Trials@uspto.gov
`Tel: 571-272-7822
`
` Paper No. 98
` Entered: November 3, 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.
`
`SAINT REGIS MOHAWK TRIBE,
`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, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PER CURIAM.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R § 42.5
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-
`00596, IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017-
`00599, IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and
`IPR2017-00601, have respectively been joined with the captioned
`proceedings.
`
`
`Tel: 571-272-7822
`
` Paper No. 98
` Entered: November 3, 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.
`
`SAINT REGIS MOHAWK TRIBE,
`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, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PER CURIAM.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R § 42.5
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-
`00596, IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017-
`00599, IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and
`IPR2017-00601, have respectively been joined with the captioned
`proceedings.
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`Over the past two weeks, we have received several requests via email
`regarding various issues. We address each issue below.
`1. Request for Briefing from Amicus Curiae
`On October 25, 2017, the Board received an e-mail from High Tech
`Inventors Alliance (HTIA) requesting leave to file a brief as an amicus
`curiae on the question presented in the Tribe’s motion to terminate.
`Ex. 3002.2 HTIA is a nonprofit corporation whose members are Adobe
`Systems, Inc.; Amazon.com, Inc.; Cisco Systems, Inc.; Dell Inc.; Google
`Inc.; Intel Corporation; Oracle Corporation; and salesforce.com, inc. Id.
`According to HTIA, its members are “frequent users of the Patent and
`Trademark Office’s inter partes review process [who] are also keenly
`interested in ensuring that the IPR process remains available to resolve
`questions of patentability in an efficient and timely manner.” Id. HTIA
`stated that the Tribe does not consent to its request. In a subsequent email,
`Petitioners indicated that they do not object to HTIA’s request.
`We recognize that we previously denied a request to file an amicus
`brief from the Association for Accessible Medicines (AAM). Paper 85, 5.
`At that time, the Tribe’s counsel stated that if AAM is permitted to file an
`amicus brief, then other tribes should be permitted to file amicus briefs in
`support of the Tribe’s motion. Id. Moreover, Petitioners stated that they did
`not support the filings if they would result in further delay of these
`
`
`2 All exhibits and paper numbers cited in this Order refer to those
`documents filed in IPR2016-01127. Similar papers and exhibits were filed
`in the other proceedings.
`
` 2
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`proceedings. Id. Now, however, Petitioners indicate that they do not object
`to HTIA’s briefing request.
`Given that the Tribe’s motion presents an issue of first impression for
`the Board and that the parties’ briefing on the motion is complete, we are
`persuaded that briefing from interested amici curiae is now warranted in
`these proceedings. Accordingly, we grant HTIA’s request to file an amicus
`brief of no more than 15 pages by December 1, 2017. Furthermore, we
`authorize briefing from any other amici curiae, which shall also be no more
`than 15 pages by December 1, 2017. To the extent possible, to avoid
`redundancy and in the interests of efficiency, we direct any interested amici
`who wish to present similar arguments to the Board to coordinate in their
`filing of a joint amicus brief. Arguments redundant to those already
`presented by the parties or other amici may not be considered.
`Petitioners and the Tribe are each authorized to file a single response
`to any amicus briefing by December 15, 2017. The responses shall be no
`longer than 15 pages.
`No further briefing is authorized at this time.
`2. Petitioners’ Request for a Surreply
`On October 25, 2017, we received a request from Petitioners for
`authorization to file a surreply in response to the Tribe’s reply in support of
`the motion to terminate. The Tribe opposes Petitioners’ request.
`In light of our authorization for the parties to file responses to the
`amicus briefs, we believe a surreply is unnecessary. Petitioners’ request for
`a surreply is therefore denied.
`
` 3
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`3. Allergan’s Renewed Request to Withdraw as Counsel
`During a prior conference call, Allergan’s counsel sought leave to file
`a motion to withdraw as counsel in these proceedings. Paper 85, 4. We
`denied that request, but stated that Allergan’s counsel may renew its request
`after briefing on the Tribe’s motion is complete. Id. On October 31, 2017,
`the Board received an email from Allergan’s counsel renewing its request
`for leave to file a motion to withdraw as counsel.
`Given the outstanding issue presented in the parties’ briefs as to
`whether Allergan retains an ownership interest in the challenged patents and
`in light of our decision to allow additional briefing from amici curiae, we
`again deny Allergan’s counsel’s request to file a motion to withdraw without
`prejudice. Allergan’s counsel may renew the request once all briefing is
`complete. At that time, Allergan’s counsel should confer with Petitioners
`and indicate in its request whether Petitioners oppose the motion to
`withdraw.
`4. Statutory Deadline
`We instituted inter partes review in each of these proceedings on
`December 8, 2017. Paper 8. According to 35 U.S.C. § 316(a)(11), we must
`issue a final written decision in an inter partes review no later than one year
`after institution, except that the Director “may adjust the time periods in this
`paragraph in the case of joinder under section 315(c).” See also 37 C.F.R.
`§ 42.100(c) (“The time [for entering a final written decision] can be . . .
`adjusted by the Board in the case of joinder.”). Because these proceedings
`were joined with the proceedings filed by Teva Pharmaceuticals USA, Inc.
`
` 4
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`and Akorn Inc. under 35 U.S.C. § 315(c) (Papers 18 and 19), we adjust the
`deadline to enter a final written decision to April 6, 2018.
`
`Accordingly, based on the foregoing, it is:
`ORDERED that High Tech Inventors Alliance’s request for
`authorization to file a brief as amicus curiae on the issues presented in the
`Tribe’s motion to terminate is granted;
`FURTHER ORDERED that any other amicus curiae who wishes to
`file a brief related to the Tribe’s motion to terminate is authorized to do so;
`FURTHER ORDERED that any amicus brief shall be no longer than
`15 pages and shall be filed no later than December 1, 2017;
`FURTHER ORDERED that the parties may each file a single
`response to the amicus briefs;
`FURTHER ORDERED that the parties’ responses to the amicus briefs
`shall be limited to 15 pages and filed by December 15, 2017;
`FURTHER ORDERED that Petitioners’ request for a surreply to the
`Tribe’s motion to terminate is denied;
`FURTHER ORDERED that Allergan’s counsel’s request for
`authorization to file a motion to withdraw as counsel is denied without
`prejudice;
`FURTHER ORDERED that Allergan’s counsel may renew the
`request to withdraw after amicus briefing and the parties’ responses are
`complete; and
`FURTHER ORDERED that the time to enter a final written decision
`in these proceedings is adjusted to April 6, 2018.
`
` 5
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`
`PETITIONER MYLAN:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`PETITIONER TEVA:
`
`Gary Speier
`Mark Schuman
`CARLSON, CASPERS, VANDENBURH,
`LINDQUIST & SCHUMAN, P.A.
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`
`PETITIONER AKORN:
`
`Michael Dzwonczyk
`Azadeh Kokabi
`Travis Ribar
`SUGHRUE MION, PLLC
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`
`
`
`
`
`
` 6
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`
`PATENT OWNER:
`
`Dorothy P. Whelan
`Michael Kane
`Susan Coletti
`Robert Oakes
`FISH & RICHARDSON P.C.
`whelan@fr.com
`PTABInbound@fr.com
`coletti@fr.com
`oakes@fr.com
`
`
`Alfonso Chan
`Michael Shore
`Christopher Evans
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`mshore@shorechan.com
`cevans@shorechan.com
`
`Marsha Schmidt
`marsha@mkschmidtlaw.com
`
`
`
`
` 7
`
`
`
`
`
`
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