Trials@uspto.gov
`571-272-7822
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` Paper No. 29
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`Entered: May 29, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)1
`____________
`
`
`
`Before DEBORAH KATZ, GRACE KARAFFA OBERMANN, and RAMA G.
`ELLURU, Administrative Patent Judges.
`
`KATZ, Administrative Patent Judge.
`
`
`
`ORDER
`Sur-Reply
`37 C.F.R. § 42.5
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in both cases. The
`parties are not authorized to use this style heading for any subsequent papers.
`
`
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`571-272-7822
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` Paper No. 29
`
`
`Entered: May 29, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)1
`____________
`
`
`
`Before DEBORAH KATZ, GRACE KARAFFA OBERMANN, and RAMA G.
`ELLURU, Administrative Patent Judges.
`
`KATZ, Administrative Patent Judge.
`
`
`
`ORDER
`Sur-Reply
`37 C.F.R. § 42.5
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in both cases. The
`parties are not authorized to use this style heading for any subsequent papers.
`
`
`
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
`
`
`On May 18, 2018, the parties contacted the Board requesting a conference
`call to discuss the filing of sur-replies to Petitoner’s Reply. (See Appendix.) Upon
`review of the record, we determine that a conference call is not necessary to decide
`the issues raised.
`Patent Owner Horizon Therapeutics, LLC (“Horizon”) requests
`authorization to file a sur-reply addressing Petitioner Lupin Ltd. And Lupin
`Pharmaceuticals, Inc. (“Lupin’s”) argument that, because of the preclusive effect
`of the Final Written Decision in IPR2016-00829, Horizon is collaterally estopped
`from contesting the patentability of the patents involved in the current proceedings.
`Horizon also requests authorization to address Lupin’s argument that Horizon
`failed to present any new evidence in these proceedings that would justify
`changing our determinations in the Final Written Decision in IPR2016-00829
`Because the issues of collateral estoppel and whether Horizon has presented
`new evidence in the instant proceedings were newly raised in Lupin’s Replies to
`Horizon’s Responses and Horizon has not had an opportunity to respond,
`authorization for Horizon to address these issues in sur-replies is GRANTED.
`Lupin further requests authorization to file sur-surreplies to Horizon’s sur-
`replies. At this time, authorization for Lupin to file sur-surreplies to Horizon’s sur-
`reply on the issues above is DENIED because Lupin has already had an
`opportunity to brief the issues. Authorization may be provided after review of
`Horizon’s sur-reply.
`Horizon also requests authorization to address the relevance of the teachings
`of the Häberle reference (Ex. 2019), which Horizon cited in its Responses.
`Because Horizon had an opportunity to address the relevance of this reference in
`its Responses, authorization to address this issue in a sur-reply is DENIED.
`
`
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`2
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`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
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` It is ORDERED that Horizon may file a sur-reply in each of the instant
`proceedings addressing only the arguments in Lupin’s Petitioner Replies regarding
`collateral estoppel and whether Horizon has filed new evidence in these
`proceedings in light of the Final Written Decision in IPR2016-00829. The sur-
`replies may not exceed five pages and are due by June 8, 2018. No other papers
`are authorized at this time.
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`3
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`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
`
`For PETITIONER:
`
`Elizabeth Holland
`Cynthia Hardman
`GOODWIN PROCTER LLP
`eholland@goodwinprocter.com
`chardman@goodwinprocter.com
`
`
`For PATENT OWNER:
`
`Robert Green
`Emer Simic
`Ann Kotze
`GREEN, GRIFFITH & BORG-BREEN, LLP
`rgreen@greengriffith.com
`esimic@greengriffith.com
`akotze@greengriffith.com
`
`Matthew Phillips
`LAURENCE & PHILLIPS IP LAW LLP
`mphillips@lpiplaw.com
`
`Dennis Bennett
`GLOBAL PATENT GROUP, LLC
`dennisbennett@globalpatentgroup.com
`
`
`
`
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`
`4
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`
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`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
`
`
`Appendix
`
`From: mphillips@lpiplaw.com [mailto:mphillips@lpiplaw.com]
`Sent: Friday, May 18, 2018 3:30 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: 'Robert Green' <rgreen@greengriffith.com>; 'Emer Simic' <esimic@greengriffith.com>;
`dennisbennett@globalpatentgroup.com; 'Ann Kotze' <akotze@greengriffith.com>;
`EHolland@goodwinlaw.com; CHardman@goodwinlaw.com; KMcGuinness@goodwinlaw.com;
`admin@globalpatentgroup.com; TMahmood@goodwinlaw.com
`Subject: IPR2017-01159 and IPR2017-01160
`
`Dear Board,
`
`The patent owner, Horizon, would like to request permission to file surreplies to address the following
`aspects of the petitioner’s replies filed May 11, 2018 (paper 23 in both cases):
`
`1) That Horizon is collaterally estopped from contesting the unpatentability of the ’278 and ’966
`patents and that certain of the Board’s findings in its Final Written Decision in IPR2016-00829
`should be entitled to preclusive effect.
`
`2) That Horizon has not offered any new evidence that justifies changing the Board’s findings in the
`Final Written Decision in IPR2016-00829.
`
`3) The relevance of the teachings of the Häberle reference cited by Horizon in its Responses (Ex.
`2019).
`
`Horizon does not intend to file any new evidence with its surreplies.
`
`The petitioner does not oppose Horizon’s filing of surreplies limited to issue (1) above but does oppose
`surreplies that would address issues (2) or (3). The petitioner also requests permission to file responses
`to Horizon’s surreplies. Horizon does not agree that sur-surreplies would be necessary or appropriate.
`
`Counsel for the parties are available for a conference call, should the Board desire one, any time of day
`Tuesday, May 22.
`
`Thank you for consideration of this request.
`
`Matthew C. Phillips
`Laurence & Phillips IP Law
`7327 SW Barnes Road #521, Portland, OR 97225
`503-964-1129 * mphillips@lpiplaw.com
`
`
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`
`5
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