Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 17
`Entered: December 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WOCKHARDT BIO AG,
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01582
`Patent 8,822,438 B2
`____________
`
`Before LORA M. GREEN, RAMA G. ELLURU, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Reply and Surreply to Patent Owner Preliminary Response
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 17
`Entered: December 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WOCKHARDT BIO AG,
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01582
`Patent 8,822,438 B2
`____________
`
`Before LORA M. GREEN, RAMA G. ELLURU, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Reply and Surreply to Patent Owner Preliminary Response
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`IPR2016-01582
`Patent 8,822,438 B2
`
`
`On November 22, 2016, Wockhardt Bio AG (“Petitioner”) sent an
`electronic message to the Board to seek authorization to file a reply to Patent
`Owner’s Preliminary Response, and to file a motion to exclude. A telephone
`conference was held on November 29, 2016, among Judges Kalan, Green,
`and Elluru, counsel for Petitioner, and counsel for Janssen Oncology, Inc.
`(“Patent Owner”).
`Reply
`Patent Owner’s Preliminary Response included arguments that
`Petitioner failed to identify all real parties-in-interest. Paper 12, 7–15. The
`Preliminary Response was supported by a Declaration by Ms. Jennifer Reda,
`Assistant General Counsel at Johnson & Johnson (Ex. 2004), and an e-mail
`chain submitted by Patent Owner (Ex. 2005). During the conference call,
`Petitioner sought authorization to file a short reply brief to address the real
`party-in-interest issue raised by Patent Owner in its Preliminary Response.
`Petitioner also requested the opportunity to depose Ms. Reda. Petitioner
`requested permission to file a declaration or declarations in support of its
`reply, and indicated it would make its declarant(s) available for deposition.
`Patent Owner indicated that it did not oppose Petitioner’s request for a
`reply, so long as Patent Owner would be permitted to file a surreply. Patent
`Owner opposed Petitioner’s request to depose Ms. Reda. Patent Owner
`requested the opportunity to take a deposition of Petitioner’s declarant if the
`declarant’s testimony goes beyond the scope of the present record.
`“A petitioner may seek leave to file a reply to the preliminary
`response in accordance with §§42.23 and 42.24(c). Any such request must
`make a showing of good cause.” 37 C.F.R. § 42.108(c). The question of
`whether Petitioner has identified all real parties-in-interest is a threshold
`
`
`
`IPR2016-01582
`Patent 8,822,438 B2
`
`issue we must address in our decision on institution. See 35 U.S.C.
`§ 312(a)(2) (we may consider a petition for inter partes review “only if . . .
`the petition identifies all real parties in interest”); 37 C.F.R. § 42.8 (requiring
`Petitioner and Patent Owner to “[i]dentify each real party-in-interest for the
`party”). After considering the arguments and issues before us, we determine
`that good cause exists in these circumstances. We grant Petitioner’s request
`to file a reply and Patent Owner’s request to file a surreply, subject to the
`details set forth in the order below. No depositions are authorized at this
`time.
`
`Motion to Exclude
`During the conference call, Petitioner also requested authorization to
`file a motion to exclude Exhibits 2004 and 2005 as inadmissible under FRE
`408, arguing that those exhibits reflect confidential settlement discussions.
`Patent Owner opposed, arguing that noncompliance in identifying real
`parties-in-interest is not an issue of patentability.
`Rule 42.64(b)(1) states “[a]ny objection to evidence submitted during
`a preliminary proceeding must be filed within ten business days of the
`institution of the trial.” “A motion to exclude evidence must be filed to
`preserve any objection.” 37 C.F.R. § 42.64(c). Thus, the party relying on
`the evidence to which an objection is timely served has the opportunity to
`correct by serving supplemental evidence within ten days of the service of
`the objection. 37 C.F.R. 42.64(b)(1), (b)(2). The time for filing a motion to
`exclude is typically several months into a trial. See, e.g., 77 Fed. Reg. 157 at
`48,768, App. A.
`Petitioner’s request to file a Motion to Exclude is premature, as no
`trial has been instituted in this matter. To the extent that Petitioner urges the
`
`
`
`IPR2016-01582
`Patent 8,822,438 B2
`
`Board to consider the evidentiary issues as part of our determination to
`institute a trial, Petitioner’s request does not provide us with a reason to
`deviate from the rules governing inter partes review. If we institute trial,
`Petitioner will have an opportunity to object, consider any supplemental
`evidence, and file a motion to exclude evidence. Petitioner may, in its reply,
`present arguments as to why these Exhibits should not be part of the record.
`Patent Owner may, in its surreply, respond to Petitioner’s arguments on this
`issue. At this stage in the proceeding, however, we deny Petitioner’s request
`to file a Motion to Exclude.
`
`
`ORDER
`
`
`In view of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for authorization to file a reply to
`Patent Owner’s Preliminary Response is granted;
`FURTHER ORDERED that Petitioner’s reply is limited to (a)
`responding to Patent Owner’s arguments regarding the issue of the
`identification of real parties-in-interest as set forth in Patent Owner’s
`Preliminary Response, and (b) arguments as to why Exhibits 2004 and 2005
`should not be part of the record;
`FURTHER ORDERED that Petitioner’s reply is limited to a
`maximum of seven pages;
`FURTHER ORDERED that Petitioner may file two declarations of no
`more than five pages each, directed solely to the real party-in-interest issue
`raised in Patent Owner’s Preliminary Response;
`
`
`
`IPR2016-01582
`Patent 8,822,438 B2
`
`
`FURTHER ORDERED that if Petitioner chooses to file a reply, it
`shall file any such reply by no later than seven business days from the date
`of this Order;
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file a surreply responding to Petitioner’s reply is granted;
`FURTHER ORDERED that Patent Owner’s surreply is limited to
`responding to the arguments Petitioner raises in its reply;
`FURTHER ORDERED that Patent Owner’s surreply is limited to a
`maximum of five pages;
`FURTHER ORDERED that Patent Owner may file one rebuttal
`declaration of no more than five pages, directed solely to the arguments
`raised in Petitioner’s reply; and
`FURTHER ORDERED that if Patent Owner chooses to file a
`surreply, Patent Owner shall file said surreply by no later than seven
`business days from the date of filing of Petitioner’s reply.
`
`
`
`
`
`IPR2016-01582
`Patent 8,822,438 B2
`
`FOR PETITIONER:
`
`Dennies Varughese
`Deborah A. Sterling
`Christopher M. Gallo
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dvarughe-PTAB@skgf.com
`dsterlin-PTAB@skgf.com
`cgallo-PTAB@skgf.com
`
`
`FOR PATENT OWNER:
`
`Dianne B. Elderkin
`Barbara L. Mullin
`Ruben H. Munoz
`AKIN GUMP STRAUSS HAUER & FELD LLP
`delderkin@akingump.com
`bmullin@akingump.com
`rmunoz@akingump.com
`
`
`
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