Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 21
` Entered: February 28, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATSON LABORATORIES, INC.
`Petitioner,
`v.
`UNITED THERAPEUTICS, CORP.
`Patent Owner.
`____________
`
`Case IPR2017-01621 and IPR2017-01622
`Patents 9,358,240 B2 and 9,339,507 B2
`____________
`
`
`Before LORA M. GREEN, ERICA A. FRANKLIN, and DAVID COTTA,
`Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 21
` Entered: February 28, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATSON LABORATORIES, INC.
`Petitioner,
`v.
`UNITED THERAPEUTICS, CORP.
`Patent Owner.
`____________
`
`Case IPR2017-01621 and IPR2017-01622
`Patents 9,358,240 B2 and 9,339,507 B2
`____________
`
`
`Before LORA M. GREEN, ERICA A. FRANKLIN, and DAVID COTTA,
`Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
` ANALYSIS
`A conference call was held, in the above-listed proceedings, on
`Friday, February 23, 2018, between counsel for Petitioner, counsel for
`Patent Owner, and Administrative Patent Judges Green, Franklin, and Cotta.
`The call was held to discuss Petitioner’s request for authorization to file: 1) a
`motion to submit supplemental information pursuant to 37 C.F.R. 42.123(a),
`and 2) a motion for additional discovery under 37 C.F.R. 42.51(b)(2).
`Prior to the call, at the request of the Panel, Petitioner summarized the
`factual basis for its proposed motions. In an email dated February 14, 2018,
`Petitioner stated that its proposed motion to submit supplemental
`information under 37 C.F.R. 42.123(a) would address “[t]wo documents
`related to a proceeding in Maryland state court between one of the named
`inventors and Patent Owner, in which the inventor disputed the inventorship
`and ownership of the involved patent,” and “[a] declaration from the
`prosecution history of a parent patent application that includes as an
`attachment correspondence between certain named inventors and the
`prosecuting attorney in which inventorship of the challenged patents is
`discussed.” Ex. 3004. Petitioner stated that the declaration includes
`redactions. Id. Petitioner explained that its proposed motion for additional
`discovery under 37 C.F.R. 42.51(b)(2) would seek to obtain a version of that
`declaration wherein certain redactions were removed. Id. On the conference
`call, Petitioner asserted that the supplemental information and discovery are
`relevant to the issue of whether the named inventors of the challenged
`patents differ from that of the Ghofrani reference such that Ghofrani
`qualifies as prior art under 35 U.S.C. § 102(a).
`
`2
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
`Patent Owner argued that we should deny authorization to file both
`motions. With respect to the motion to submit supplemental information,
`Patent Owner represented that the information at issue did not implicate any
`of the authors of Ghofrani who are not identified as inventors of the
`challenged patents, and did not involve the 17 patient study disclosed in
`Ghofrani. Patent Owner further asserted that the dispute referenced in
`Petitioner’s request did not relate to who should be named as an inventor,
`but rather how the inventors should be compensated. Patent Owner noted
`that the complaint in the Maryland state court action had been dismissed,
`and that the declaration was submitted in connection with a patent
`application that involved different claims than are at issue in the challenged
`patents. Accordingly, Patent Owner contends that the information is not
`“relevant to a claim for which the trial has been instituted,” as is required by
`37 C.F.R. 42.123(a)(2). With respect to discovery of the unredacted
`declaration, Patent Owner additionally contends that those redactions relate
`to the Patent Owner’s litigation positions.
`Having considered the parties’ respective positions, we authorize
`Petitioner to file the requested motions. While Patent Owner may have
`raised legitimate concerns regarding the relevance of the proposed
`supplemental information and the information sought through additional
`discovery, we will be better able to evaluate the positions of each party upon
`briefing.
`Accordingly, it is:
`ORDERED that Petitioner is authorized to file, in each proceeding: 1)
`a motion to submit supplemental information pursuant to 37 C.F.R.
`42.123(a), and 2) a motion for additional discovery under 37 C.F.R.
`
`3
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`42.51(b)(2). Petitioner shall address both motions in a single consolidated
`pleading not to exceed ten (10) pages. The motions shall be filed within ten
`(10) calendar days of the mailing date of this order;
`FURTHER ORDERED that Patent Owner is authorized to file a
`single ten (10) page opposition to both motions. Patent Owner’s opposition
`shall be filed within fourteen (14) calendar days of Petitioner’s filing of their
`motions; and
`FURTHER ORDERED that Petitioner is not authorized, at this time,
`to file a Reply to Patent Owner’s Opposition.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`PETITIONER:
`Michael K. Nutter
`Andrew R. Sommer
`WINSTON & STRAWN LLP
`mnutter@winston.com
`asommer@winston.com
`
`PATENT OWNER:
`Stephen B. Maebius
`George Quillin
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas Carsten
`Richard Torczon
`Robert Delafield
`Veronica Ascarrunz
`WILSON, SONSINI, GOODRICH & ROSATI
`dcarsten@wsgr.com
`rtorczon@wsgr.com
`bdelafield@wsgr.com
`vascarrunz@wsgr.com
`
`5
`
`
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