`571-272-7822
`
`
`
`
`Paper 8
`
`Entered: August 4, 2016
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`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.
`INVIDIOR UK LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-01113
`Patent 8,475,832 B2
`
`____________
`Before TONI R. SCHEINER and ZHENYU YANG,
`Administrative Patent Judges.
`
`SCHEINER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2016-01113
`Patent 8,475,832 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 The purpose of the call was to discuss Patent Owner
`Invidior UK Limited’s (“Invidior”) 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. The conference call
`also covered a similar request in Cases IPR2016-01111 and IPR2016-01112,
`which involve a different Patent Owner and are assigned to a different panel
`than the above-captioned proceeding. The remainder of this order addresses
`the above-captioned proceeding only. A similar order will issue in
`IPR2016-01111 and IPR2016-01112.
`During the call, counsel for Patent Owner in IPR2016-01111 and
`IPR2016-01112, Monosol RX, LLC (“Monosol”), speaking for both Patent
`Owners, represented that Patent Owners 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
`Owners assert that the agreement with Teva covered Suboxone®, the drug at
`issue in the underlying patent infringement litigation between the parties.
`
`
`
` 1
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` Patent Owner in IPR2016-01111 and IPR2016-01112 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 their respective proceedings.
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`2
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`IPR2016-01113
`Patent 8,475,832 B2
`
`As a result, Patent Owner Invidior 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
`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
`
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`3
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`IPR2016-01113
`Patent 8,475,832 B2
`
`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
`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 IPR2016-01113
`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;
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`IPR2016-01113
`Patent 8,475,832 B2
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`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;
`
`FURTHER ORDERED that Patent Owner is instructed to file a copy
`of the transcript provided by the court reporter.
`
`
`
`
`
`
`PETITIONER:
`Jeffery B. Arnold
`Leslie-Anne Maxwell, Ph.D.
`Peter R. Hagerty
`Andrew C. Ryan
`CANTOR COLBURN LLP
`jarnold@cantorcolburn.com
`amaxwell@cantorcolburn.com
`phagerty@cantorcolburn.com
`ryan@cantorcolburn.com
`
`PATENT OWNER:
`Andrea G. Reister
`Enrique D. Longton
`COVINGTON & BURLING LLP
`areister@cov.com
`rlongton@cov.com
`
`Dustin B. Weeks
`TROUTMAN SANDERS LLP
`dustin.weeks@troutmansanders.com
`
`
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`5
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