Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 6 (IPR2016-01111)
`Paper 6 (IPR2016-01112)
`Entered: August 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DR. REDDY’S LABORATORIES, LTD. AND DR. REDDY’S
`LABORATORIES, INC.,
`
`Petitioner,
`v.
`MONOSOL RX, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01111 (Patent 8,603,514 B2)
` Case IPR2016-01112 (Patent 8,017,150 B2)
`____________
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 6 (IPR2016-01111)
`Paper 6 (IPR2016-01112)
`Entered: August 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DR. REDDY’S LABORATORIES, LTD. AND DR. REDDY’S
`LABORATORIES, INC.,
`
`Petitioner,
`v.
`MONOSOL RX, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01111 (Patent 8,603,514 B2)
` Case IPR2016-01112 (Patent 8,017,150 B2)
`____________
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2016-01111 (8,603,514 B2)
`IPR2016-01112 (8,017,150 B2)
`
`
`On August 1, 2016, a conference call was conducted between
`respective counsel for the parties and Judges Franklin, Hulse, Paulraj,
`Scheiner, and Yang.1,2 The purpose of the call was to discuss Patent
`Owner’s, Monosol RX, LLC, request for authorization to file a motion for
`additional discovery under 37 C.F.R. § 42.51(b)(2) concerning real parties-
`in-interest and parties in privity with Petitioner, Dr. Reddy’s Laboratories,
`Ltd. and Dr. Reddy’s Laboratories, Inc..
`During the call, counsel for Patent Owner represented that they had
`reason to believe that Teva Pharmaceuticals (“Teva”) is a real party-in-
`interest and is in privity with Petitioner based on the recent press
`announcement of an agreement with Teva concerning the acquisition of a
`portfolio of eight Abbreviated New Drug Applications (“ANDAs”) as well
`as a related notice by the Federal Trade Commission (“FTC”). In view of
`those public announcements, Patent Owner asserts that the agreement with
`Teva covered Saboxone®, the drug at issue in the underlying patent
`infringement litigation between the parties. As a result, Patent Owner seeks
`authorization to serve requests for production relating to that agreement.
`Petitioner’s counsel asserted that Patent Owner’s basis for the
`requested discovery is speculative and, in any event, the agreement had not
`
`
`
` 1
`
` The conference call also covered a similar request in IPR2016-01113,
`which involves a different Patent Owner and is assigned to a different panel
`than the above-captioned proceedings. The remainder of this order
`addresses the above-captioned proceedings only. A similar order will issue
`in IPR2016-01113.
`2 Patent Owner Monosol arranged for a court reporter to be present on the
`call. We instructed the Patent Owners to file a copy of the transcript as an
`exhibit in each proceeding.
`
`2
`
`
`
`
`
`IPR2016-01111 (8,603,514 B2)
`IPR2016-01112 (8,017,150 B2)
`
`been finalized during the relevant time period with respect to establishing
`privity. Petitioner also raised confidentiality concerns about the production
`of such agreement and related documents.
`After considering the general statements regarding the respective
`positions of Patent Owner and Petitioner, we authorize Patent Owner to file
`a Motion for Additional Discovery, limited to the requests for production of
`documents described by Patent Owner during the call. Patent Owner shall
`include the specific requests for production as an Appendix to its Motion.
`The Motion should be no more than 15 pages, exclusive of any supporting
`declarations or other evidence, and filed within one week of the entry of this
`Order. We authorize Petitioner to file an Opposition to the Motion for
`Additional Discovery, also within a 15-page limit exclusive of any
`supporting declarations or other evidence, and due within one week of
`Patent Owner’s filing of the Motion for Additional Discovery. Petitioner
`shall clarify in its Opposition which of the requested documents, if any, it is
`willing to produce without contest. No further briefing is authorized at this
`point.
`
`Patent Owner’s Motion and Petitioner’s Opposition should each
`reflect consideration and exemplification of the five “Garmin” factors when
`discussing whether the additional discovery at issue is “necessary in the
`interest of justice.” 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2); Garmin
`Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 5–7
`(PTAB Mar. 5, 2013) (Paper 26) (precedential).
`In view of the confidentiality concerns raised by Petitioner during the
`call, the parties shall meet and confer regarding an appropriate protective
`order to be entered in this proceeding that would cover the requested
`
`3
`
`
`
`
`
`IPR2016-01111 (8,603,514 B2)
`IPR2016-01112 (8,017,150 B2)
`
`discovery, if necessary. The entry of a protective order is necessary if either
`party seeks to file a motion to seal. In such case, we recommend the default
`protective order in the Office Trial Practice Guide. 77 Fed. Reg. 48,756,
`Appendix B (Aug. 14, 2012). If the parties choose to deviate from the
`default protective order, a conference with the Board shall be requested for
`such guidance. Any proposed protective order may be filed separately from
`the authorized Motion and Opposition papers, at a time prior to or along
`with any motion to seal.
`
`ORDER
`In accordance with the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file a Motion for
`
`Additional Discovery under 37 C.F.R. § 42.51(b)(2) in IPR2016-01111 and
`IPR2016-01112 within one week of entry of this Order, limited to 15 pages;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`Opposition to Patent Owner’s Motion for Additional Discovery within one
`week after Patent Owner’s Motion is filed, limited to 15 pages;
`
`FURTHER ORDERED that, in its Motion, Patent Owner should
`identify specifically the scope of each request for production of documents
`that Patent Owner proposes;
`
`FURTHER ORDERED that, the parties shall address specifically each
`of the Garmin factors with respect to each item of additional discovery
`requested;
`
`FURTHER ORDERED that, in its Opposition, Petitioner should
`identify specifically whether and to what extent Petitioner opposes Patent
`Owner’s requested additional discovery;
`
`4
`
`
`
`
`
`IPR2016-01111 (8,603,514 B2)
`IPR2016-01112 (8,017,150 B2)
`
`FURTHER ORDERED that Patent Owner is instructed to file in both
`
`proceedings, a copy of the transcript provide by the court reporter.
`
`PETITIONER:
`
`Jeffery Arnold
`Peter Hagerty
`Andrew Ryan
`Leslie-Anne Maxwell
`CANTOR COLBURN LLP
`jarnold@cantorcolburn.com
`phagerty@cantorcolburn.com
`amaxwell@cantorcolburn.com
`ryan@cantorcolburn.com
`
`PATENT OWNER:
`
`Harold Fox
`John L. Abramic
`STEPTOE & JOHNSON LLP
`hfox@steptoe.com
`jabramic@steptoe.com
`
`
`
`
`
`5
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