`571-272-7822 Entered: March 1, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACRUX DDS PTY LTD. & ACRUX LIMITED
`Petitioner,
`
`v.
`
`KAKEN PHARMACEUTICAL CO., LTD. And VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00190
`Patent 7,214,506 B2
`____________
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`
`
`
`Acrux DDS PTY Ltd. And Acrux Limited (collectively, “Petitioner”)
`requested a conference call with the panel to seek authorization to file a reply brief
`to address the following arguments in Patent Owner’s Preliminary Response:
`1. Patent Owner’s antedating argument; 2. Patent Owner’s argument concerning
`Petitioner’s lack of provision of an express claim construction; and 3. Patent
`Owner’s alleged failure to name all real parties-in-interest. Paper 10, 4–6.
`Petitioner also seeks authorization to file a motion to stay prosecution of a reissue
`application filed by Patent Owner on the patent at issue in this case. Id. A
`conference call was held on February 21, 2017, between respective counsels for
`the parties for the above-identified request for inter partes review and Judges
`Mitchell, Franklin, and Pollock, to discuss Petitioner’s requests.
`As to the first issue, Petitioner asserts that as a matter of law, Patent Owner’s
`antedating evidence is insufficient as uncorroborated. Id. at 7–9, 11–14. Patent
`Owner responds that the evidence is sufficient requiring no additional
`corroboration and such an issue of law can be decided ably by the Board without
`additional briefing. Id. at 9–10, 14–15. We appreciate the parties’ respective
`explanations of the issue, but do not find that further briefing is necessary to
`determine the sufficiency of Patent Owner’s evidence at the institution stage.
`As to the second issue, Petitioner asserts that its Petition should not be
`denied as a matter of law because claim construction issues were adequately
`addressed in the Petition, and a separate claim construction section is unnecessary.
`Id. at 15–19, 22–23. Patent Owner counters that the Petition either addresses
`adequately claim construction issues, or it does not, but Petitioner should not be
`able to use a reply brief to fix any inadequacies in the Petition. Id. at 19-22.
`
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`2
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`IPR2017-00190
`Patent 7,214,506 B2
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`
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`Again, we appreciate the parties’ respective explanations of the issue, but do not
`find that further briefing is necessary to determine the sufficiency of the Petition.
`The parties indicated that the third issue concerning Patent Owner’s listing
`of real parties-in-interest has been resolved; Patent Owner agreed to revise its
`mandatory notice to include Valeant as a real party-in-interest, id. at 5–6, and has
`done so, Paper 9.
`As to the fourth issue, Petitioner indicated that it would like the opportunity
`to file a motion to stay a reissue proceeding involving the patent at issue here as
`the Board and the Examiner for the reissue will be considering similar issues on
`the same patent. Paper 10, 23–25. Patent Owner states that the issues in the two
`proceedings are different, and a motion for a stay would be premature before the
`Board has instituted an inter partes review. Id. at 26–27. We agreed that prior to
`institution of an inter partes review, a motion for a stay of the reissue proceeding
`would be premature. Should the Board decide to institute an inter partes review,
`Patent Owner may renew its request to file a motion for a stay.
`
`ORDER
`
`It is
`ORDERED that the Petitioner’s request to file a reply brief addressing issues
`set forth above in response to Patent Owner’s Preliminary Response is denied; and
`FURTHER ORDERED that the Petitioner’s request to file a motion to stay a
`reissue proceeding involving the patent at issue in this case is also denied.
`
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`3
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`IPR2017-00190
`Patent 7,214,506 B2
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`
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`For PETITIONER:
`E. Anthony Figg
`Aydin H. Harston
`ROTHWELL FIGG, ERNST & MANBECK, P.C.
`effig@rothwellfigg.com
`aharston@rothwellfigg.com
`litigationparalegals@rothwellfigg.com
`
`
`
`
`For PATENT OWNER:
`
`John D. Livingstone
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`KakenIPR@finnegan.com
`
`Toan P. Vo
`Valeant Pharmaceuticals North America LLC
`Toan.vo@bausch.com
`
`
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`
`4
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