
`7,220,767 B2, respectively. Paper 2. ASTRAZENECA AB (“Patent
`
`Owner”) timely filed its Patent Owner’s Preliminary Response. Paper 7.
`
`According to Patent Owner, it had asserted the challenged patents against
`
`Petitioner in a district court, and the complaint and summons were served on
`
`Petitioner more than one year before the Petition was filed. Id. at 1–7. As a
`
`result, Patent Owner asserts, Petitioner is barred under 35 U.S.C. § 315(b)
`
`from seeking inter partes review of the patents-at-issue. Id.
`
`During the conference call, Petitioner contended that the service
`
`Patent Owner relies on was improper and ineffective. Petitioner also argued
`
`that the infringement action lacks subject matter jurisdiction, and thus,
`
`cannot be the basis for the statutory bar under § 315(b). Patent Owner
`
`disputed both issues and objected to Petitioner’s request to file a Reply.
`
`2
`
`
`
`
`
`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)
`
`
`
`The panel pointed out that Petitioner requested the conference call to
`
`address § 315(b) time-bar more than one month after Patent Owner filed its
`
`Preliminary Response. The parties are reminded that the Board has a large
`
`amount of cases to manage and short statutory deadlines to meet. In the
`
`future, the parties shall raise any issues requiring the Board’s attention in a
`
`more timely manner.
`
`Nevertheless, because of the severity of the consequence resulting
`
`from the statutory bar under § 315(b), the panel authorized Petitioner to file
`
`a Reply and Patent Owner to file a Sur-reply, both limited to the sole issue
`
`of § 315(b) time-bar. The parties are authorized to submit additional
`
`evidence, but not new testimonial evidence, to support their respective
`
`position.
`
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that Petitioner is authorized to file a Reply to Patent
`
`Owner Preliminary Response;
`
`FURTHER ORDERED that Petitioner must limit its Reply to seven
`
`pages and must file the Reply within five business days of the entrance of
`
`this Order;
`
`FURTHER ORDERED that Patent Owner is authorized to file a Sur-
`
`reply to Petitioner’s Reply;
`
`3
`
`
`
`
`
`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)
`
`
`
`FURTHER ORDERED that Patent Owner must limit its Sur-reply to
`
`five pages and must file the Sur-reply within five business days of the filing
`
`of Petitioner’s Reply;
`
`FURTHER ORDERED that both the Reply and the Sur-reply must be
`
`limited to the issue of statutory bar under 35 U.S.C. § 315(b); and
`
`FURTHER ORDERED that the parties are authorized to submit
`
`additional evidence, excluding new testimonial evidence, in support of their
`
`respective position.
`
`4
`
`
`
`
`
`
`
`Case IPR2015-01629 (Patent 6,750,237 B1)
`Case IPR2015-01630 (Patent 7,220,767 B2)
`
`
`
`
`PETITIONER:
`
`Joseph Posillico
`jposillico@foxrothschild.com
`
`
`
`Frank Carroll
`fcarroll@foxrothschild.com
`
`
`
`PATENT OWNER:
`
`Michael Flibbert
`michael.flibbert@finnegan.com
`
`
`
`Maureen Queler
`maureen.queler@finnegan.com
`
`
`
`5
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