`571-272-7822
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` Paper 8
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` Entered: March 31, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J KYLE BASS and ERICH SPANGENBERG,
`Petitioner,
`
`v.
`
`FRESENIUS KABI USA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00254
`Patent 8,476,010 B2
`____________
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
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`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2016-00254
`Patent 8,476,010 B2
`
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`A conference call was held on March 30, 2016, among counsel for the
`parties and Judges Mitchell, Yang, and Hulse. Patent Owner initiated the
`call to request authorization to file a motion for additional discovery in the
`form of interrogatories on the subject of real parties-in-interest.
`The Petition was filed by J. Kyle Bass and Erich Spangenberg.
`Messrs. Bass and Spangenberg have also filed other petitions for inter partes
`review through a number of corporate entities, including various “Coalition
`for Affordable Drugs LLC” entities. Because those other entities were not
`named in the instant Petition as real parties-in-interest, Patent Owner seeks
`specific information regarding whether those other persons or entities were
`involved in the Petition in this proceeding.
`In response, Petitioner argues that Patent Owner’s request is based on
`speculation that any other entity is involved in this proceeding. Petitioner
`further states that although Messrs. Bass and Spangenberg have filed other
`petitions for inter partes review through corporate entities, they have filed
`this Petition in their personal capacity.
`At this stage of the proceeding, we are not inclined to authorize
`briefing on this issue. Patent Owner has already filed its Patent Owner
`Preliminary Response (Paper 6), and we have not determined whether to
`institute trial in this case. Patent Owner’s request is, therefore, premature at
`this time. If we decline to institute trial, Patent Owner’s request for
`additional discovery will be moot. If we do institute trial, Patent Owner may
`renew its request for discovery at the appropriate time, and we can address
`the merits at that time.
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`2
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`IPR2016-00254
`Patent 8,476,010 B2
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`ORDER
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`Accordingly, it is
`ORDERED that Patent Owner’s request for authorization to file a
`motion for additional discovery regarding real parties-in-interest is denied
`without prejudice; and
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`FURTHER ORDERED that if trial is instituted, Patent Owner may
`renew its request at the appropriate time.
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`PETITIONER:
`
`Dr. Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Christopher Casieri
`MCNEELY, HARE & WAR LLP
`chris@miplaw.com
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`PATENT OWNER:
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`Eleanor M. Yost
`April E. Weisbruch
`GOODWIN PROCTER LLP
`eyost@goodwinprocter.com
`aweisbruch@goodwinprocter.com
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`3
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