`571-272-7822 Entered: June 14, 2017
`
`
`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 motion to
`stay prosecution of Patent Owner’s Reissue Application No. 15/405,171, filed
`January 12, 2017, pending resolution of this inter partes proceeding. Petitioner
`indicated that Patent Owner will oppose such a request. A conference call was
`held on June 13, 2017, between respective counsel for the parties and
`Judges Mitchell, Franklin, and Pollock, to discuss Petitioner’s request. Petitioner
`engaged a court reporter to record the conference call. Petitioner confirmed that it
`promptly will file the transcript in the record when it is available.
`Petitioner stated that the claims at issue in the reissue application are similar
`to the claims at issue in this inter partes proceeding, which may cause inconsistent
`outcomes, a duplication of effort by the Office, and unnecessary effort by the
`parties, if the two proceedings go forward in parallel. Although Patent Owner
`agreed that at least two claims in the reissue application are very similar to claims
`at issue in this inter partes proceeding, Patent Owner stated that many of the
`dependent claims are patentably distinct from the claims at issue in this inter partes
`proceeding and do not implicate a possible inconsistent outcome with any decision
`in this proceeding, nor require duplicative effort of the Office or the parties. Patent
`Owner also indicated that it would be prejudiced by a delay in the reissue
`application process as it anticipates ANDA litigation in the coming year and
`staying the reissue application process would unduly delay resolution of the
`patentability of claims in the reissue proceeding.
`During the conference call, we granted Petitioner’s request for authorization
`to file a motion to stay Patent Owner’s reissue proceeding.
`
`
`
`
`2
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`
`
`ORDER
`
`It is
`ORDERED that the Petitioner’s request for authorization to file a motion to
`stay Reissue Application No. 15/405,171 is granted;
`FURTHER ORDERED that the Petitioner’s motion to stay is limited to five
`pages in length and must be filed no later than 10 calendar days from the entry of
`this order;
`FURTHER ORDERED that Patent Owner’s opposition is limited to five
`pages in length and must be filed no later than 10 calendar days from the filing of
`Petitioner’s motion to stay;
`FURTHER ORDERED that Petitioner may file a reply limited to three pages
`in length no later than 5 calendar days from the filing of Patent Owner’s opposition
`to the motion to stay; and
`FURTHER ORDERED that Petitioner will file in the record the transcript of
`the conference call when available.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`
`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
`Naoki Yoshida
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`KakenIPR@finnegan.com
`
`
`Toan P. Vo
`Valeant Pharmaceuticals North America LLC
`Toan.vo@bausch.com
`
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
