`571-272-7822
`
`
`
`
` Paper 24
`Entered: December 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERIGEN PHARMACEUTICALS LIMITED and
`ARGENTUM PHARMACEUTICALS LLC,
`
`MYLAN PHARMACEUTICALS INC., and
`
`WOCKHARDT BIO AG,
`Petitioners,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Cases: IPR2016-00286,1 IPR2016-01332, IPR2016-01582
`Patent 8,822,438 B22
`____________
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Before LORA M. GREEN, RAMA G. ELLURU, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`1 Case IPR2016-01317 has been joined with this proceeding.
`2 This Order addresses a conference call held in connection with all
`captioned cases; we therefore exercise our discretion to issue a single order,
`to be entered in each case. The parties are not authorized to use this case
`caption, or to file consolidated papers.
`
`
`
`
`
`IPR2016-00286
`IPR2016-01332
`IPR2016-01582
`Patent 8,822,438 B2
`
`
`Patent Owner contacted the Board on December 9, 2016, to request a
`conference call regarding its request to file, as exhibits in each of the above-
`captioned proceedings, a claim construction order and a decision from a
`related district court litigation, BTG International Ltd. v. Actavis Labs. FL,
`Inc., C.A. No. 15-cv-5909-KM-JBC (D.N.J.), involving the same patent that is
`at issue in the above-captioned proceedings. Patent Owner indicated that each
`Petitioner in IPR2016-00286, IPR2016-01332, and IPR2016-01582 objects to
`the filing of these exhibits. A conference call was held on December 13,
`2016, among counsel for Patent Owner, counsel for each Petitioner in
`IPR2016-00286, IPR2016-01332, and IPR2016-01582, and the judges of the
`panel.
`In IPR2016-00286, the Board instituted trial on May 30, 2016; Patent
`Owner Response has been filed; and Petitioner’s Reply is due on January 13,
`2017. In IPR2016-01332 and IPR2016-01582, the Board has not yet decided
`whether to institute trial. Preliminary briefing has closed in IPR2016-01332.
`Preliminary briefing in IPR2016-01582 will close shortly.
`Patent Owner stated that it would defer to the Board on the issue of the
`relevance of the documents, but pointed out a number of cases where parties
`have requested to file similar types of documents and such filing was
`authorized by the Board. Patent Owner indicated that it would not be
`changing its claim construction position in any of the above-captioned
`proceedings, and that it was not requesting additional briefing at this time.
`Counsel for Petitioners each responded in turn, arguing, inter alia, that
`the filing of these documents would be prejudicial to Petitioners, that there
`was little time for Petitioners to address the the district court’s claim
`
`
`
`2
`
`
`
`IPR2016-00286
`IPR2016-01332
`IPR2016-01582
`Patent 8,822,438 B2
`
`construction position in their upcoming filings and depositions, and that the
`Board’s claim construction employs a different standard than the district court
`employs.
`Having taken into account the arguments of each of the parties, the
`Board authorizes Patent Owner to file the two documents as Exhibits in each
`of the above-captioned cases, along with an updated Exhibit List. No cover
`sheet, argument, or any other filing is authorized at this time.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner may file the district court’s claim
`construction order and a decision as Exhibits in each of the above-captioned
`cases, along with an updated Exhibit List; and
`FURTHER ORDERED that no cover sheet, argument, or other filing is
`authorized at this time.
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00286
`IPR2016-01332
`IPR2016-01582
`Patent 8,822,438 B2
`
`
`FOR PETITIONER:
`
`Dennies Varughese
`dvarughe@skgf.com
`
`Christopher Gallo
`cgallo-ptab@skgf.com
`
`Deborah Sterling
`dsterlin-ptab@skgf.com
`
`
`FOR PATENT OWNER:
`
`Dianne Elderkin
`delderkin@akingump.com
`
`Barbara Mullin
`bmullin@akingump.com
`
`Ruben Munoz
`rmunoz@akingump.com
`
`David T. Pritikin
`dpritikin@sidley.com
`
`Bindu Donovan
`bdonovan@sidley.com
`
`Anthony Tridico
`Anthony.tridico@finnegan.com
`
`Jennifer Roscetti
`Jennifer.roscetti@finnegan.com
`
`
`
`
`
`4
`
`
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