`571-272-7822
`
`
`
`Paper 64
`Entered: April 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC., ACTAVIS
`LABORATORIES FL, INC., AMNEAL PHARMACEUTICALS LLC,
`AMNEAL PHARMACEUTICALS OF NEW YORK, LLC, DR. REDDY'S
`LABORATORIES, INC., DR. REDDY'S LABORATORIES, LTD.,
`SUN PHARMACEUTICALS INDUSTRIES, LTD.,
`SUN PHARMACEUTICALS INDUSTRIES, INC.,
`TEVA PHARMACEUTICALS USA, INC., WEST-WARD
`PHARMACEUTICAL CORP., and HIKMA PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`
`
`
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-013321
`Patent 8,822,438 B2
`____________
`
`
`Before LORA M. GREEN, RAMA G. ELLURU, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 Case IPR2017-00853 has been joined with this proceeding.
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`
`In an e-mail to the Board dated April 26, 2017, Patent Owner requested
`
`a conference call with the Board to address what Patent Owner believes to be
`
`new evidence and arguments provided with Petitioner’s Reply, and to discuss
`
`seeking relief in the form of a motion to strike, or “a submission as permitted
`
`in IPR2016-00286 (Paper 68) to identify specific portions of Petitioners’
`
`Reply that Patent Owner believes raise new arguments.” Petitioner responded
`
`to that email, also on April 26, 2017, indicating that Patent Owner had not
`
`notified Petitioner of Patent Owner’s contentions, and did not meet and confer
`
`with Petitioner on the issue prior to contacting the Board.
`
`The panel has considered Patent Owner’s request, and we are
`
`unpersuaded that a motion to strike is warranted at this juncture. Insofar as
`
`Patent Owner would like to make of record those portions of Petitioner’s
`
`Reply it believes are new arguments, Patent Owner is authorized to file a
`
`paper calling the Board’s attention to specific portions of Petitioner’s Reply
`
`that Patent Owner believes raise new arguments. The paper will be in the
`
`form of a numbered, itemized list, providing the paper, page, and line number
`
`location only, of any portion of Petitioner’s Reply that Patent Owner wishes to
`
`draw to the Board’s attention as alleged new argument. Patent Owner’s paper
`
`shall not include any substantive arguments. The paper is limited to two (2)
`
`pages and must be filed no later than three (3) business days from the date of
`
`this order.
`
`We also authorize Petitioner to file a paper in response to Patent
`
`Owner’s submission. If filed by Petitioner, this paper will identify,
`
`corresponding in the same numbering and itemized manner to Patent Owner’s
`
`list, what Petitioner regards as the material contained in the Patent Owner
`
`Response, by paper, page, and line number only, that triggered or caused the
`
`
`
`2
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`Petitioner to include in its Reply each item listed by Patent Owner and/or
`
`where each item listed by Patent Owner appears in the Petition, again, by
`
`paper, page, and line number only. Petitioner’s paper, if filed, also will not
`
`contain any substantive arguments. Petitioner’s paper is also limited to two
`
`(2) pages and must be filed, if at all, no later than three (3) business days from
`
`the date of Patent Owner’s filing.
`
`The Board will consider the information submitted by each party in
`
`making the Final Written Decision to determine what weight, if any, is to be
`
`given to all of the presented evidence and arguments in accordance with the
`
`rules of the Board.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the parties are authorized to file the above-discussed
`
`papers consistent with the requirements and deadlines set forth in this Order.
`
`3
`
`
`
`
`
`4
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`
`FOR PETITIONER:
`
`Brandon White
`BMWhite@perkinscoie.com
`
`Crystal Canterbury
`CCanterbury@perkinscoie.com
`
`
`
`FOR PATENT OWNER:
`
`Dianne Elderkin
`delderkin@akingump.com
`
`Barbara Mullin
`bmullin@akingump.com
`
`Ruben Munoz
`rmunoz@akingump.com
`
`
`
`
`
`
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