Trials@uspto.gov
`571-272-7822
`
`Paper 21
`Entered: August 30, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APOTEX INC. and APOTEX CORP., and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioners,
`v.
`NOVARTIS AG,
`Patent Owner.
`_______________
`
`Case IPR2017-008541
`Patent 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 Case IPR2017-01550 has been joined with this proceeding.
`
`
`571-272-7822
`
`Paper 21
`Entered: August 30, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APOTEX INC. and APOTEX CORP., and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioners,
`v.
`NOVARTIS AG,
`Patent Owner.
`_______________
`
`Case IPR2017-008541
`Patent 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 Case IPR2017-01550 has been joined with this proceeding.
`
`
`
`IPR2017-00854; IPR2017-01550
`Patent 9,187,405 B2
`
`
`In response to an August 15, 2017, email communication from Patent
`Owner, the panel conducted a pre-trial conference with counsel on August 25,
`2017, to discuss the five motions set forth in Patent Owner’s List of Proposed
`Motions (Paper 19). Present were Judges Pollock, Kaiser, and Green; Jane Love
`and Robert Trenchard for Patent Owner, Novartis; Steven Parmelee and Michael
`Rosato for Petitioner, Apotex. Counsel for Petitioner Argentum did not attend.
`The call was recorded by a court reporter engaged by the parties, and a transcript
`will be filed as an exhibit in due course.2
`
`1. Motion to Amend
`Patent Owner indicated that it intends to file a motion to amend the claims of
`the ’405 Patent. Having satisfied its obligation under 37 C.F.R. § 121(a) to confer
`with the Board prior to such filing, Patent Owner may file its Motion to Amend as
`a matter of right, and in conformance with our rules. 37 C.F.R. § 121; see also,
`Microsoft Corp. v. Proxyconn, Inc.¸ 789 F.3d 1292, 1307–8 (Fed. Cir. 2015)
`(affirming the Board’s denial of a motion to amend claims where the patent owner
`failed to establish the patentability of the substitute claims over the prior art of
`record); MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15,
`2015) (Paper 42) (precedential) (clarifying the scope of prior art to be addressed in
`the motion); Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (PTAB
`June 11, 2013) (Paper 26) (informative) (setting forth considerations the Board
`
`
`2 This order summarizes the statements made during the conference call. A more
`detailed record may be found in the transcript.
`
` 2
`
`
`
`
`
`
`
`IPR2017-00854; IPR2017-01550
`Patent 9,187,405 B2
`
`
`typically makes when deciding on the motion); Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48766–67 (Aug. 14, 2012) (Section II.G. Motions to Amend).
`
`2. Motion for Protective Order
`Patent Owner indicated that it intends to file a motion for a protective order
`that differs from our default protective order. According to Patent Owner, the
`differences are designed to accommodate discovery subject to Swiss privacy laws.
`Petitioner indicated that it is currently analyzing a draft of Patent Owner’s
`proposed order. We appreciate that the parties are cooperating in this endeavor
`and encourage them to reach agreement on a proposed protective order without
`resort to the Board’s involvement. Parties are reminded that in seeking to protect
`information under a non-standard protective order, the offering party should file, as
`an additional exhibit to the motion to seal, a marked-up comparison of the
`proposed and default protective orders for the Board’s review. See IPR2017-
`00854, Paper 12 (Scheduling Order).
`
`3. Motion to Increase Word Limits
`Patent Owner seeks authorization to file a motion to increase the word limits
`of its Patent Owner’s Response by 439 words because Petitioners used non-
`standard citation formats that reduced the word count of the Petitions. In accord
`with Patent Owner’s allegations, the Petitions invoke a non-standard format that
`omits certain spaces, e.g., “EX1002, ¶10” rather than “Ex. 1002, ¶ 10.” See, e.g.,
`IPR2017-00854, Paper 2, 17. According to Patent Owner, this format decreased
`the word count of Petitioner Argentum’s Petition by 439 extra words, and
`somewhat fewer in Petitioner Apotex’s Petition. Patent Owner directs us to the
`decisions of several panels indicating, for example, that the “use of atypical
`
` 3
`
`
`
`
`
`
`
`IPR2017-00854; IPR2017-01550
`Patent 9,187,405 B2
`
`
`citations amounts to formatting tricks designed to avoid the word count limit for
`petitions set forth in our rules” See, EMC Corp. v. Intellectual Ventures I LLC,
`case IPR2017-00429, 27–29 (PTAB July 5, 2017) (Paper 11). Other than as a tit-
`for-tat sanction on Petitioners, Patent Owner could not articulate any other purpose
`for expanding the word limits in its Petition.
`Counsel for Petitioner Apotex asserts that its Petition would not exceed the
`14,000 word limit permitted under 37 C.F.R. § 42.24(a)(1)(i) even if standard
`formatting was used. Accordingly, we do not view this as a formatting trick
`designed to avoid the word count limit.
`Considering the allegedly more egregious example, Argentum’s Petition
`contains a certification under 37 C.F.R. § 42.24(d) attesting that its Petition
`contains 13,715 words. IPR2017-01550, Paper 1, 67. Presuming that Patent
`Owner’s calculations are correct, this amounts to 154 words over the allotted
`14,000 limit. Given that Argentum substantially copied Apotex’s earlier-filed
`Petition, we are hesitant to impute nefarious motives to Argentum’s acceptance of
`the same formatting convention. Nevertheless, rather than further waste judicial
`resources on this minor matter, Patent Owner may have an additional 154 words
`for its Patent Owner Response. The parties are strongly encouraged to work these
`type of minor issues out among themselves rather than resorting to a conference
`call with the panel.
`
`4. Termination of Ground 3
`Patent Owner seeks authorization to file “[a] motion to terminate Ground 3
`as outside of 35 U.S.C. § 311 limiting institution of an inter partes review to ‘a
`ground that could be raised under section 102 or 103 and only on the basis of prior
`
` 4
`
`
`
`
`
`
`
`IPR2017-00854; IPR2017-01550
`Patent 9,187,405 B2
`
`
`art consisting of patents or printed publications.’” Paper 19. Patent Owner
`contends that our reliance on In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`1376 (Fed. Cir. 2016), was distinguishable. See IPR2017-00854, Paper 11, 26.
`Patent Owner further indicated that a motion was necessary because addressing
`this matter as a jurisdictional issue takes more space than they are willing to give it
`in the Patent Owner Response.
`Patent Owner’s request is denied. As set forth in our Decision on Institution,
`in accordance with §311, “Petitioner has not challenged the instant claims on any
`ground other than those that could be raised under sections 102 and 103.
`Moreover, ascertaining whether an asserted reference qualifies as prior art is
`integral to our analysis under these sections.” Paper 11, 24. That our analysis may
`require us to ascertain the priority date of the challenged patent does not exceed
`our authority under § 311, even where the analysis requires us to consider the
`adequacy of written description under § 112. See Bioactive Labs. v. BTG Int’l Inc.,
`Case IPR2015-01305 (PTAB Dec. 15, 2015) (Paper 19); Dr. Reddy’s Labs. v.
`Galderma Labs., Case IPR2015-01778 (PTAB Feb. 16, 2016) (Paper 11).
`Patent Owner is welcome to address this issue in its Patent Owner Response.
`
`5. Relief Pursuant to Oil States
`Patent Owner further seeks a permission to file
`A motion to dismiss this proceeding as violating the U.S.
`Constitution by seeking to extinguish private property rights through a
`non-Article III forum without a jury or a fair opportunity to be heard,
`or alternatively a motion to stay this proceeding pending the outcome
`of review by the U.S. Supreme Court of the Oil States Energy Services,
`
` 5
`
`
`
`
`
`
`
`IPR2017-00854; IPR2017-01550
`Patent 9,187,405 B2
`
`
`LLC v Greene’s Energy Group LLC, cert. granted (from IPR2014-
`00215) case.
` Paper 19, 2. Patent Owner’s proposed motion is foreclosed under existing Federal
`Circuit precedent. See MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d
`1284 (Fed. Cir. 2015) (holding inter partes review does not violate Article III or
`the Seventh Amendment right to a jury trial). Patent Owner’s request is, however,
`sufficient to preserve this issue for appeal.
`Patent Owner’s proposed motion to stay these proceedings is also denied
`because the outcome of the Supreme Court’s decision is too speculative to
`overcome our mandate to “secure the just, speedy, and inexpensive resolution of
`every proceeding.” 37 C.F.R. § 42.1. Moreover, the backlog resulting from a stay
`of this, and similarly situated cases, would jeopardize the Board’s ability to issue
`final determinations within the statutory mandates of 35 U.S.C. § 316(a)(11).
`Accordingly, we enter the following order.
`
`ORDER
`
`ORDERED that Patent Owner has satisfied its obligation under 37 C.F.R.
`
`§ 121(a) to confer with the Board prior to filing any motion to amend the claims of
`the ’405 patent.
`
`ORDERED that Patent Owner may contact the Board to discuss a non-
`standard protective order if the parties cannot reach agreement after negotiating in
`good faith.
`
`ORDERED that the Patent Owner Response may not exceed 14,154 words.
`
` 6
`
`
`
`
`
`
`
`IPR2017-00854; IPR2017-01550
`Patent 9,187,405 B2
`
`
`ORDERED that Patent Owner’s request to file a motion to terminate Ground
`3 as beyond the scope of 35 U.S.C. § 311 is denied.
`
`ORDERED that Patent Owner’s request to file a motion to dismiss or stay
`this proceeding in light of the U.S. Supreme Court’s grant of certiorari in Oil States
`Energy Servs., LLC v. Greene's Energy Grp., LLC, 137 S. Ct. 2239, 198 L. Ed. 2d
`677 (2017), is denied; Patent Owner’s request to file a motion to dismiss is
`sufficient to preserve this matter for appeal.
`
`
`
`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
`
`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS, LLC
`TLiu@agpharm.com
`
`
` 7
`
`
`
`
`
`
`
`IPR2017-00854; IPR2017-01550
`Patent 9,187,405 B2
`
`
`
`FOR PATENT OWNER:
`Jane M. Love
`Robert Trenchard
`GIBSON, DUNN & CRUTCHER LLP
`jlove@gibsondunn.com
`rtrenchard@gibsondunn.com
`
`
`
`
`
`
` 8
`
`
`
`
`
`
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