`571-272-7822
`
`
`
`Paper 68
`Entered: January 26, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERIGEN PHARMACEUTICALS LIMITED and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-002861
`Patent 8,822,438 B2
`____________
`
`
`Before LORA M. GREEN, RAMA G. ELLURU, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 Case IPR2016-01317 has been joined with this proceeding.
`
`
`
`IPR2016-00286
`Patent 8,822,438 B2
`
`
`In an e-mail to the Board dated January 24, 2017, Patent Owner
`requested a conference call with the Board to address what Patent Owner
`believes to be new evidence and arguments provided in Petitioner’s Reply,
`and to discuss seeking relief in the form of a motion to strike, a Patent Owner
`surreply, or any other relief that the Board may consider appropriate.
`The panel has considered Patent Owner’s request, and we are
`unpersuaded that a motion to strike or a Patent Owner surreply is warranted at
`this juncture. Insofar as Patent Owner would like to make of record those
`portions of Petitioner’s Reply it believes are new arguments, Patent Owner is
`authorized to file a paper calling the Board’s attention to specific portions of
`Petitioner’s Reply that Patent Owner believes raise new arguments. The paper
`will be in the form of a numbered, itemized list, providing the paper, page,
`and line number location only, of any portion of Petitioner’s Reply that Patent
`Owner wishes to draw to the Board’s attention as alleged new argument.
`Patent Owner’s paper shall not include any substantive arguments. The paper
`is limited to two (2) pages and must be filed no later than three (3) business
`days from the date of this order.
`We also authorize Petitioner to file a paper in response to Patent
`Owner’s submission. If filed by Petitioner, this paper will identify,
`corresponding in the same numbering and itemized manner to Patent Owner’s
`list, what Petitioner regards as the material contained in the Patent Owner
`Response, by paper, page, and line number only, that triggered or caused the
`Petitioner to include in its Reply each item listed by Patent Owner and/or
`where each item listed by Patent Owner appears in the Petition, again, by
`paper, page, and line number only. Petitioner’s paper, if filed, also will not
`contain any substantive arguments. Petitioner’s paper is also limited to two
`
`
`
`2
`
`
`
`IPR2016-00286
`Patent 8,822,438 B2
`
`(2) pages and must be filed, if at all, no later than three (3) business days from
`the date of Patent Owner’s filing.
`The Board will consider the information submitted by each party in
`making the Final Written Decision to determine what weight, if any, is to be
`given to all of the presented evidence and arguments in accordance with the
`rules of the Board.
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties are authorized to file the above-discussed
`papers consistent with the requirements and deadlines set forth in this Order.
`
`3
`
`
`
`
`
`IPR2016-00286
`Patent 8,822,438 B2
`
`
`FOR PETITIONERS:
`
`William Hare
`bill@miplaw.com
`
`Gabriela Materassi
`materassi@miplaw.com
`
`Teresa Stanek Rea
`trea@crowell.com
`
`Shannon M. Lentz
`slentz@crowell.com
`
`
`
`FOR PATENT OWNER:
`
`Dianne B. Elderkin
`delderkin@akingump.com
`
`Barbara L. Mullin
`bmullin@akingump.com
`
`Ruben H. Munoz
`rmunoz@akingump.com
`
`
`4
`
`
`
`