Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 28
`Date: September 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`
`____________
`
`Case IPR2016-01479
`Patent 9,006,224 B2
`____________
`
`
`Before LORA M. GREEN, CHRISTOPHER L. CRUMBLEY, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On August 15, 2017, Patent Owner Novartis contacted the Board via
`electronic mail, requesting the opportunity to address allegedly improper
`new arguments and untimely evidence filed with Petitioner Par’s Reply
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 28
`Date: September 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`
`____________
`
`Case IPR2016-01479
`Patent 9,006,224 B2
`____________
`
`
`Before LORA M. GREEN, CHRISTOPHER L. CRUMBLEY, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On August 15, 2017, Patent Owner Novartis contacted the Board via
`electronic mail, requesting the opportunity to address allegedly improper
`new arguments and untimely evidence filed with Petitioner Par’s Reply
`
`
`
`IPR2016-01479
`Patent 9,006,224 B2
`
`(Paper 21). Par sent a responsive email later the same day, contending that
`Novartis’ email inappropriately contained substantive argument and
`opposing Novartis’ request. We have considered the parties’ emails and
`agree with Par that Novartis’ original request contained substantive
`argument, which is inappropriate for emails to the Board. As noted in
`Westlake Servs., LLC v. Credit Acceptance Corp., CBM2014-00008 (PTAB
`Aug. 12, 2014) (Paper 48):
`[T]he email requesting a conference call should copy the other
`party, indicate generally the relief being requested or the subject
`matter of the conference call, state whether the opposing party
`opposes the request, and include multiple times when all parties
`are available. The email may not contain substantive argument
`and, unless otherwise authorized, may not include attachments.
`
`Id. at 6–7.
`Nevertheless, without considering the content of the parties’
`substantive arguments, we authorized Novartis to file a short sur-reply not to
`exceed five pages, due on or before Due Date 3. We informed the parties
`that the sur-reply “may substantively address the evidence and arguments
`submitted with the Reply, or explain why the evidence and arguments are
`untimely. No new evidence may be submitted with the sur-reply.” Ex.
`3001, 4.
`On August 25, 2017, Novartis again contacted the Board requesting
`further clarification. Specifically, Novartis asked whether the sur-reply may
`cite the cross-examination testimony of Par’s expert witness, obtained
`during a deposition scheduled for August 28, 2017. Novartis also enquired
`as to the proper scope of observations on cross-examination. Citing LG
`Elecs., Inc. v. ATI Techs. ULC, IPR2015-00325 at 4 (PTAB Jan. 25, 2016)
`2
`
`
`
`
`
`IPR2016-01479
`Patent 9,006,224 B2
`
`(Paper 52), Novartis contended that it should be permitted to file
`observations on any issues not addressed in its sur-reply, because
`observations are intended for issues on which a party obtains cross-
`examination testimony after its final substantive brief.
`Also on August 25, 2017, Par sent the Board a responsive email,
`citing the companion case of LG Elecs., Inc. v. ATI Techs. ULC, IPR2015-
`00326 at 3 (PTAB Feb. 4, 2016) (Paper 32) and arguing that Novartis must
`make a choice between filing a sur-reply and filing observations, and should
`not be permitted to file both.
`Again, we note the substantive nature of the parties’ emails, which are
`inappropriate for communications sent to the Trials@uspto.gov mailbox.
`Such emails should be used to request conference calls with the Board or
`simple authorization to file a paper, without substantive argument. If the
`Board wishes to hear argument on the issues noted in the email, it will
`arrange a conference call or authorize briefing. This time only, and in the
`interest of a complete record, the Board has entered the email
`communications regarding this matter in the record as Exhibit 3001. Both
`parties are cautioned that further substantive emails to the Board run the risk
`of being disregarded, or other sanctions may be imposed.
`As indicated in our August 31, 2017, email to the parties, we
`determined that Novartis could rely on the cross-examination testimony of
`Par’s expert witness in its sur-reply in the course of making arguments
`within the previously authorized scope of “substantively address[ing] the
`evidence and arguments submitted with the Reply, or explain[ing] why the
`evidence and arguments are untimely.” Furthermore, we determined that
`
`3
`
`
`
`
`
`IPR2016-01479
`Patent 9,006,224 B2
`
`Novartis may file both a sur-reply and observations, but that it could not
`avail itself of both opportunities on the same issue; the observations may
`only address issues on which Novartis did not file the last substantive paper
`on the merits.
`Finally, we noted that if Novartis chooses to file both a sur-reply and
`observations, the number of pages permitted for the observations shall be
`reduced by a page for each page used in the sur-reply. In other words, the
`total number of pages used for the sur-reply and observations shall be no
`more than 15.
`On September 5, 2017, Novartis filed the authorized sur-reply.
`Including the signature block, the sur-reply was six pages1 long. Novartis
`will be permitted nine pages for its observations.
`
`In light of the foregoing, it is hereby:
`ORDERED that Patent Owner was authorized to file, on or before
`Due Date 3, a sur-reply not to exceed five (5) pages, subject to the
`requirements set forth above; and
`FURTHER ORDERED that if Patent Owner chooses to file both a
`sur-reply and observations on cross-examination, the observations shall not
`exceed nine (9) pages.
`
`
`
`1 Pursuant to 37 CFR § 42.24(a), the page limit does not include a table of
`contents, a table of authorities, mandatory notices under §42.8, a certificate
`of service or word count, or appendix of exhibits or claim listing. Signature
`blocks, however, are not excluded. Though we will excuse Novartis slightly
`exceeding the five pages granted for the sur-reply here, we will deduct an
`additional page from those allotted for its observations.
`4
`
`
`
`
`
`IPR2016-01479
`Patent 9,006,224 B2
`
`FOR PETITIONER:
`
`Daniel Brown
`Robert Steinberg
`Jonathan Strang
`LATHAM & WATKINS LLP
`daniel.brown@lw.com
`Bob.Steinberg@lw.com
`jonathan.strang@lw.com
`
`
`FOR PATENT OWNER:
`
`Nicholas N. Kallas
`Raymond Mandra
`FITZPATRICK, CELLA, HARPER & SCINTO
`nkallas@fchs.com
`rmandra@fchs.com
`
`
`5
`
`
`
`
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