UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS, INC.,
`Petitioners
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`
`
`
`
`
`
`
`
`Case IPR2016-00829
`Patent 9,095,559
`
`
`
`
`
`
`
`
`
`PATENT OWNER HORIZON THERAPEUTICS, LLC’S
`NOTICE OF APPEAL
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22313
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS, INC.,
`Petitioners
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`
`
`
`
`
`
`
`
`Case IPR2016-00829
`Patent 9,095,559
`
`
`
`
`
`
`
`
`
`PATENT OWNER HORIZON THERAPEUTICS, LLC’S
`NOTICE OF APPEAL
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22313
`
`
`
`
`
`
`
`
`IPR2016-00829
`Patent No. 9,095,559
`Patent Owner Horizon’s Notice of Appeal
`
`
`Notice is hereby given, pursuant to 35 U.S.C. §§ 141(c), 142, 319; 37 C.F.R.
`
`§ 90.2(a), 90.3(a); and Federal Circuit Rule 15(a), that Patent Owner Horizon
`
`Therapeutics, LLC (“Horizon”) appeals from the Final Written Decision of the
`
`Patent Trial and Appeal Board (“Board”) entered on September 26, 2017 (Paper No.
`
`42) in the above-captioned inter partes review of U.S. Patent No. 9,095,559 (“the
`
`’559 patent”) to the United States Court of Appeals for the Federal Circuit.
`
`Horizon’s appeal includes any underlying orders, decisions, rulings, and opinions as
`
`well as any issues raised during these proceedings. This notice is timely filed
`
`within 63 days of the Board’s Final Written Decision. 37 C.F.R. § 90.3(a)(1).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Horizon states that the issues
`
`on appeal include, but are not limited to:
`
`(1)
`
`the Board’s failure to observe procedure required by law, including,
`
`but not limited to, 5 U.S.C. § 554, 556, and 557, 35 U.S.C. § 316,
`
`including, for example, by basing its Final Written Decision on facts
`
`and/or law other than those advanced in the Petition or stated to be part
`
`of the grounds upon which trial was instituted in the Institution
`
`Decision;
`
`(2)
`
`the Board’s violation of Horizon’s Due Process rights under U.S.
`
`Constitution Amendment V by failing to provide requisite notice and
`
`2
`
`
`
`IPR2016-00829
`Patent No. 9,095,559
`Patent Owner Horizon’s Notice of Appeal
`
`
`
`a full and fair opportunity to respond, including, for example, by
`
`basing its Final Written Decision on facts and/or law other than those
`
`advanced in the Petition or stated to be part of the grounds upon which
`
`trial was instituted in the Institution Decision;
`
`(3)
`
`the Board exceeding its statutory authority, including, for example, by
`
`basing its Final Written Decision on facts and/or law other than those
`
`advanced in the Petition or stated to be part of the grounds upon which
`
`trial was instituted in the Institution Decision;
`
`(4)
`
`the Board’s impermissible shifting of the burden to Horizon to show
`
`patentability of the challenged ’559 patent claims in violation of 35
`
`U.S.C. § 316(e), 5 U.S.C. § 556(d), and 37 C.F.R. § 42.20(c);
`
`(5)
`
`the Board’s determination
`
`that Petitioner has proved by a
`
`preponderance of the evidence that claims 1-15 of the ’559 patent are
`
`unpatentable under 35 U.S.C. § 103, including, without limitation, the
`
`Board’s construction and application of the claim language, the
`
`Board’s interpretation of the references, and the Board’s interpretation
`
`of expert evidence;
`
`(6)
`
`the Board’s determination of obviousness of claims 1-15 of the ’559
`
`patent without support of substantial evidence;
`
`3
`
`
`
`IPR2016-00829
`Patent No. 9,095,559
`Patent Owner Horizon’s Notice of Appeal
`
`
`
`the Board’s Final Written Decision’s dependence upon
`
`(7)
`
`misinterpretation of the prior art;
`
`(8) whether inter partes review violates Horizon’s rights under U.S.
`
`Constitution Amendment VII by extinguishing private property rights
`
`through a non-Article III forum without a jury; and
`
`(9)
`
`any findings or determinations related to issues (1)-(8) as well as all
`
`other issues decided adversely to Horizon in any orders, decisions,
`
`rulings and/or opinions.
`
`Simultaneous with this submission, Horizon is filing a true and correct copy
`
`of this Notice of Appeal with the Director of the U.S. Patent and Trademark Office
`
`and electronically filing the same, along with the required docketing fees, with the
`
`Clerk of the U.S. Court of Appeals for the Federal Circuit as set forth in the
`
`accompanying Certificate of Filing.
`
`
`
`Date: November 22, 2017
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/Robert F. Green
`Robert F. Green
`Registration No. 27,555
`Counsel for Patent Owner,
`Horizon Therapeutics, LLC
`
`4
`
`
`
`
`
`CERTIFICATE OF FILING
`
`The undersigned hereby certifies that, in addition to being electronically
`
`filed through USPTO Patent Trial and Appeal Board End-to-End System, a true
`
`and correct copy of the above-captioned “PATENT OWNER HORIZON
`
`THERAPEUTIC LLC’S NOTICE OF APPEAL” is being filed by hand with the
`
`Director of the U.S. Patent and Trademark Office on November 22, 2017, at the
`
`following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22313
`
`
`The undersigned also hereby certifies that a true and correct copy of the
`
`above-captioned “PATENT OWNER HORIZON THERAPEUTIC LLC’S
`
`NOTICE OF APPEAL” and the filing fee is being filed via the electronic filing
`
`system, CM/ECF, with the Clerk’s Office of the U.S. Court of Appeals for the
`
`Federal Circuit on November 22, 2017.
`
`Dated: November 22, 2017
`
`
`
`
`Respectfully submitted,
`
`/s/Robert F. Green
`Robert F. Green
`Registration No. 27,555
`Counsel for Patent Owner,
`Horizon Therapeutics, LLC
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 22, 2017, a copy of the foregoing
`
`
`
`“PATENT OWNER HORIZON THERAPEUTIC LLC’S NOTICE OF APPEAL”
`
`was served via electronic mail, as agreed to by counsel, upon the following counsel
`
`for the Petitioners:
`
`Elizabeth J. Holland: eholland@goodwinlaw.com
`
`Cynthia Lambert Hardman: chardman@goodwinlaw.com
`
`Robert V. Cerwinski: rcerwinski@goodwinlaw.com
`
`/s/Robert F. Green
`Robert F. Green
`Registration No. 27,555
`Counsel for Patent Owner,
`Horizon Therapeutics, LLC
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
