`Tel: 571-272-7822
`
`
`Paper 22
`Entered: May 16, 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, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`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.”
`
`
`
`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)
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
` A
`
` conference call was held on May 15, 2017, between respective
`counsel for Petitioners and Patent Owner, and Judges Snedden, Hulse and
`Paulraj. Petitioners requested the conference call to seek authorization to
`file a motion for discovery. See 37 C.F.R. § 42.51. In particular, in an email
`correspondence sent to the Board, Petitioners represented that they seek “the
`data underlying the study results it and its witnesses rely upon to establish
`criticality of, and unexpected results for, the claimed combination of
`cyclosporin A and castor oil.”
`Patent Owner opposed Petitioners’ request, arguing, inter alia, that
`Petitioners’ request is overly burdensome to answer and that Petitioners have
`failed to articulate why the requested information is relevant. 35 U.S.C.
`§ 316(a)(5).
`Upon consideration of the parties’ arguments, we determined that
`briefing on the matter is warranted for us to determine if it is in the interests
`of justice to allow the requested discovery in order for Petitioners to develop
`fully its rebuttal to Patent Owner’s Response. Therefore, Petitioners are
`authorized to file a single motion for additional discovery, and Patent Owner
`is permitted to file an opposition to that motion.
`
`Accordingly, it is hereby:
`ORDERED that Petitioners are authorized to file a motion for
`additional discovery under 37 C.F.R. § 42.51 no later than May 18, 2017.
`
` 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)
`
`The motion is limited to 7 pages.
`FURTHER ORDERED that Patent Owner is authorized to file an
`opposition to Petitioners’ motion for additional discovery no later than May
`23, 2017. The opposition is limited to 7 pages.
`FURTHER ORDERED that no reply brief is authorized at this time.
`
`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
`Susan Coletti
`Robert Oakes
`FISH & RICHARDSON P.C.
`IPR13351-0008IP1@fr.com/ IPR13351-0008IP2@fr.com/ IPR13351-
`0008IP3@fr.com/ IPR13351-0008IP4@fr.com / IPR13351-
`0008IP5@fr.com/ IPR13351-0008IP6@fr.com
`PTABInbound@fr.com
`coletti@fr.com
`oakes@fr.com
`
`
` 3
`
`
`
`
`
`
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