`571-272-7822
`
`
`
`
`
`Paper No. 14
`Entered: September 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01488
`Case IPR2017-01489
`Patent 6,407,213 B21
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`In an email communication dated September 21, 2017, Petitioner
`requested a conference call to discuss 1) the correction of a typographical
`
`
`1 This Order addresses issues that are common to each of the above-
`referenced cases. We, therefore, issue a single Order that has been entered
`in each case. Absent express authorization, the parties may not use this style
`caption when filing a single paper in multiple proceedings.
`
`
`
`
`
`IPR2017-01488
`IPR2017-01489
`Patent 6,407,213 B2
`
`error, and 2) the filing of Replies to Patent Owner’s Preliminary Responses.
`Ex. 3001. The requested conference call was conducted on September 26,
`2017, between Judges Pollock, Snedden, and Yang; Petitioner’s counsel
`Amanda Hollis and Stefan Miller; and Patent Owner’s counsel
`Robert Gunther, David Cavanaugh, and Andrew Danford.
`
`With respect to the first issue, Petitioner requests leave to correct a
`clerical error in IPR2017-01489, wherein claim 65 was inadvertently
`omitted from the identification of proposed Grounds 1 and 2 at page 5 of the
`Petition. Patent Owner does not oppose the request. Because Petitioner’s
`intent to include claim 65 in these grounds is evident from the Petition, we
`take notice of the proposed amendment to the Petition. A replacement
`Petition is not required.
`
`With respect to the second issue, Petitioner seeks authorization to file
`a 15 page Reply brief to Patent Owner’s Preliminary Response in each of
`IPR2017-01488 and IPR2017-01489, relating to Patent Owner’s attempts to
`antedate the Queen 1990 reference. Patent Owner takes no position
`regarding whether Reply briefs are necessary but suggests that 7 pages
`would be sufficient and that it should be accorded an opportunity to respond
`to any such argument.
`
`Petitioner’s request for Reply briefs addressing Patent Owner’s
`Preliminary Responses is denied as premature. Petitioner may address
`Patent Owner’s evidence and argument on antedating if the panel institutes
`inter partes review proceedings.
`
`It is, therefore,
`
`2
`
`
`
`IPR2017-01488
`IPR2017-01489
`Patent 6,407,213 B2
`
`
`ORDERED that Grounds 1 and 2 of IPR2017-01489 are deemed to
`encompass challenges to claim 65 of Patent No. 6,407,213; and
`FURTHER ORDERED that Petitioner’s requests for authorization to
`file Reply briefs in IPR2017-01488 and IPR2017-01489 are denied.
`
`
`PETITIONER:
`Amanda Hollis
`Stefan M. Miller
`Karen Younkins
`KIRKLAND & ELLIS LLP
`amanda.hollis@kirkland.com
`stefan.miller@kirkland.com
`karen.younkins@kirkland.com
`
`
`PATENT OWNER:
`
`David L. Cavanaugh
`Owen K. Allen
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`owen.allen@wilmerhale.com
`
`Adam R. Brausa
`DURIE TANGRI LLP
`abrausa@durietangri.com
`
`
`3
`
`
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