Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: December 15, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC, MYLAN
`PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioner,
`v.
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`____________________
`
`Case IPR2016-00089 (Patent 8,754,131 B2)
`Case IPR2016-00090 (Patent 8,871,813 B2)
`Case IPR2016-00091 (Patent 8,927,606 B1)1
`____________________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`ORDER
`Modifying Patent Owner’s Time for
`Filing an Opposition to the Motion for Joinder
`37 C.F.R. §§ 42.5(c)(1); 42.25(a)(1)
`
`
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each proceeding. The parties are authorized to
`use this style heading when filing a single paper in multiple 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.”
`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`
`During a telephone conference held on December 11, 2015, Patent
`Owner requested, and the Board granted, an extension of time for filing an
`opposition to the Motion for Joinder (Paper 3, “Motion”)2 in each
`proceeding. Patent Owner shall file any opposition to the Motion
`concurrently with any Preliminary Response or Waiver of Preliminary
`Response filed in each proceeding. In the event that no Preliminary
`Response or Waiver of Preliminary Response is filed, the opposition shall be
`due on February 9, 2016, the statutory due date of the Preliminary Response.
`Patent Owner retained a court reporter for the telephone conference.
`Patent Owner agreed to file, in due course, a transcript of the telephone
`conference as an exhibit in each proceeding. The reasons supporting Patent
`Owner’s request for an extension of time for filing the opposition to the
`Motion are reflected in that transcript, which shall serve as the official
`record of the telephone conference.
`For completeness of the record, we attach to this Order copies of
`email communications that prompted the telephone conference.
`Attachments A, B, C, and D.
`
`It is
`ORDERED that Patent Owner shall file any opposition to the Motion
`for Joinder concurrently with any Preliminary Response or Waiver of
`Preliminary Response filed in each proceeding; and
`
`
`2 Paper numbers are identical in each proceeding.
`2
`
`
`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`
`FURTHER ORDERED that, in the event that no Preliminary
`Response or Waiver of Preliminary Response is filed, Patent Owner’s
`opposition to the Motion for Joinder in each proceeding shall be due on
`February 9, 2016, the statutory due date of the Preliminary Response.
`
`PETITIONER:
`Jitendra Malik
`jitty.malik@alston.com
`
`Hidetada James Abe
`james.abe@alston.com
`
`
`PATENT OWNER:
`
`Bryan C. Diner
`bryan.diner@finnegan.com
`
`Justin J. Hasford
`justin.hasford@finnegan.com
`
`Joshua L. Goldberg
`joshua.goldberg@finnegan.com
`
`
`
`
`
`3
`
`
`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`
`ATTACHMENT A
`
`
`Counsel: Please the first line of this e-mail should be IPR089 not IPR809.
`Thank you,
`Maria
`
`From: Vignone, Maria On Behalf Of Trials
`Sent: Wednesday, December 09, 2015 2:30 PM
`To: Diner, Bryan; Trials
`Cc: Malik, Jitty; EXT- bryan.skelton@alston.com; Soderstrom, Lance; Dyellin@crowell.com;
`jlindsay@crowell.com; Hasford, Justin; Goldberg, Joshua; Ferrill, Elizabeth
`Subject: RE: Unopposed Second Request for Extension of Time to File Oppositions to Motion for
`Joinder (IPR2016-00089; IPR2016-00090; IPR2016-00091)
`
`Re:
`IPR2015-00902 (IPR902)
`IPR2015-00903 (IPR903)
`IPR2015-01097 (IPR097)
`IPR2015-01099 (IPR099)
`IPR2015-01100 (IPR100)
`IPR2015-01105 (IPR105)
`IPR2015-01871 (IPR871)
`IPR2016-00089 (IPR089)
`IPR2016-00090 (IPR090)
`IPR2016-00091 (IPR091)
`
`Counsel:
`
`Patent Owner’s (Senju’s) time for filing any opposition to InnoPharma’s motions for joinder in
`IPR809, IPR090, and IPR091 is extended from December 11, 2015, to December 18, 2015.
`
`The parties are requested to address the following matters during the telephone conference set
`for December 11, 2015, at 2 pm EST, pertaining to the alleged “agreed upon proposed schedule
`that would apply to all ten (10) IPRs” (“Proposed Global Schedule”). Email to Board from Mr.
`Bryan Diner (“Diner Email”) (transmitted December 4, 2015).
`
`1. IPR902 is not the subject of a motion for joinder. The panel shall not disturb the hearing date
`set in IPR902.
`
`2. IPR903 is the subject of a motion for joinder filed in IPR871. Should the petition and motion
`for joinder be granted in IPR871, the joined proceeding in IPR903 shall proceed on the schedule
`currently set in IPR903. See IPR871 (Paper 10) (reflecting agreement to conditions of joinder
`
`4
`
`
`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`that will not increase the complexity of IPR903 to a degree warranting a change in the schedule
`set in IPR903).
`
`3. The parties should address the Proposed Global Schedule as it relates to the remaining seven
`(7) IPRs identified in the Diner Email, keeping in mind that the Board shall enter no schedule in
`any IPR before determining that the petition warrants institution.
`
`4. Regarding the motions for joinder that are pending in IPR089, IPR090, and IPR091, please
`address the following issues: a) To facilitate our consideration of the motions, will InnoPharma
`agree to proceed in IPR097, IPR100, and IPR105 based only upon the arguments and evidence
`advanced by Lupin in those earlier-filed actions and accept a back-seat, “understudy” role in the
`joined proceedings, without any right to separate or additional briefing or discovery, much as
`Lupin has agreed in connection with the motion for joinder pending in IPR871 (see Paper 10); b)
`In the event that the petitions and joinder motions are granted, will Lupin permit InnoPharma to
`rely upon its declarant(s) in the joined proceedings.; and (c) in this scenario, would Senju oppose
`joinder.
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571-272-4645
`
`
`
`
`
`
`
`5
`
`
`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`
`ATTACHMENT B
`
`From: Diner, Bryan [mailto:bryan.diner@finnegan.com]
`Sent: Tuesday, December 08, 2015 8:29 AM
`To: Trials
`Cc: Malik, Jitty; EXT- bryan.skelton@alston.com; Soderstrom, Lance; Dyellin@crowell.com;
`jlindsay@crowell.com; Diner, Bryan; Hasford, Justin; Goldberg, Joshua; Ferrill, Elizabeth
`Subject: Unopposed Second Request for Extension of Time to File Oppositions to Motion for
`Joinder (IPR2016-00089; IPR2016-00090; IPR2016-00091)
`
`Subject: Unopposed Second Request for Extension of Time to File Oppositions to Motion for
`Joinder (IPR2016-00089; IPR2016-00090; IPR2016-00091)
`
`
`
`Your Honors:
`
`
`Patent Owner Senju’s Oppositions to InnoPharma’s Motions for Joinder in IPR2016-00089,
`IPR2016-00090, and IPR2016-00091 are currently due on Friday, December 11, 2015. The Board
`and the parties also are scheduled to discuss the global coordinated schedule in the above-
`mentioned IPRs, among others, on December 11, 2015. Should the Board eventually adopt the
`parties’ proposed global coordinated schedule, then Senju would not need to file these
`Oppositions.
`
`In view of the scheduled call with the Board, Patent Owner Senju requests a further extension of
`time to file its Oppositions until Friday, December 18 or until two business days after the Board
`rules on the parties’ global coordination proposal. Petitioner InnoPharma does not oppose this
`request.
`
`
`Respectfully,
`Bryan Diner, Reg. No. 32,409
`Lead Counsel for Patent Owner
`
`
`Bryan C. Diner
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4116 | fax: 202.408.4400 | bryan.diner@finnegan.com | www.finnegan.com
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged,
`confidential, proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message
`in error, please advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`
`
`6
`
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`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`
`ATTACHMENT C
`
`
`
`From: Diner, Bryan [mailto:bryan.diner@finnegan.com]
`Sent: Friday, December 04, 2015 2:54 PM
`To: Trials
`Cc: Malik, Jitty; EXT- bryan.skelton@alston.com; Soderstrom, Lance; Diner, Bryan; Goldberg,
`Joshua; Hasford, Justin; Holtman, Andy; Yellin, Deborah; Lindsay, Jonathan
`Subject: IPR2015-00902, IPR2015-00903, IPR2015-01097, IPR2015-01099, IPR2015-01105,
`IPR2015-01100, IPR2015-01871, IPR2016-00089, IPR2016-00090, IPR2016-00091, - Request for
`a Conference Call
`
`Subject: IPR2015-00902, IPR2015-00903, IPR2015-01097, IPR2015-01099,
`IPR2015-01105, IPR2015-01100, IPR2015-01871, IPR2016-00089, IPR2016-
`00090, IPR2016-00091, - Request for a Conference Call
`
`
`Your Honors,
`
`
`Further to the Order issued on November 18, 2015 in IPR2015-01871,
`InnoPharma, Lupin, and Senju have continued to meet and confer as
`requested by the Board and now present an agreed upon proposed
`schedule that would apply to all ten (10) IPRs listed above involving the five
`(5) different patents:
`
`
`Original
`Schedule for
`IPR2015-
`01097; -
`01099; -
`01100; -01105
`Jan. 4, 2016
`
`Proposal
`Coordinated
`Schedule for all
`10 IPRs
`
`Feb. 1, 2016
`
`Mar. 10, 2016 March 28, 2016
`
`
`
`Due Date 1:
`Patent owner’s Response to the
`petition
`Due Date 2:
`Petitioner’s Reply to patent
`owner’s response to petition
`
`7
`
`
`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`
`Due Date 3: Patent owner’s
`Reply to petitioner’s opposition
`to motion to amend
`Due Date 4:
`Motion for observations
`regarding cross-examination of
`reply witness
`Motion to exclude evidence
`Request for Oral argument
`Due Date 5:
`Response to observations
`Opposition to motion to exclude
`Due Date 6:
`Reply to opposition to motion to
`exclude
`Oral Argument (if requested)
`
`April 11, 2016 N/A
`
`May 2, 2016 May 6, 2016
`
`May 16, 2016 May 18, 2016
`
`May 23, 2016 May 25, 2016
`
`June 6, 2016
`
`June 6, 2016
`
`
`
`Patent Owner Senju does not plan to file a Motion to Amend, therefore
`DUE DATE 3 does not apply.
`
`
`Finally, due to a long standing family obligation of lead counsel, Senju
`respectfully requests that DUE DATE 7 (coordinated oral argument) be
`moved from Monday, June 6 to at least Thursday, June 9. Counsel for
`InnoPharma and Lupin do not oppose this request.
`
`In view of the approaching due date for the Patent Owner Response in the
`IPR2015-00902 and IPR2015-00903, which is December 18, 2015, the
`parties respectfully request a conference call with the Board next week, if
`at all possible. To that end, all parties are available for conference call with
`the Board on Thursday, December 10, after 1:30 p.m. EST, or Friday,
`December 11, after 1:30 pm EST.
`
`
`Respectfully,
`
`8
`
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`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`Bryan Diner
`
`
`Bryan C. Diner
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4116 | fax: 202.408.4400 | bryan.diner@finnegan.com | www.finnegan.com
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged,
`confidential, proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message
`in error, please advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`
`
`
`
`
`9
`
`
`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`
`ATTACHMENT D
`
`
`Counsel: The Board grants Patent Owner’s unopposed request for an
`extension of time, from Dec. 2, 2015, to Dec. 11, 2015, within which to file
`its Oppositions to the Motions for Joinder in these proceedings.
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571-272-4645
`
`
`From: Goldberg, Joshua [mailto:Joshua.Goldberg@finnegan.com]
`Sent: Tuesday, December 01, 2015 10:54 AM
`To: Trials
`Cc: Malik, Jitty; EXT- bryan.skelton@alston.com; Soderstrom, Lance;
`Dyellin@crowell.com; jlindsay@crowell.com; Diner, Bryan; Hasford,
`Justin; Ferrill, Elizabeth
`Subject: Unopposed Request for Extension of Time to File Oppositions to
`Motion for Joinder (IPR2016-00089; IPR2016-00090; IPR2016-00091)
`
`Your Honors:
`
`
`Further to the Board’s Order of November 18 in IPR2015-01871, the parties
`have continued their discussions on the global consolidated schedule
`involving, among other IPRs, the above-mentioned cases. In each of the
`above cases, Petitioner InnoPharma has filed a Motion for Joinder. Patent
`Owner Senju’s Oppositions to these motions are due on Wednesday, Dec. 2
`for IPR2016-00090 and IPR2016-00091 and on Thursday, Dec. 3 for
`IPR2016-00089. Should the Board eventually adopt the parties’ proposed
`global consolidated schedule, then Senju would not need to file these
`Oppositions.
`
`
`10
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`
`
`
`

`

`IPR2016-00089 (Patent 8,754,131 B2)
`IPR2016-00090 (Patent 8,871,813 B2)
`IPR2016-00091 (Patent 8,927,606 B1)
`
`In view of the continued discussions on the global consolidated schedule,
`Patent Owner Senju respectfully requests an extension of the Patent Owner’s
`deadline for filing its Oppositions to Friday, December 11, 2015. Petitioner
`InnoPharma does not oppose.
`
`
`Respectfully,
`Joshua L. Goldberg, Reg. No. 59,369
`Backup Counsel for Patent Owner
`
`
`Joshua L. Goldberg
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.6092 | fax 202.408.4400 | joshua.goldberg@finnegan.com
`www.finnegan.com | Bio | LinkedIn | PTAB Guidebook
`
`
`
`This e-mail message is intended only for individual(s) to whom it is
`addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If
`you believe you have received this message in error, please advise the sender
`by return e-mail and delete it from your mailbox. Thank you.
`
`
`11
`
`
`
`
`