`571-272-7822
`
`Paper 66
`Entered: March 29, 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 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 March 29, 2018,
`among counsel for the respective Petitioners, Patent Owner, and Judges Pollock
`and Kaiser to discuss issues raised in the parties emails of March 28, 2018.
`Ex. 3010 (Petitioner’s email); Ex. 3011 (Patent Owner’s email and attached
`correspondence between the parties); Ex. 3012 (attachments from Ex. 3011).
`Petitioner engaged a court reporter for the call. Petitioner will submit a copy of the
`transcript as an exhibit, which, in conjunction with this Order, will serve as the
`official record of the call.
`Petitioner seeks permission to file a motion to strike Patent Owner’s Sur
`Reply (Paper 63) or, in the alternative, an opportunity to submit responsive
`briefing with supporting evidence on an adjusted schedule, because Patent Owner
`allegedly exceeded the scope of argument permitted in our Order of February 23,
`2018 (Paper 54). Having reviewed the transcript of our February 21, 2018
`teleconference (Ex. 2094) and related correspondence (Ex. 3004), we conclude that
`the phrasing of our Order in paper 54 was imprecise and overly narrow. Although
`Patent Owner should have brought this to our attention prior to filing its sur reply,
`it has, nevertheless, reasonably interpreted the intended scope of our order.
`Accordingly, Petitioner’s request for a motion to strike is denied.
`Petitioner’s request to submit responsive briefing with supporting evidence
`is also denied. The thrust of Patent Owner’s sur reply goes to the testimony of
`Dr. Benet, Petitioner’s expert in pharmacology. As Patent Owner points out,
`Petitioner had the opportunity to advance such an expert in its Petition but chose
`not to do so until its Reply. At this stage of the proceeding, additional briefing
`would require further adjustment of the schedule and additional rounds of
`depositions which would be unduly disruptive. Petitioner will have ample
`
` 2
`
`
`
`
`
`
`
`IPR2017-00854
`Patent 9,187,405 B2
`opportunity to challenge the opinions of Patent Owner’s experts in the upcoming
`depositions.
`Petitioner further seeks authorization to file a sur-reply to Paper 64, Patent
`Owner’s Reply regarding its Contingent Motion to Amend. Having considered the
`parties’ arguments on this matter, we conclude that the request is reasonable.
`Although this, too, threatens to disrupt the trial schedule, we grant Petitioner’s
`request on an accelerated basis. Petitioner may have 12 pages to respond.
`Petitioner’s sur reply shall be filed no later than the close of business on April 19,
`2018. Further, any experts submitting testimony in support of Petitioner’s sur
`reply shall be made available no later than 10 business days after the filing of the
`sur reply. Upon failure to do so, Patent Owner may request that we order
`Petitioner to show cause why the supporting expert testimony should not be struck.
`Finally, considering the posture of this case, we grant Petitioner’s request
`that the ten-page limit on observations on cross-examination will apply on a per-
`witness basis.
`
`
`SO ORDERED
`
`
`
`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
`
` 3
`
`
`
`
`
`
`
`IPR2017-00854
`Patent 9,187,405 B2
`
`FOR PETITIONER ARGENTUM:
`
`Teresa Stanek Rea
`Deborah H. Yellin
`Shannon M. Lentz
`CROWELL & MORING LLP
`trea@crowell.com
`dyellin@crowell.com
`slentz@crowell.com
`
`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS, LLC
`tliu@agpharm.com
`
`FOR PETITIONER TEVA:
`
`Amanda Hollis
`Eugene Goryunov
`KIRKLAND & ELLISLLP
`amanda.hollis@kirkland.com
`egoryunov@kirkland.com
`
`FOR PETITIONER SUN PHARMA:
`
`Samuel Park
`WINSTON & STRAWN LLP
`spark@winston.com
`
`FOR PATENT OWNER:
`Jane M. Love
`GIBSON, DUNN & CRUTCHER LLP
`jlove@gibsondunn.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
