`
`Trials@uspto.gov
`571-272-7822
`
`
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` Paper No. 37
`
`
`Entered: September 5, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAR PHARMACEUTICAL, INC.,
`Petitioners,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)1
`____________
`
`Before TONI R. SCHEINER, 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 the three cited cases.
`The parties are not authorized to use this style heading for any subsequent papers.
`
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`
`On August 23, 2018, Patent Owner Horizon Therapeutics, LLC (“Horizon”)
`contacted the Board by e-mail regarding filing sur-replies in response to replies
`filed by Petitioner Par Pharmaceutical, Inc. (“Par”) in each of the three instant
`proceeedings. According to Horizon, Par’s replies rely, at least in part, on newly
`submitted declarations by Neal Sondheimer, M.D., Ph.D. Horizon reports that Par
`does not oppose the filing of sur-replies by Horizon in lieu of motions for
`observation on cross-examination.
`Because Par allegedly presented new testimonial evidence, Horizon is
`authorized to file sur-replies in the proceedings named above. These sur-replies
`may rely on the cross-examination testimony of Dr. Sondheimer regarding the
`declarations Par cites in these proceedings.
`In the e-mail, Horizon also sought confirmation that it may discuss and
`include as an exhibit in its sur-replies, a declaration of Dr. Sondheimer filed by
`Par in a different proceeding (Inter Partes Review of U.S. Patent No. 9,561,197
`(IPR2018-01550, Ex. 1002)). Horizon asserted that Dr. Sondheimer’s declaration
`in that proceeding contains testimony that is relevant to Dr. Sondheimer’s opinions
`in the instant proceedings. Horizon reports that Par opposes the submission of the
`Sondheimer declaration from IPR2018-01550 as an exhibit to Horizon’s sur-reply.
`Because Horizon will have an opportunity to cross-examine Dr. Sondheimer
`on the testimony Par presented in the instant proceedings, Horizon has an
`opportunity to elicit Dr. Sondheimer’s opinions on information relevant to these
`proceedings. There is no need for Horizon to present prepared testimony from a
`different proceeding. Accordingly, Horizon’s sur-replies may not be accompanied
`by new evidence other than the deposition transcript(s) of the cross-examination of
`Dr. Sondheimer submitted in support Petitioner’s replies.
`
`
`
`2
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`
`It is ORDERED that Horizon is AUTHORIZED to file sur-replies in the
`above proceedings to address arguments made and evidence presented in Par’s
`replies.
`It is further ORDERED that any sur-reply be filed by 17 September 2018
`and that it not exceed 10 pages.
`It is further ORDERED that Horizon is NOT AUTHORIZED to rely on any
`new evidence, including declarations of witnesses from other proceedings, in its
`sur-replies.
`
`
`
`Petitioner:
`
`
`
`David H. Silverstein
`Dan Feng Mei
`Aziz Burgy
`Axinn, Veltrop & Harkrider LLP
`dsilverstein@axinn.com
`dmei@axinn.com
`Ravicti@axinn.com
`aburgy@axinn.com
`
`
`
`Patent Owner:
`
`
`Robert Green
`Emer Simic
`Ann Kotze
`Griffith & Borg-Breen, LLP
`rgreen@greengriffith.com
`esimic@greengriffith.com
`akotze@greengriffith.com
`
`
`
`3
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`
`
`Matthew Phillips
`Laurence & Phillips IP Law LLP
`mphillips@lpiplaw.com
`
`Dennis Bennett
`GLOBAL PATENT GROUP, LLC
`dennisbennett@globalpatentgroup.com
`
`
`
`
`
`4
`
`
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