Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 31
`Entered: August 31, 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 and Licensee.
`
`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
`Stay of Reissue Application No. 15/405,171
`37 C.F.R. 42.3(a); 37 C.F.R. § 4.122(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 31
`Entered: August 31, 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 and Licensee.
`
`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
`Stay of Reissue Application No. 15/405,171
`37 C.F.R. 42.3(a); 37 C.F.R. § 4.122(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`
`Before institution of the instant inter partes proceeding, Kaken
`Pharmaceutical Co., Ltd. and Valeant Pharmaceuticals International, Inc.
`(collectively, “Petitioner”) requested authorization to file a motion to stay
`Reissue Application No. 15/405,171 (“the ’171 Reissue Application”),
`which involves that patent at issue here, U.S. Patent No. 7,214,506 (“the
`’506 Patent”). Paper 11, 2. At that time, we agreed with Patent Owner that
`a motion for a stay of the reissue proceeding would be premature, but invited
`Petitioner to renew its request to file a motion to stay should an inter partes
`review be instituted. Id. at 3.
`On May 1, 2017, we instituted an inter partes review of claims 1 and
`2 of the ’506 Patent based on six grounds. Paper 12, 24. Petitioner renewed
`its request for authorization to file a motion for a stay, and we granted such
`authorization. Paper 16, 2. Petitioner filed its Motion to Stay Related
`Reissue Proceeding, which Patent Owner opposed. Papers 19, 21, 22. For
`the reasons stated below, the Board exercises its discretion to stay
`examination of the ’171 Reissue Application.
`DISCUSSION
`The Director has authority to stay a reissue proceeding pursuant to
`
`35 U.S.C. § 315(d), which provides:
`(d) MULTIPLE PROCEEDINGS.— Notwithstanding sections
`135(a), 251, and 252, and chapter 30, during the pendency of an
`inter partes review, if another proceeding or matter involving
`the patent is before the Office, the Director may determine the
`manner in which the inter partes review or other proceeding or
`matter may proceed, including providing for stay, transfer,
`consolidation, or termination of any such matter or proceeding.
`37 C.F.R. § 42.122 permits the Board to enter an order to effect a stay as
`follows:
`
`
`
`2
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`
`(a) Multiple Proceedings. Where another matter involving the
`patent is before the Office, the Board may during the pendency
`of the inter partes review enter any appropriate order regarding
`the additional matter including providing for the stay, transfer,
`consolidation, or termination of any such matter.
`37 C.F.R. § 42.122(a); see also 37 C.F.R. § 42.3 (providing the Board
`authority to exercise exclusive jurisdiction within the Office over an
`involved application and patent during the proceeding).
`
`As Patent Owner correctly points out, ordinarily we will not stay a
`reissue application unless good cause is shown because reissue applications
`are accorded special status. See Bio-Rad Labs., Inc. v. GE Healthcare Bio-
`Sciences AB, Case IPR2015-01826, slip op. at 2–3 (PTAB April 8, 2016)
`(paper 18) (citing MPEP § 1442). In this case, however, Petitioner has
`shown good cause to stay the reissue application.
`
`A stay may be warranted to avoid duplicating efforts in the Office, to
`avoid potentially inconsistent results, or to simplify the issues in a reissue
`application. See Hewlett-Packard Co. v. MCM Portfolio LLC, Case, Case
`IPR2013-00217, slip op. at 2–3 (PTAB May 10, 2013) (paper 8). Here all
`three reasons support staying prosecution of the reissue application.
`
`As Petitioner points out and Patent Owner agrees, reissue claims 1 and
`2 are essentially identical to claims 1 and 2, respectively, of the ’506 patent
`at issue in this proceeding. Paper 19, 2; Paper 21, 2 (stating “[o]nly claims 1
`and 2 are substantively identical to the two claims at issue in this IPR).
`Proceeding with concurrent examination of the ’171 Reissue Application
`and this inter partes review would duplicate the efforts of the Office at least
`as to claims 1 and 2 involved in each proceeding and could potentially result
`in inconsistencies between the two proceedings. Also, any final written
`
`
`
`3
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`decision in this inter partes review with respect to the patentability of the
`challenged claims may simplify the issues in the reissue application.1
`
`Based upon the facts presented in the instant proceeding and in the
`’171 Reissue Application, the Board exercises its discretion under 35 U.S.C.
`§ 315(d) and 37 C.F.R. § 42.122(a), and orders that examination of the ’171
`Reissue Application be stayed pending the termination or completion of the
`instant proceeding.
`
`ORDER
`
`It is
`
`ORDERED that examination of Reissue Application 15/405,171, filed
`
`on January 12, 2017, is stayed pursuant to 37 C.F.R. §§ 42.3 and 42.122
`pending the termination or completion of IPR2017-00190; and
`
`FURTHER ORDERED that any due dates in Reissue Application
`15/405,171 are tolled.
`
`
`
`
`
`
`
`1 In opposition to Petitioner’s good cause showing, Patent Owner focuses its
`argument on the 31 new claims of varying scope in the ’171 Reissue
`Application “that are not at issue in this IPR and which raise new issues of
`patentability not raised here.” Paper 21, 1. Because we find that the overlap
`between claims 1 and 2 of the ’506 Patent and the ’171 Reissue Application
`prompts us to exercise our discretion to stay examination of the ’171 Reissue
`Application, we need not analyze further the issues raised concerning
`whether claims 3–33 are patentably distinct from claims 1 and 2 of the ’506
`patent as resolution of these issues in favor of Patent Owner would not
`overcome the good cause shown for staying the ’171 Reissue Application.
`See Paper 19, 2–33; Paper 21, 2–5; Paper 22, 1–3.
`4
`
`
`
`
`
`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
`
`
`For PATENT OWNER:
`
`John D. Livingstone
`Naoki Yoshida
`Anthony Hartmann
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`KakenIPR@finnegan.com
`naoki.yoshida@finnegan.com
`hartmana@finnegan.com
`
`Toan P. Vo
`VALEANT PHARMACEUTICALS NORTH AMERICA LLC
`Toan.vo@bausch.com
`
`
`
`
`
`
`
`
`
`
`
`
`5
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`
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