Trials@uspto.gov Paper 83
`Tel: 571-272-7822
` Entered: January 25, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ARGENTUM PHARMACEUTICALS LLC, MYLAN
`PHARMACEUTICALS INC., BRECKENRIDGE PHARMACEUTICAL,
`INC., and ALEMBIC PHARMACEUTICALS, LTD.,
`Petitioner,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`_____________
`
`Case IPR2016-002041
`Patent RE38,551 E
`______________
`
`
`
`Before FRANCISCO C. PRATS, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`ORDER
`Staying Reexamination Control No. 90/013,709
`35 U.S.C. § 315(d) and 37 C.F.R. §§ 42.3, 42.122
`
`
`
`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245
`have been joined with this proceeding.
`
`
`Tel: 571-272-7822
` Entered: January 25, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ARGENTUM PHARMACEUTICALS LLC, MYLAN
`PHARMACEUTICALS INC., BRECKENRIDGE PHARMACEUTICAL,
`INC., and ALEMBIC PHARMACEUTICALS, LTD.,
`Petitioner,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`_____________
`
`Case IPR2016-002041
`Patent RE38,551 E
`______________
`
`
`
`Before FRANCISCO C. PRATS, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`ORDER
`Staying Reexamination Control No. 90/013,709
`35 U.S.C. § 315(d) and 37 C.F.R. §§ 42.3, 42.122
`
`
`
`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245
`have been joined with this proceeding.
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`
`INTRODUCTION
`In an email on January 10, 2017, counsel for Research Corporation
`Technologies, Inc. (“Patent Owner”) requested a conference with the Board
`to discuss a request to stay the co-pending ex parte reexamination (Control
`No. 90/013,709) of the patent under review herein, pending final resolution
`(final written decision and any subsequent appeal) of the present IPR
`proceeding. Rather than conduct a conference call, the panel granted both
`parties additional time at the end of the oral hearing on January 24, 2017, to
`present their positions regarding Patent Owner’s request.2
`
`At the hearing, Patent Owner contended that the co-pending
`reexamination includes obviousness rejections that are essentially the same
`as the obviousness grounds at issue in the present proceeding, and argued
`that staying the reexamination would avoid duplication of efforts and
`potential inconsistency within the Office. Patent Owner contended that the
`delay resulting from staying the reexamination until final appeal of the
`written decision in this proceeding would not be substantially longer than
`delays routinely seen in similar circumstances.
`Counsel for Argentum Pharmaceuticals LLC (“Petitioner”) contended
`that the reexamination includes rejections on grounds other than the
`obviousness grounds at issue in the present case, and averred that the
`evidence and issues in the two proceedings were not identical. Petitioner
`argued that the delay resulting from staying the reexamination is, therefore,
`unwarranted.
`
`
`2 This order summarizes the parties’ arguments. The oral hearing transcript,
`when entered, will present the complete record of those arguments.
`2
`
`
`
`
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`
`DISCUSSION
`The Director has authority to stay a reexamination proceeding
`
`pursuant to 35 U.S.C. § 315(d), which provides:
`(d) Multiple Proceedings.—Notwithstanding sections
`135(a), 251, and 252, and chapter 30, during the pendency of an
`inter partes review, if another proceeding or matter involving the
`patent is before the Office, the Director may determine the
`manner in which the inter partes review or other proceeding or
`matter may proceed, including providing for stay, transfer,
`consolidation, or termination of any such matter or proceeding.
`
`Under 37 C.F.R. § 42.122(a), the Board may enter an order to effect a
`
`stay:
`
`Multiple proceedings. Where another matter involving the patent
`is before the Office, the Board may during the pendency of the
`inter partes review enter any appropriate order regarding the
`additional matter including providing for the stay, transfer,
`consolidation, or termination of any such matter.
`
`In addition, the Board may exercise exclusive jurisdiction within the
`Office over an application underlying a patent involved in an IPR. 37 C.F.R.
`§ 42.3(a). When doing so, the Board may take various actions, including
`staying that application.
`Having considered the parties’ arguments, we conclude that the proper
`course of action is to stay the co-pending reexamination until the issuance of
`the final written decision in this proceeding, or until the issuance of the
`decisions on any requests for rehearing of that decision, should such requests
`be filed. Our review of the record in the reexamination indicates that an
`outstanding office action in that proceeding includes two obviousness
`rejections applying the same prior art references which provide the basis for
`3
`
`
`
`
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`the two instituted grounds in this proceeding. Thus, although we are
`mindful of the delays caused by staying the reexamination, conducting the
`reexamination concurrently with this IPR may duplicate efforts within the
`Office and could potentially result in inconsistencies between the
`proceedings. Moreover, by staying the reexamination only until the issuance
`of the final written decision in this proceeding, or until the issuance of the
`decisions on any requests for rehearing of that decision, such delay will be
`minimized.
`
`ORDER
`
`Accordingly, it is
`ORDERED that pursuant to our authority arising under 35 U.S.C.
`§ 315(d), and 37 C.F.R. §§ 42.3(a) and 42.122(a), Reexamination Control
`No. 90/013,709 is hereby stayed until the until the issuance of the final
`written decision in this proceeding, or until issuance of the decisions on any
`requests for rehearing of that decision, should such requests be filed;
`FURTHER ORDERED that this stay tolls all time periods for filing
`further papers in Reexamination Control No. 90/013,709, and no further
`papers shall be filed in the reexamination while this stay remains in place;
`and
`
`FURTHER ORDERED that all time periods in Reexamination
`Control No. 90/013,709 will be restarted upon lifting of the stay.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`For PETITIONER (IPR2016-00204):
`
`Matthew J. Dowd (mjdowd@dowdpllc.com)
`DOWD PLLC
`
`William G. Jenks (wjenks@jenksiplaw.com
`JENKS IP LAW
`
`For PETITIONER (IPR2016-01101):
`
`Steven W. Parmelee (sparmalee@wsgr.com)
`Michael T. Rosato (sparmalee@wsgr.com)
`Jad A. Mills (jmills@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`For PETITIONER (IPR2016-01242):
`
`Matthew L. Fedowitz (mfedowitz@merchantgould.com)
`Daniel R. Evans (devans@merchantgould.com)
`MERCHANT & GOULD P.C.
`
`For PETITIONER (IPR2016-01245):
`
`Gary J. Speier (gspeier@carlsoncaspers.com)
`Jeffer Ali (jali@carlsoncaspers.com)
`CARLSON, CASPERS, VANDENBURGH,
`LINDQUIST & SCHUMAN, P.A.
`
`For PATENT OWNER:
`
`Andrea G. Reister (areister@cov.com)
`Jennifer L. Robbins (jrobbins@cov.com)
`Enrique D. Longton (rlongton@cov.com)
`COVINGTON & BURLING LLP
`
`
`
`
`
`
`
`
`5
`
`
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