`571.272.7822
`
`
`Paper No. 22
`Entered: October 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00200
`Patent 8,603,514 B2
`_______________
`
`
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017-00200
`Patent 8,603,514 B2
`
`
`A combined conference call was held by Judges Franklin, Hulse, and
`Paulraj to address issues relating to motions filed in three different cases
`challenging claims in U.S. Patent 8,603,514 B2 (“the ’514 patent”).
`Participating in the conference were counsel for Mylan Technologies, Inc.
`(petitioner in IPR2017-00200) (“Mylan”), Par Pharmaceutical, Inc. and
`Intelgenx Corp. (petitioner in IPR2017-01557) (collectively, “Par”), Dr.
`Reddy’s Laboratories S.A. and Dr. Reddy’s Laboratories, Inc. (petitioner in
`IPR2017-01582) (collectively, “Dr. Reddy’s”), and MonoSol Rx, LLC
`(patent owner in each proceeding) (“Monosol”). Counsel for each party
`consented to the combined nature of the call. Counsel for Patent Owner
`Monosol Rx, LLC arranged for a court reporter and agreed to file the
`transcript of the call upon its availability.
`The conference call was prompted by a Joint Motion to Terminate the
`proceeding in the -00200 IPR, filed, with our authorization, by Mylan and
`Monosol. Par and Dr. Reddy’s seek to have their petitions and Motions to
`Join the -00200 IPR, filed in the -01557 and -01582 IPRs, respectively,
`decided before we decide the Joint Motion to Terminate in the -00200 IPR.
`Monosol objects and seeks to avoid any further delay in having the Joint
`Motion to Terminate decided. Mylan’s interest is only to have its Joint
`Motion to Terminate granted at some point. During the call, each party had
`an opportunity to further explain those positions.
`Significantly, Par and Dr. Reddy’s petitions would be time-barred
`without joinder to the -00200 IPR. See 42 C.F.R. ¶ 42.122 (b). However,
`filing a petition accompanied by a request for joinder does not guarantee that
`the petition will be instituted, or that joinder will be granted. Further, there
`is no guarantee that such filings will be considered prior to a termination of
`
` 2
`
`
`
`
`
`
`
`IPR2017-00200
`Patent 8,603,514 B2
`
`the proceeding sought to be joined.
`After considering the positions of the parties and the circumstances
`involved, we decline to authorize Par and Dr. Reddy to file an opposition to
`the Motion to Terminate in a proceeding to which they are not a party. We
`also decline their request to hold in further abeyance our decision regarding
`the Joint Motion to Terminate in the -00200 IPR. Similarly, we deny
`Monosol’s request to belatedly file an opposition to the Motion for Joinder
`in the -01557 IPR, or a surreply to the Motion for Joinder in -01582.
`
`
`Accordingly, it is hereby:
`ORDERED that Par and Dr. Reddy’s are not authorized to file an
`opposition to the Motion to Terminate in IPR2017-00200;
`FURTHER ORDERED that the request by Par and Dr. Reddy’s to
`hold in abeyance the decision on the Joint Motion to Terminate in IPR2017-
`00200 is denied;
`FURTHER ORDERED that Monosol is not authorized to file an
`opposition to the Motion for Joinder in IPR2017-01557, or a surreply to the
`Motion for Joinder in IPR2017-01582.
`
`
`
`
`
`
`
`
`
`
`
`
`
` 3
`
`
`
`
`
`
`
`IPR2017-00200
`Patent 8,603,514 B2
`
`PETITIONER:
`
`Steven Parmelee
`sparmelee@wsgr.com
`
`Michael Rosato
`mrosato@wsgr.com
`
`Jad Mills
`jmills@wsgr.com
`
`
`PATENT OWNER:
`
`Harold Fox
`hfox@steptoe.com
`
`John Abramic
`jabramic@steptoe.com
`
`John L. Abramic
`jabramic@steptoe.com
`
`Charanjit Brahma
`charanjit.brahma@troutmansanders.com
`
`Dustin B. Weeks
`dustin.weeks@troutmansanders.com
`
`
` 4
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