`571-272-7822
`
`Paper 54
`Entered: February 23, 2018
`
`
`
`
`
`APOTEX INC., APOTEX CORP.,
`ARGENTUM PHARMACEUTICALS LLC,
`ACTAVIS ELIZABETH LLC, TEVA PHARMACEUTICALS USA, INC.,
`SUN PHARMACEUTICAL INDUSTRIES, LTD.,
`SUN PHARMACEUTICAL INDUSTRIES, INC., and
`SUN PHARMA GLOBAL FZE,
`Petitioners,
`
`v.
`
`NOVARTIS AG.,
`Patent Owner.
`____________
`
`Case IPR2017-008541
`Patent US 9,187,405 B2
`_______________
`
`
`Before LORA M. GREEN, CHRISTOPHER M. KAISER, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 Cases IPR2017-01550, IPR2017-01946, and IPR2017-01929 have been
`joined with this proceeding.
`
`
`
`IPR2017-00854
`Patent 9,187,405 B2
`
` A
`
` conference call in the above proceedings was held on February 21, 2018,
`among counsel for the respective Petitioners, Patent Owner, and Judges Pollock,
`Green, and Kaiser to discuss issues raised in Patent Owner’s email dated February
`20, 2018. Ex. 3004.
`In short, Patent Owner seeks authorization to file a motion to strike
`Petitioner’s Reply Brief or, in the alternative, for additional pages in its Reply to
`Petitioner’s Opposition to Motion to Amend, in which to submit sur-reply
`arguments. This issue relates to Patent Owner’s argument that “pharmacokinetic
`data evidenced by Webb, Kahan 2003, and Park would have indicated to those of
`ordinary skill in the art that 0.5mg/day of fingolimod would not result in sufficient
`lymphopenia to successfully treat RR-MS.” See Paper 11, 19. In our Decision on
`Institution we informed the parties that “[w]e . . . look forward to further
`development of this issue at trial.” Id. at 20. In addressing Patent Owner’s
`pharmacokinetic argument, Petitioner filed the declaration of a new expert,
`Dr. Leslie Benet, with its Reply to the Patent Owner Response, which Patent
`Owner contends is prejudicial.
`Also during the conference call, the parties indicated disagreement in
`scheduling Dr. Benet’s deposition prior to Due Date 3, the due date for Patent
`Owner’s Reply to Petitioner’s Opposition to Motion to Amend. Petitioner took the
`position that there was no need to schedule Dr. Benet’s deposition before Due
`Date 3 because Petitioner did not cite Dr. Benet’s testimony in its Opposition to
`Patent Owner’s Motion to Amend.
`Patent Owner engaged a court reporter for the call. Patent Owner will
`submit a copy of the transcript as an exhibit, which will serve as the official record
`
` 2
`
`
`
`
`
`
`
`IPR2017-00854
`Patent 9,187,405 B2
`of the call.
`
`
`ORDER
`Having considered the parties’ positions, it is:
`ORDERED that Patent Owner’s request to file a motion to strike is denied.
`FURTHER ORDERED that Patent Owner’s request for additional pages in
`its Reply to Petitioner’s Opposition to Motion to Amend is denied.
`FURTHER ORDERED that, on or before March 16, 2018, Patent Owner
`may file a sur-reply not to exceed 15 pages addressing Petitioner’s response to
`Patent Owner’s pharmacokinetic argument. Patent Owner’s sur-reply may be
`supported by additional testimonial evidence.
`FURTHER ORDERED that the parties will hold the deposition of Dr. Benet
`at least 10 days prior to DUE DATE 3. Dr. Benet may be cross-examined on any
`issue raised in his expert report.
`FURTHER ORDERED that the parties will use best efforts to adjust DUE
`DATES 3 through 6 in order to effect the timely cross-examination of Dr. Benet,
`as well as any other person submitting testimonial evidence in connection with
`Patent Owner’s sur-reply.
`FURTHER ORDERED that in the unlikely event the parties cannot agree on
`a schedule in accordance with the above, they shall jointly submit proposed
`schedules for the efficient conduct of this case, showing areas of agreement and
`disagreement, with a bullet point explanation for each area of disagreement.
`
`
`
`
`
`
`
` 3
`
`
`
`
`
`
`
`IPR2017-00854
`Patent 9,187,405 B2
`FOR PETITIONER APOTEX:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`FOR PETITIONER ARGENTUM:
`
`Teresa Stanek Rea
`Deborah H. Yellin
`Shannon M. Lentz
`CROWELL & MORING LLP
`trea@crowell.com
`dyellin@crowell.com
`slentz@crowell.com
`
`FOR PETITIONER TEVA:
`
`Amanda Hollis
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`amanda.hollis@kirkland.com
`egoryunov@kirkland.com
`
`FOR PETITIONER SUN PHARMA:
`
`Samuel Park
`WINSTON & STRAWN LLP
`spark@winston.com
`
`
`
` 4
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00854
`Patent 9,187,405 B2
`FOR PATENT OWNER:
`
`Jane M. Love
`GIBSON, DUNN & CRUTCHER LLP
`jlove@gibsondunn.com
`
`
`
`
`
` 5
`
`
`
`
`
`
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
