`571.272.7822
`
`
`
` Paper 42
` Entered: October 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KOIOS PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`MEDAC GESELLSCHAFT FÜR KLINISCHE SPEZIALPRÄPARATE
`MBH,
` Patent Owner.
`____________
`
`Case IPR2016-01370
`Patent 8,664,231 B2
`____________
`
`Before JACQUELINE WRIGHT BONILLA, Vice Chief Administrative
`Patent Judge, TONI R. SCHEINER, and ERICA A. FRANKLIN,
`Administrative Patent Judges.
`
`BONILLA, Vice Chief Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01370
`Patent 8,664,231 B2
`
`
`A conference call was held on September 29, 2017, between counsel
`for the parties, Koios Pharmaceuticals LLC (“Petitioner”) and medac
`Gesellschaft für klinische Spezialpräparate mbH (“Patent Owner”), and
`Judges Bonilla, Scheiner, and Franklin. Patent Owner requested
`authorization to file a surreply to Petitioner’s Reply filed on September 18,
`2017 (“Reply”). Petitioner opposed Patent Owner’s request. Patent Owner
`arranged to have a court reporter present and agreed to submit a transcript of
`the call as an exhibit.
`During the call, Patent Owner alleged that the Reply contained
`excerpts or summaries of the deposition cross-examination testimony of
`Patent Owner’s expert witness, Thomas Zizic, M.D., that were incomplete or
`misleading. Patent Owner requested authorization to file a surreply for the
`sole purpose of identifying those excerpts or summaries in the Reply, as well
`as relevant portions of the transcript of Dr. Zizic’s testimony as necessary.
`Petitioner opposed Patent Owner’s assertions, arguing that Patent Owner had
`no right to file a surreply and that a surreply was not warranted in this
`instance.
`After considering the parties’ positions, although we agreed that there
`was no right to file a surreply, under the present circumstances, we decided
`that the information that Patent Owner sought to provide in a surreply would
`be useful and helpful in facilitating our review of the Reply and Dr. Zizic’s
`deposition testimony. Accordingly, we exercised our discretion by granting
`Patent Owner’s request to file a surreply.
`Petitioner requested authorization to file a response to the surreply,
`and asserted that Patent Owner’s surreply should contain no argument and
`no quotations from the documents at issue, but rather only citations to page
`
`
`
`2
`
`
`
`IPR2016-01370
`Patent 8,664,231 B2
`
`and line numbers. We agreed that the surreply shall not contain arguments
`and shall only cite to the particular page and line numbers of the documents
`of record that Patent Owner seeks to draw to our attention. We did not,
`however, authorize the filing of a response to the surreply (i.e., a sur-
`surreply), but explained that Petitioner will have an opportunity to address
`Patent Owner’s surreply at oral argument.
`
`Accordingly, it is:
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`surreply is granted;
`
`FURTHER ORDERED that the surreply shall cite to page, line,
`and/or paragraph numbers of the papers and exhibits of record, but shall not
`contain arguments, or quotations from the record;
`
`FURTHER ORDERED that Patent Owner shall file its surreply by
`October 5, 2017, and the surreply shall not exceed five pages;
`FURTHER ORDERED that Petitioner is not authorized to file a sur-
`surreply; and
`
`FURTHER ORDERED that, after Patent Owner receives a transcript
`of the conference call, Patent Owner shall file the transcript as an exhibit.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01370
`Patent 8,664,231 B2
`
`For PETITIONER:
`DeAnn F. Smith
`FOLEY HOAG LLP
`dsmith@foleyhoag.com
`William P. Rothwell
`NOROOZI PC
`william@noroozipc.com
`
`For PATENT OWNER:
`James F. Haley, Jr.
`Brian Gummow
`HALEY GUILIANO LLP
`james.haley@hglaw.com
`brian.gummow@hglaw.com
`
`
`
`
`4
`
`
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