Trials@uspto.gov Paper 22
`Tel: 571-272-7822
`Entered: July 20, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COALITION FOR AFFORDABLE DRUGS VIII, LLC,
`Petitioner,
`
`v.
`
`THE TRUSTEES OF THE UNIVERSITY OF PENNSYLVANIA,
`Patent Owner.
`_____________
`
`
`
`
`Before MICHAEL P. TIERNEY, LORA M. GREEN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`Case IPR2015-01835 (Patent 8,618,135 B2)
`Case IPR2015-01836 (Patent 7,932,268 B2)1
`____________
`
`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 listed 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.”
`
`

`

`IPR2015-01835 (Patent 8,618,135 B2)
`IPR2015-01836 (Patent 7,932,268 B2)
`
`
`This order is in response to Patent Owner’s email dated June 16, 2016,
`attached. Petitioner did not respond to Patent Owner’s email, and thus does
`not appear to oppose Patent Owner’s requests.
`
`As to IPR2015-01835, Patent Owner’s items 1–5 and 7 are granted.
`As to item 6, for purposes of these proceedings, the same exhibit may have
`two exhibit numbers, and thus Patent Owner need not file revisions of the
`Gregg Declaration and the Rader Declaration that refer to the same Exhibit
`by two different Exhibit Numbers, i.e., Exhibit Numbers 2058 and 2078.
`As to IPR2015-01836, item 1, to the extent that the same exhibit is
`referred to by two different exhibit numbers, Patent Owner need not file
`revisions of the two Exhibits that refer to the same exhibit as two different
`exhibit numbers. Item 1, to the extent it is the same as Item 7 in IPR2015-
`01835 is granted. Item 2 is granted. Patent Owner should correct its June 7,
`2016, Certificate of Service appended to its Patent Owner Response.
`
`Accordingly, it is:
`
`ORDERED that in IPR2015-01835, one copy of each of Exhibits
`2089, 2106, 2194, 2200, 2203, 2216, 2217, 2267, 2277, 2298 and 2300, is
`expunged;
`
`FURTHER ORDERED that in IPR2015-01835, Exhibit 2057-Part 6,
`is expunged;
`
`FURTHER ORDERED that in IPR2015-01835, the version of Exhibit
`2161 that returns the exhibit labeled Exhibit 2162 is expunged;
`
`FURTHER ORDERED that in IPR2015-01835, the version of Exhibit
`2031 that returns the exhibit labeled Exhibit 2301 is expunged;
`
`
`
`2
`
`

`

`IPR2015-01835 (Patent 8,618,135 B2)
`IPR2015-01836 (Patent 7,932,268 B2)
`
`FURTHER ORDERED that in IPR2015-01835, the version of Exhibit
`
`2100 that returns the exhibit labeled Exhibit 2110, is re-designated as
`Exhibit 2110;
`
`FURTHER ORDERED that in IPR2015-01835, Patent Owner is
`authorized to submit a corrected copy of its Motion to Amend that changes
`all references to Exhibit 2092 to Exhibit 2048, with the corrected copy to be
`filed no later than JULY 29, 2016;
`
`FURTHER ORDERED that in IPR2015-01836, Patent Owner is
`authorized to submit a corrected copy of its Motion to Amend that changes
`all references to Exhibit 2092 to Exhibit 2048, with the corrected copy to be
`filed no later than JULY 29, 2016;
`
`FURTHER ORDERED that in IPR2015-01836; Patent Owner is
`authorized to upload Exhibit 2076, Part 6 of 6, which was served in
`IPR2015-01835, but not filed in IPR2015-01836; and
`
`FURTHER ORDERED that in IPR2015-01836, Patent Owner should
`correct its June 7, 2016, Certificate of Service appended to its Patent Owner
`Response no later than July 29, 2016.
`
`
`
`
`
`3
`
`

`

`IPR2015-01835 (Patent 8,618,135 B2)
`IPR2015-01836 (Patent 7,932,268 B2)
`
`For PETITIONER:
`
`Gregory Gonsalves
`Christopher Casieri
`
`gonsalves@gonsalveslawfirm.com
`chris@miplaw.com
`
`For PATENT OWNER:
`
`Williams James
`Cynthia Hardman
`
`wjames@goodwinprocter.com
`chardman@goodwinprocter.com
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2015-01835 (Patent 8,618,135 B2)
`IPR2015-01836 (Patent 7,932,268 B2)
`
`From: Hardman, Cynthia [mailto:CHardman@goodwinprocter.com]
`Sent: Thursday, June 16, 2016 3:52 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: gonsalves@gonsalveslawfirm.com; chris@miplaw.com; James, William
`G. <WJames@goodwinprocter.com>; Mitrokostas, Nicholas K
`<NMitrokostas@goodwinprocter.com>
`Subject: IPR2015-01835, -01836
`
`
`To the Board,
`
`On June 7, 2016, in both IPR2015-01835 and -01836, Patent Owner made
`voluminous filings of a Patent Owner Response and Motion to Amend,
`which together involved filing over 300 exhibits in each IPR. Patent Owner
`has since become aware of a few inadvertent clerical errors in these filings,
`as noted below. In order to correct the errors, Patent Owner respectfully
`makes the following requests. Patent Owner has conferred with Petitioner,
`and Petitioner does not object to the requested corrections.
`
`To the extent the Board would like to discuss the below requests, the parties
`are available for a conference call with the Board during the following
`times: June 21 and 22 after 3 pm.
`
`IPR2015-01835:
`
`1. Patent Owner inadvertently uploaded identical copies of certain
`exhibits twice. Accordingly, Patent Owner requests that one copy of
`each of the following exhibits be expunged: Exhibits 2089, 2106,
`2194, 2200, 2203, 2216, 2217, 2267, 2277, 2298 and 2300.
`
`2. Patent Owner inadvertently uploaded two identical copies of Exhibits
`2075-Part 6. However, when we input the Document Name into
`PRPS for one of the copies this exhibit, we transposed numbers, and
`mistakenly called it “Exhibit 2057- Part 6.” Accordingly we request
`that the Board delete the copy of Exhibit 2075 that has the name
`“Exhibit 2057- Part 6.”
`
`3. Two documents have been designated as Exhibit 2161. However,
`when a user clicks on the PRPS link, one of these links returns a copy
`
`
`
`5
`
`

`

`IPR2015-01835 (Patent 8,618,135 B2)
`IPR2015-01836 (Patent 7,932,268 B2)
`
`
`of Exhibit 2162. (Exhibit 2162 was separately filed and correctly
`labeled as Exhibit 2162.) Accordingly, Patent Owner requests that the
`version of Exhibit 2161 that actually returns Exhibit 2162 be deleted.
`
`4. Two documents have been designated as Exhibit 2031. One has the
`document name “Exhibit 2031” and is correct. When a user clicks on
`the PRPS link for the other copy of Exhibit 2031, however, it in fact
`returns a copy of Exhibit 2301. Patent owner requests that the copy of
`“Exhibit 2031” that links to Exhibit 2301 be deleted. (Exhibit 2301
`was separately filed and correctly labeled as Exhibit 2301.)
`
`5. Two documents have been designated as Exhibit 2100. One has the
`document name “Exhibit 2100” and is correct. The other, however,
`has the name “Exhibit 2110,” and when a user clicks on the PRPS
`link, it in fact returns a copy of Exhibit 2110. Patent owner requests
`that this Exhibit 2110 be re-designated in PRPS as Exhibit 2110
`(instead of Exhibit 2100, as it now appears).
`
`6. The identical document was inadvertently given two different exhibit
`numbers, and both exhibit numbers were cited in different
`papers. Specifically, Exhibit 2058 (which was cited in the Gregg
`Declaration) is identical to Exhibit 2078 (which is cited in the Rader
`Declaration). Patent Owner respectfully requests the Board’s
`guidance regarding whether this situation should be addressed.
`
`7. Exhibits 2048 and 2092 are the identical document (U.S. Patent
`5,883,109 to Gregg et al.). Once Patent Owner realized that two
`documents had been given the same exhibit number, we intended to
`delete Exhibit 2092 and use Exhibit 2048, but did not fully do
`so. Accordingly Patent Owner’s Motion to Amend cites Exhibit 2092,
`instead of Exhibit 2048. Accordingly Patent Owner respectfully
`requests authorization to file a corrected Motion to Amend that
`changes all references to “2092” to “2048.” Patent Owner would then
`seek to expunge Exhibit 2092 from the record in -01835 as an
`unnecessary duplicate of Exhibit 2048.
`
`
`
`
`
`
`
`6
`
`

`

`IPR2015-01835 (Patent 8,618,135 B2)
`IPR2015-01836 (Patent 7,932,268 B2)
`
`IPR2015-01836:
`
`1. Issues 6 and 7, listed above for IPR2015-01835, also apply to -01836,
`except that no expungement of Exhibit 2092 is required in this case.
`
`2. Exhibit 2076 (part 6 of 6) was inadvertently omitted from the
`documents uploaded to PRPS and from the service copy. (Petitioner,
`however, received a copy of this document as part of the exhibits
`served on June 7, 2016 for IPR2015-01835.) Patent Owner requests
`permission to upload Exhibit 2076 (part 6 of 6) to PRPS. Patent
`Owner additionally requests the Board’s guidance regarding whether
`the June 7, 2016 Certificate of Service appended to the Patent Owner
`Response, which covered Exhibit 2076 (part 6 of 6), should be
`corrected.
`
`Respectfully submitted,
`Cynthia Hardman
`
`
`Cynthia Lambert Hardman
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`T: 212 459-7295
`F. 212-355-3333
`chardman@goodwinprocter.com
`www.goodwinprocter.com
`
`
`
`
`
`
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