`571.272.7822
`
`
`
`
`
`
`
`
` Paper No. 19
`
` Entered: April 3, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC., APOTEX CORP., APOTEX PHARMACEUTICALS
`HOLDINGS INC., AND APOTEX HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`OSI PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01284
`Patent 6,900,221 B1
`____________
`
`
`Before LORA M. GREEN, RAMA G. ELLURU, and ZHENYU YANG,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Motion to Limit Petition
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`IPR2016-01284
`Patent 6,900,221 B1
`
`
`On February 8, 2017, the parties filed a Motion to Limit Petition
`Under 37 C.F.R. § 42.71. Paper 12. Specifically, the parties aver that they
`are “involved in a litigation concerning the ’221 patent in the United States
`District Court for the District of Delaware, OSI Pharms., LLC and
`Genentech, Inc., v. Apotex, Inc. and Apotex Corp., C.A. No. 1:15-cv-00772-
`GMS-SRF.” Id. at 2. The parties state that they filed a stipulated order in
`that litigation agreeing to stay the litigation pending the outcome of this inter
`partes review proceeding, and also that they would seek to narrow the issues
`by removing claim 47 from the litigation, as well seeking to remove it from
`this proceeding. Id. at 2‒3.
`The Petition presents challenges as to claims 44‒47 and 53 of the ’221
`patent (Paper 3, 4‒5), and the motion seeks to remove claim 47. As noted
`by the parties in the motion, the Board has yet to proceed to oral hearing or
`final written decision. Id. at 3. The parties have filed a true copy of the
`stipulated order in the co-pending district court litigation as Exhibit 2016.
`Id. In addition, limiting the proceeding facilitates the Board’s goal of
`resolving these inter partes reviews in a just, speedy and inexpensive
`manner. 37 C.F.R. § 42.1(b).
`Accordingly, it is:
`ORDERED, that the parties Motion to Limit is GRANTED; and
`FURTHER ORDERED, that the grounds in this proceeding is limited
`to claims 44‒46 and 53 rendered obvious by the combination of Schnur and
`OSI’s 10-K or Gibbs.
`
`
`
`
`2
`
`
`
`IPR2016-01284
`Patent 6,900,221 B1
`
`PETITIONER:
`
`Aaron S. Lukas
`W. Blake Coblentz
`Cozen O’Connor
`
`wcoblentz@cozen.com
`alukas@cozen.com
`
`PATENT OWNER:
`
`Emily Whelan
`Jonathan B. Roses.
`Kevin M. Yurkerwich
`
`emily.whelan@wilmerhale.com
`jonathan.roses@wilmerhale.com
`kevin.yurkerwich@wilmerhale.com
`
`
`
`
`
`
`3
`
`
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