`571-272-7822
`
`
`
`Paper 53
`Entered: December 13, 2016
`
`
`
`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
`
`
`Upon authorization, Patent Owner moves to file three exhibits, Exhibits
`2033–2035, that were “mistakenly omitted from Patent Owner’s October 4,
`2016 filing” of its Patent Owner Response. Paper 49 (“Mot.”), 1. The Board
`authorized limited briefing on the issue of whether to grant Patent Owner’s
`request for “authorization to correct a clerical error and file Exhibits 2033,
`2034, and 2035, which were inadvertently omitted from Patent Owner’s
`October 4, 2016 filing.” Paper 48. Petitioner filed an opposition. Paper 51
`(“Opp.”).
`Patent Owner argues that these exhibits were introduced and marked
`Exhibits 2033, 2034, and 2035, and provided to Petitioner’s counsel, during
`the September 1, 2016 deposition of Petitioner’s declarant Dr. DeForest
`McDuff. Id. Patent Owner represents that Patent Owner’s declarant, Dr.
`Christopher A. Vellturo, expressly relied on Exhibits 2033–2035 in preparing
`his declaration, and discussed an Appendix using the Exhibits in the body of
`his declaration. Id. Dr. Vellturo’s first declaration was submitted with the
`Response on October 4, 2016; a corrected declaration was submitted on
`October 12, 2016. Ex. 2044. On October 18, 2016, upon notification by
`Petitioner that Exhibits 2033–2035 were missing, Patent Owner served copies
`of those Exhibits on Petitioner the same day. Ex. 2121. Patent Owner argues
`that “(1) Patent Owner’s mistake was inadvertent and clerical, (2) Petitioners
`will not be prejudiced, and (3) it is in the public interest to maintain a
`complete and understandable file history for public notice purposes.” Mot. 2.
`Petitioner argues that it would be prejudiced by Patent Owner’s late
`filing of Exhibits 2033–2035 because Petitioners have little leeway to obtain
`additional time to submit their Reply. Opp. 1. Petitioner acknowledges that
`Patent Owner’s counsel contacted Petitioner’s counsel on October 7, 2016,
`
`
`
`2
`
`
`
`IPR2016-00286
`Patent 8,822,438 B2
`
`requesting permission to correct calculations in certain Appendices to the
`Vellturo Declaration (Ex. 2044), but neither original nor replacement version
`of the Vellturo Declaration describes what Exhibits 2033–2035 are. Id. at 2.
`Petitioner separately wrote to Patent Owner’s counsel advising that these
`exhibits were missing. Id. Petitioner represents that Patent Owner’s counsel
`attached the exhibits in an email to Petitioner’s counsel two weeks after the
`Patent Owner’s Response was filed. Id. at 3.
`Patent Owner’s explanation acknowledges that an error was made, and
`states that steps have been taken to address the error. The error
`notwithstanding, Petitioner was given copies of the exhibits during the
`deposition of Dr. McDuff on September 1, 2016. Patent Owner failed to file
`the Exhibits with its Response, but referenced them in the Appendices to the
`Vellturo Declaration. Thus, at an absolute minimum, Petitioner had copies of
`the Exhibits at issue, and was on notice that Patent Owner intended to rely on
`these Exhibits at the filing of the Response. The totality of the evidence
`before us persuades us that Petitioner would not be prejudiced if Exhibits
`2033–2035 are placed in the record. We determine that allowing Exhibits
`2033–2035 to be filed would be in the interests of justice and in the interests
`of having a complete record. 37 C.F.R. § 42.5(a), (c)(3).
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner may file Exhibits 2033–2035.
`
`3
`
`
`
`
`
`
`
`IPR2016-00286
`Patent 8,822,438 B2
`
`
`FOR PETITIONERS:
`
`William Hare
`bill@miplaw.com
`
`Gabriela Materasssi
`materassi@miplaw.com
`
`Teresa Rea
`trea@crowell.com
`
`Shannon Lentz
`slentz@crowell.com
`
`
`
`FOR PATENT OWNER:
`
`Dianne Elderkin
`delderkin@akingump.com
`
`Barbara Mullin
`bmullin@akingump.com
`
`Ruben Munoz
`rmunoz@akingump.com
`
`
`
`4
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