`571-272-7822 Entered: January 18, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`POZEN INC. and HORIZON PHARMA USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01995
`Patent 9,220,698 B2
`____________
`
`
`Before TONI R. SCHEINER, MICHELLE N. ANKENBRAND, and
`DEBRA L. DENNETT, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Request to File Reply
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`
`On January 18, 2017, the Board held a conference call between
`counsel for the parties and Judges Ankenbrand, Scheiner, and Dennett to
`discuss Petitioner’s request for authorization to file a Reply to Patent
`Owner’s Preliminary Response. We resolved the issue during the course of
`the conference call. This Order further details the contours of our ruling.
`In an email communication to the Board, Petitioner requested
`authorization to file a Reply to Patent Owner’s Preliminary Response to
`address Patent Owner’s arguments that the Petition is barred under
`35 U.S.C. § 315. During the conference call, Petitioner submitted that it
`should be permitted to file a Reply in order to complete the factual record
`regarding a dismissal without prejudice of certain of Petitioner’s
`counterclaims in a related district court litigation. Petitioner also argued that
`good cause existed for a reply because it had no reason to anticipate Patent
`Owner’s argument that the Petition is barred, in light of what Petitioner
`characterized as “controlling” Board decisions.
`Patent Owner argued that Petitioner did not make a good cause
`showing because Petitioner did not point to any new facts and already
`presented its arguments generally in the email to the Board requesting the
`conference call.
`Pursuant to 37 C.F.R. § 42.108(c), a petitioner may seek leave to file a
`reply to the preliminary response, but is required to “make a showing of
`good cause.” Although mindful of Patent Owner’s argument that Petitioner
`did not point to new facts, we determined that Petitioner satisfied its good-
`cause showing and that the Board would benefit from a more complete
`record regarding the dismissal without prejudice of Petitioner’s
`counterclaims in the district court litigation. We, therefore, authorized
`
`
`
`2
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`Petitioner to file a Reply, not to exceed 3 pages, within 5 business days of
`this Order. We also directed Petitioner to file the pleading from the district
`court litigation dismissing Petitioner’s counterclaim as an exhibit in this
`proceeding.
`
`In view of the foregoing, it is
`ORDERED that Petitioner’s request for authorization to file a Reply
`to Patent Owner’s Preliminary Response is granted;
`FURTHER ORDERED that Petitioner’s Reply is limited to 3 pages
`addressing Patent Owner’s arguments that the Petition is barred under
`35 U.S.C. § 315;
`FURTHER ORDERED that Petitioner shall file the Reply within
`5 business days of this Order; and
`FURTHER ORDERED that Petitioner shall file the pleading from the
`district court litigation dismissing Petitioner’s counterclaim as an exhibit in
`this proceeding, but no other evidence in support of the Reply.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01995
`Patent 9,220,698 B2
`
`
`
`PETITIONER:
`Brandon M. White
`Emily Greb
`PERKINS COIE LLP
`bmwhite@perkinscoie.com
`egreb@perkinscoie.com
`
`
`PATENT OWNER:
`Thomas A. Blinka, Ph.D.
`COOLEY LLP
`TBlinka@cooley.com
`
`Margaret J. Sampson, Ph.D.
`BAKER BOTTS LLP
`Margaret.Sampson@bakerbotts.com
`
`
`
`
`4
`
`
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