`Tel: 571-272-7822
`
`
`Paper 34
`Entered: June 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS
`USA, INC., and AKORN INC.
`Petitioners,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`____________
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2) 1
`_______________
`
`
`
`Before SHERIDAN K. SNEDDEN and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The parties
`are authorized to use this style heading when filing a single paper in each
`proceeding, provided that such heading includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the heading.”
`
`
`
`
`
`
`
`In an email correspondence sent to the Board June 7, 2017, Petitioners
`requested a conference call to resolve a dispute between the parties
`regarding the scope of our discovery order entered May 31, 2017. The
`relevant portion of the email reads as follows:
`The parties appear to agree that the data underlying Schiffman
`Exhibits B, D, E, F and Attar Exhibits C and D is clinical trial
`data, not PK data, but Patent Owner’s position is that the Board’s
`discovery order does not require the production of the data
`underlying these particular exhibits unless it is PK data.
`A conference call was held on June 9, 2017 between respective
`counsel for Petitioners and Patent Owner, and Judges Snedden and Paulraj.
`On the call, we agreed with Patent Owner that the language in our order
`expressly refers to “the pharmacokinetic (“PK”) data underlying Schiffman
`Exhibits B–F and Attar Exhibits B–D.” See e.g., Paper 28, IPR2016-01127.
`We further explained, however, that in order for us to fully consider
`Schiffman Exhibits B, D, E, F and Attar Exhibits C and D (Ex. 1004, 198–
`242), the underlining clinical trial data would need to be produced. Patent
`Owner indicated that, while its Patent Owner Reponses reference the
`Schiffman and Attar declarations,2 Schiffman Exhibits B, D, E, F and Attar
`Exhibits C and D are not necessary to support its case.
`In view of Patent Owner’s representation that it does not rely on
`Schiffman Exhibits B, D, E, F and Attar Exhibits C and D to support its
`Patent Owner Reponses, we limit the scope of our discovery order to PK
`data only, and exclude clinical trial data. As the parties agree that the data
`underlying Schiffman Exhibits B, D, E, F and Attar Exhibits C and D is
`clinical trial data, not PK data, Schiffman Exhibits B, D, E, F and Attar
`
`
`2 See e.g., Paper 16, 21 in IPR2016-01127.
`
` 2
`
`
`
`
`
`
`
`
`
`Exhibits C and D are outside the scope of our discovery order. Furthermore,
`because Patent Owner will not produce the clinical trial data underlying
`Schiffman Exhibits B, D, E, F and Attar Exhibits C and D, those exhibits
`and related testimony are entitled to no weight and will not be considered in
`determining patentability of the challenged claims. 37 C.F.R. § 42.65.
`Accordingly, it is hereby:
`SO ORDERED.
`
`PETITIONER:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`PATENT OWNER:
`
`Dorothy Whelan
`Michael Kane
`Susan Coletti
`Robert Oakes
`Jonathan Singer
`FISH & RICHARDSON P.C.
`IPR13351-0008IP2@fr.com
`PTABInbound@fr.com
`coletti@fr.com
`oakes@fr.com
`singer@fr.com
`
` 3
`
`
`
`
`
`
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