Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 34
`Date: August 11, 2016
`
`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.,1
`Petitioners,
`v.
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00204, Case IPR2016-01101, Case IPR2016-01242,
`Case IPR2016-01245, Case IPR2016-012482
`Patent RE38,551 E
`____________
`
`
`Before FRANCISCO C. PRATS and JACQUELINE WRIGHT BONILLA,
`Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 Argentum Pharmaceuticals LLC is Petitioner in Case IPR2016-00204,
`Mylan Pharmaceuticals Inc. is Petitioner in Cases IPR2016-01101 and
`IPR2016-01248, Breckenridge Pharmaceutical, Inc. is Petitioner in Case
`IPR2016-01242, and Alembic Pharmaceuticals, Ltd. is Petitioner in Case
`IPR2016-01245.
`2 This Order addresses issues that are relevant in all four cases. Thus, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in any
`subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`Paper 34
`Date: August 11, 2016
`
`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.,1
`Petitioners,
`v.
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00204, Case IPR2016-01101, Case IPR2016-01242,
`Case IPR2016-01245, Case IPR2016-012482
`Patent RE38,551 E
`____________
`
`
`Before FRANCISCO C. PRATS and JACQUELINE WRIGHT BONILLA,
`Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 Argentum Pharmaceuticals LLC is Petitioner in Case IPR2016-00204,
`Mylan Pharmaceuticals Inc. is Petitioner in Cases IPR2016-01101 and
`IPR2016-01248, Breckenridge Pharmaceutical, Inc. is Petitioner in Case
`IPR2016-01242, and Alembic Pharmaceuticals, Ltd. is Petitioner in Case
`IPR2016-01245.
`2 This Order addresses issues that are relevant in all four cases. Thus, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in any
`subsequent papers.
`
`
`
`IPR2016-00204, IPR2016-01101, IPR2016-01242
`IPR2016-01245, IPR2016-01248
`Patent RE38,551 E
`
`
`On August 9, 2016, a conference call was conducted between
`respective counsel for the parties and Judges Prats and Bonilla. A court
`reporter also was present on the call.3 Counsel for Petitioner Breckenridge
`Pharmaceutical, Inc. (“Petitioner Breckenridge”) requested the call on behalf
`of itself, Petitioner Mylan Pharmaceuticals Inc., (“Petitioner Mylan”), and
`Alembic Pharmaceuticals, Ltd. (“Petitioner Alembic”) (collectively “the
`later Petitioners”). The later Petitioners requested the call to discuss their
`pending motions in respective cases (see supra text accompanying note 1) to
`join as parties to the inter partes review instituted in IPR2016-00204 (Paper
`19) involving Petitioner Argentum Pharmaceuticals LLC (“Petitioner
`Argentum”) and Patent Owner Research Corporation Technologies, Inc.
`(“Patent Owner”).
`During the call, the later Petitioners indicated that they filed “me-too”
`Petitions and intended to simply follow along in an “understudy” role to
`activity by Petitioner Argentum during the trial in IPR2016-00204. The
`later Petitioners agreed that they will rely on arguments and evidence
`provided by Petitioner Argentum in the case, and will not seek (a) additional
`briefing or pages, (b) to submit new evidence, such as declaration testimony,
`(c) additional time for cross-examination of witness or time during an oral
`hearing, or (d) to alter the trial schedule set out in our Scheduling Order
`(IPR2016-00204, Paper 20) or as appropriately agreed upon between
`Petitioner Argentum and Patent Owner during trial (id.).
`
`3 Patent Owner, who arranged the court reporter, shall file a copy of a
`transcript of the call as an exhibit in due course. This Order summarizes
`statements made during the conference call. A more detailed record may be
`found in the transcript.
`
`
`
`2
`
`
`
`IPR2016-00204, IPR2016-01101, IPR2016-01242
`IPR2016-01245, IPR2016-01248
`Patent RE38,551 E
`
`
`During the call, Patent Owner initially indicated that it opposed the
`Motions for Joinder filed by the later Petitioners. Patent Owner pointed out
`that Petitioner Mylan, in IPR2016-01248, cited to additional evidence in its
`Motion for Joinder that is not of record in IPR2016-00204. In response, the
`later Petitioners, including Petitioner Mylan, agreed to assert arguments and
`evidence of record in IPR2016-00204 only, and not rely on any additional
`evidence raised in Petitions or Motions for Joinder filed by the later
`Petitioners. Patent Owner indicated that it would not oppose joinder of the
`later Petitioners under those circumstances.
`That said, Patent Owner indicated that it intended to file Patent Owner
`Preliminary Responses to all three Petitions filed by the later Petitioners.
`Patent Owner asserted that intervening case law, decided after we issued our
`Decision on Institution in IPR2016-00204, was relevant to a decision on
`institution in the other cases. We questioned Patent Owner about the need
`for Preliminary Responses in this instance, namely because we already have
`instituted trial in IPR2016-00204, the later Petitioners would serve in an
`understudy role in the case, and Patent Owner could make arguments
`regarding intervening case law in its Patent Owner Response in IPR2016-
`00204. Thus, it appeared to us that Patent Owner actually was requesting an
`opportunity to file an Opposition to the Motion for Joinder filed by the later
`Petitioners in each case, regardless of the “me-too” status of the Petitions in
`question.
`Upon consideration of the positions of all parties during the call, we
`authorized Patent Owner to file a 15-page paper in each of IPR2016-01101,
`IPR2016-01248, IPR2016-01242, and IPR2016-01245 in lieu of a full
`
`
`
`3
`
`
`
`IPR2016-00204, IPR2016-01101, IPR2016-01242
`IPR2016-01245, IPR2016-01248
`Patent RE38,551 E
`
`Preliminary Response in each case. In relation to each paper, we authorized
`Patent Owner to address the intervening case law issue it raised during the
`call, as well as allow Patent Owner to refer to its Patent Owner Preliminary
`Response and our Decision on Institution in IPR2016-00204 (Papers 9 and
`19), effectively allowing Patent Owner to incorporation by reference
`arguments or information in those papers, notwithstanding 37 C.F.R.
`§ 42.6(a)(3). Patent Owner shall style the papers as “Patent Owner
`Abbreviated Preliminary Response and Opposition to Petitioner’s Motion
`for Joinder.” Those papers are due by Friday, August 19, 2016. During the
`call, we indicated that we did not authorize Petitioners to file a reply to those
`papers, and clarified that Patent Owner will not file any other Patent Owner
`Preliminary Response in the respective cases.
`
`Accordingly, it is:
`ORDERED that Patent Owner is authorized to file, by Friday, August
`19, 2016, a 15-page paper styled “Patent Owner Abbreviated Preliminary
`Response and Opposition to Petitioner’s Motion for Joinder” in each of
`IPR2016-01101, IPR2016-01248, IPR2016-01242, and IPR2016-01245, as
`discussed above; and
`FURTHER ORDERD that no party is authorized to file any additional
`paper prior to a decision on institution in the respective cases, absent a
`request by the party and subsequent authorization by the Board.
`
`
`
`
`
`
`4
`
`
`
`IPR2016-00204, IPR2016-01101, IPR2016-01242
`IPR2016-01245, IPR2016-01248
`Patent RE38,551 E
`
`PETITIONER:
`Matthew J. Dowd
`Justin W. Crotty
`ANDREWS KURTH LLP
`MatthewDowd@andrewskurth.com
`justincrotty@andrewskurth.com
`
`PETITIONER:
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`PETITIONER:
`Matthew L. Fedowitz
`Daniel R. Evans
`MERCHANT & GOULD P.C.
`mfedowitz@merchantgould.com
`devans@merchantgould.com
`
`PETITIONER:
`Jeffer Ali
`Gary J. Speier
`CARLSON, CASPERS, VANDENBURGH,
` LINDQUIST & SCHUMAN, P.A.
`JAli@carlsoncaspers.com
`gspeier@carlsoncaspers.com
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2016-00204, IPR2016-01101, IPR2016-01242
`IPR2016-01245, IPR2016-01248
`Patent RE38,551 E
`
`PATENT OWNER:
`Andrea G. Reister
`Jennifer L. Robbins
`Enrique D. Longton
`COVINGTON & BURLING LLP
`areister@cov.com
`jrobbins@cov.com
`rlongton@cov.com
`
`
`
`6
`
`
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