Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: December 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01127 (US 8,685,930 B2)
`Case IPR2016-01128 (US 8,629,111 B2)
`Case IPR2016-01129 (US 8,624,556 B2)
`Case IPR2016-01130 (US 8,633,162 B2)
`Case IPR2016-01131 (US 8,648,048 B2)
`Case IPR2016-01132 (US 9,248,191 B2)1
`_______________
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`STANDING ORDER
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are common to the above-referenced cases.
`We, therefore, issue a single order that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: December 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01127 (US 8,685,930 B2)
`Case IPR2016-01128 (US 8,629,111 B2)
`Case IPR2016-01129 (US 8,624,556 B2)
`Case IPR2016-01130 (US 8,633,162 B2)
`Case IPR2016-01131 (US 8,648,048 B2)
`Case IPR2016-01132 (US 9,248,191 B2)1
`_______________
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`STANDING ORDER
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are common to the above-referenced cases.
`We, therefore, issue a single order that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`
`IPR2016-01127 (US 8,685,930 B2); IPR2016-01128 (US 8,629,111 B2);
`IPR2016-01129 (US 8,624,556 B2); IPR2016-01130 (US 8,633,162 B2);
`IPR2016-01131 (US 8,648,048 B2); IPR2016-01132 (US 9,248,191 B2)
`
`A. REQUESTS FOR CONFERENCE CALLS
`If the parties request a conference call, including an initial conference
`call, the parties must follow these procedures:
`1. Prior to requesting a conference call, the parties must confer in an
`effort to resolve any issue to be discussed with the Board, or be
`prepared to explain to the Board why such a conference was not
`possible.
`2. Parties may request a conference call by contacting the Board at
`the email address or telephone number listed above the caption of
`this Order. Requests via email are expected and preferred;
`requests via telephone should be reserved for time-critical
`circumstances. Requests by email must copy opposing counsel.
`Requests by telephone should include opposing counsel as
`practicable.
`3. The request must include a list of proposed issues and/or motions
`to be discussed during the call.
`4. The request may include a brief background discussion of the
`issue(s) and/or motion(s) to be discussed, but must not include
`arguments.
`5. The request must certify that the parties conferred in accordance
`with Section A.1 of this Order, and must indicate the result of the
`conference (e.g., whether the non-requesting party opposes or does
`not oppose the request).
`6. The request must include a list of dates and times when both
`parties are available for the call.
`
`2
`
`
`
`IPR2016-01127 (US 8,685,930 B2); IPR2016-01128 (US 8,629,111 B2);
`IPR2016-01129 (US 8,624,556 B2); IPR2016-01130 (US 8,633,162 B2);
`IPR2016-01131 (US 8,648,048 B2); IPR2016-01132 (US 9,248,191 B2)
`
`B. PROTECTIVE ORDER
`A protective order does not exist in this proceeding unless the parties
`file one and the Board approves it. If either party files a motion to seal
`before entry of a protective order, a jointly proposed protective order should
`be presented as an exhibit to the motion. We encourage the parties to adopt
`the Board’s default protective order if they conclude that a protective order
`is necessary. See Default Protective Order, Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012). If the parties choose
`to propose a protective order deviating from the default protective order,
`they must submit the proposed protective order jointly along with a redline
`comparison of the proposed and default protective orders showing the
`differences; and the parties must explain why the proposed deviations from
`the default protective order are necessary.
`The Board has a strong interest in the public availability of the
`proceedings. We advise the parties that redactions to documents filed in this
`proceeding should be limited to isolated passages consisting entirely of
`confidential information, and that the thrust of the underlying argument or
`evidence must be clearly discernible from the redacted versions. We also
`advise the parties that information subject to a protective order will become
`public if identified in a final written decision in this proceeding, and that a
`motion to expunge the information will not necessarily prevail over the
`public interest in maintaining a complete and understandable file history.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`3
`
`
`
`IPR2016-01127 (US 8,685,930 B2); IPR2016-01128 (US 8,629,111 B2);
`IPR2016-01129 (US 8,624,556 B2); IPR2016-01130 (US 8,633,162 B2);
`IPR2016-01131 (US 8,648,048 B2); IPR2016-01132 (US 9,248,191 B2)
`
`C. MOTIONS TO SEAL
`A party intending a document or thing to be sealed shall file a motion
`to seal concurrent with the filing of the document or thing to be sealed.
`37 C.F.R. § 42.14. The moving party must also file the following as exhibits
`accompanying the motion:
`1. A declaration explaining why the document or thing sought to be
`filed under seal is confidential or should otherwise be sealed.
`2. If seeking to file a portion of a document under seal, a redacted
`version of the document must be filed publicly.
`3. An unredacted version of the document must be filed
`confidentially (i.e., as available to the “Parties and Board Only”).
`The unredacted version must highlight or otherwise clearly
`indicate the portion(s) of the document that have been redacted in
`the redacted version.
`If the moving party is seeking to file under seal a document containing
`information designated confidential by the opposing party, the declaration in
`support of the motion to seal must identify the party that has designated the
`material as confidential (“the designating party”). Within five business
`days, the designating party must file a response to the motion to seal and file
`a declaration as an exhibit that explains why the designated information is
`confidential or should otherwise be sealed.
`
`D. MOTIONS TO AMEND
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. See 37 C.F.R. § 42.121(a). Patent Owner should
`
`4
`
`
`
`IPR2016-01127 (US 8,685,930 B2); IPR2016-01128 (US 8,629,111 B2);
`IPR2016-01129 (US 8,624,556 B2); IPR2016-01130 (US 8,633,162 B2);
`IPR2016-01131 (US 8,648,048 B2); IPR2016-01132 (US 9,248,191 B2)
`
`arrange for a conference call with the panel and opposing counsel at least two
`weeks before DUE DATE 1 to satisfy the requirement. We direct the parties
`to the Board’s website for representative decisions relating to Motions to
`Amend, among other topics. The parties may access these representative
`decisions
`at: http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.j
`sp.
`
`E. DISCOVERY DISPUTES
`The panel encourages the parties to resolve disputes relating to
`discovery on their own and in accordance with the precepts set forth in
`37 C.F.R. § 42.1(b). To the extent that a dispute arises between the parties
`relating to discovery, the parties shall meet and confer to resolve such a
`dispute before contacting the Board. If attempts to resolve the dispute fail, a
`party may request a conference call with the Board in accordance with
`Section A.1 of this Order to seek authorization to file a motion for relief.
`
`F. DEPOSITIONS
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14,
`2012) (Appendix D), apply to this proceeding. The Board may impose an
`appropriate sanction for failure to adhere to the Testimony Guidelines.
`37 C.F.R. § 42.12. For example, reasonable expenses and attorneys’ fees
`incurred by any party may be levied on a person who impedes, delays, or
`frustrates the fair examination of a witness.
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the deposition
`
`5
`
`
`
`IPR2016-01127 (US 8,685,930 B2); IPR2016-01128 (US 8,629,111 B2);
`IPR2016-01129 (US 8,624,556 B2); IPR2016-01130 (US 8,633,162 B2);
`IPR2016-01131 (US 8,648,048 B2); IPR2016-01132 (US 9,248,191 B2)
`
`rather than excerpts of only those portions being cited. After a deposition
`transcript has been submitted as an exhibit, all parties who subsequently cite
`to portions of the transcript shall cite to the first-filed exhibit rather than
`submitting another copy of the same transcript.
`
`G. MOTION FOR OBSERVATIONS ON CROSS-EXAMINATION
`A motion for observations on cross-examination provides the parties
`with a mechanism to draw the Board’s attention to relevant cross-
`examination testimony of a reply witness because no further substantive
`paper is typically permitted after the reply. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must
`be a concise statement of the relevance of precisely identified testimony to a
`precisely identified argument or portion of an exhibit. Each observation
`should not exceed a single, short paragraph. The opposing party may
`respond to the observation. Any response must be equally concise and
`specific. The parties may file one motion for observations per witness that is
`proffered with the reply.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2016-01127 (US 8,685,930 B2); IPR2016-01128 (US 8,629,111 B2);
`IPR2016-01129 (US 8,624,556 B2); IPR2016-01130 (US 8,633,162 B2);
`IPR2016-01131 (US 8,648,048 B2); IPR2016-01132 (US 9,248,191 B2)
`
`
`
`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 P. Whelan
`Michael Kane
`FISH & RICHARDSON P.C.
`whelan@fr.com
`
`
`7
`
`
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