Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 60
`Entered: January 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY,1
`Patent Owners.
`_______________
`Case IPR2017-019952 (Patent 9,220,698 B2)
`Case IPR2018-00272 (Patent 9,393,208 B2)
`_______________
`
`
`
`
`
`
`1 Pozen Inc. (“Pozen”) was initially identified as a patent owner in this proceeding.
`See, e.g., Paper 1, caption. On August 31, 2018, we suspended all deadlines in
`these proceedings after Pozen filed a Suggestion of Bankruptcy (Paper 8). Case
`IPR2017-01995 (“1995 IPR”) Paper 51. On January 4, 2019, Petitioner Mylan
`Pharmaceuticals Inc. filed an order from the bankruptcy court approving the sale of
`certain of Pozen’s assets, including U.S. Patent Nos. 9,220,698 B2 (“the ’698
`patent”) and 9,393,208 B2 (“the ’208 patent”), which lifted the automatic stay of
`this proceeding. See 1995 IPR Ex. 1051. On January 16, 2019, we received
`Mandatory Notices identifying Nuvo Pharmaceuticals (Ireland) Designated
`Activity Company (“Nuvo”) as a real party-in-interest in this proceeding. 1995
`IPR Paper 54. Nuvo also filed an Amended Power of Attorney appointing certain
`practitioners “to transact all business in the [Office] associated with inter partes
`review of” the ’698 and ’208 patents. 1995 IPR Paper 55, 1; Case IPR2018-00272
`(“the 272 IPR”) Paper 17, 1. Accordingly, we modify the original case caption to
`reflect the change in ownership of the ’698 and ’208 patents. The parties shall use
`the modified caption for filings in this proceeding from this date forward.
`2 Petitioner Dr. Reddy’s Laboratories, Inc., from IPR2018-00894, has been joined
`as a Petitioner to this proceeding.
`
`

`

`IPR2017-01995 (Patent 9,220,698 B2)
`IPR2018-00272 (Patent 9,393,208 B2)
`
`Before TONI R. SCHEINER, MICHELLE N. ANKENBRAND, and
`DEBRA L. DENNETT, Administrative Patent Judges.
`
`DENNETT, Administrative Patent Judge.
`
`
`ORDER3
`Conduct of the Proceeding
`37 .C.F.R § 42.5
`A conference call in the above proceedings was held on January 24, 2019,
`between respective counsel for the parties and Judges Scheiner, Ankenbrand, and
`Dennett. The purpose of the conference was to discuss: (1) changes to the
`Scheduling Order as a result of the bankruptcy court’s sale order, which lifted the
`stay of these proceedings; (2) whether the parties desired additional briefing as to
`the effect of the Federal Circuit’s decision in Click-to-Call Technologies, LP v.
`Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (“Click-to-Call”) on our decision to
`institute review in the 1995 IPR; and (3) Horizon Pharma Inc.’s request for
`authorization to file a motion to terminate these proceedings (and related
`proceeding Case IPR2018-01341).
`Scheduling Order Changes
`We first discussed with counsel for the parties a new schedule for the
`proceedings now that the automatic stay has been lifted. The parties agreed that
`we should hold the oral hearing in both proceedings on the same date. We
`instructed the parties to meet and confer, and to file a jointly proposed schedule for
`each proceeding no later than February 1, 2019.4 The proposed schedule shall
`include a hearing date of early- to mid-June, 2019.
`
`
`3 This order applies to both cases. The parties are not authorized to use this style
`heading in subsequent papers without prior Board authorization.
`4 Patent Owners filed a Response to the Petition in the 1995 IPR, but have not yet
`
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`

`

`IPR2017-01995 (Patent 9,220,698 B2)
`IPR2018-00272 (Patent 9,393,208 B2)
`
`
`Additional Briefing Addressing Click-to-Call in the 1995 IPR
`In the Preliminary Response to the Petition in the 1995 IPR, Patent Owners
`argued that the Petition was barred under 35 U.S.C. §§ 315(a) and (b), based on
`Petitioner’s counterclaim asserting invalidity of the ’698 patent in district court
`litigation concerning patents other than the ’698 patent and Patent Owners’ answer
`to that counterclaim. 1995 IPR Preliminary Response 1, 10–12. We did not reach
`the § 315 issues in the Decision to Institute (Paper 18, “Decision” or “Dec.”)
`because Petitioner voluntarily dismissed without prejudice the counterclaim related
`to the ’698 patent, and we found that the voluntary dismissal placed the parties in a
`position as if the action had never been filed. Dec. 13–15.
`After we issued the Decision, the Federal Circuit issued its decision in Click-
`to-Call, holding that the statutory time bar of 35 U.S.C. § 315(b) applies to bar
`institution of an inter partes review proceeding, even if the infringement action
`was voluntarily dismissed without prejudice. 899 F.3d at 1329. Although the facts
`in the 1995 IPR differ from those in Click-to-Call, we find that the similarity of
`issues warrants additional briefing on the applicability of §§ 315(a) and (b) to the
`1995 IPR in light of the Federal Circuit’s decision. Therefore, Petitioners and
`
`
`filed a Response to the Petition in the 272 IPR. The parties should allow sufficient
`time for the Patent Owners’ Response in the 272 IPR (DUE DATE 1), and then
`provide the same dates for DUE DATES 2–7, so that both proceedings can proceed
`on the same schedule. Further, although DUE DATE 4 of the original schedule in
`each proceeding permits observations regarding the cross-examination of reply
`witnesses (“observations”), see 1995 IPR Paper 19, 6, the parties should replace
`the observations with a Patent Owner Sur-Reply by DUE DATE 3, in accordance
`with the August 2018 updated to the Office Patent Trial Practice Guide. See Office
`Patent Trial Practice Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13,
`2018).
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`

`IPR2017-01995 (Patent 9,220,698 B2)
`IPR2018-00272 (Patent 9,393,208 B2)
`
`Patent Owners may file a brief in support of their position, of no more than five (5)
`pages, by close of business (5:00 PM ET) on February 8, 2019.
`Motion to Terminate
`In advance of the conference, the Board received an email communication
`from Horizon seeking authorization to file a motion to terminate these proceedings
`and related proceeding Case IPR2018-01341. Attachment 1 (copy of email).
`During the conference, Patent Owners represented that Petitioners argued in the
`co-pending district court litigation that the claims of the ’698 and ’208 patents are
`invalid as indefinite, and that the district court agreed, granting summary judgment
`of invalidity. Patent Owners contended that Petitioner should not be permitted to
`take an opposing position in these proceedings. Thus, Patent Owners argued that
`they should be permitted to file a motion to terminate these proceedings.
`Petitioners opposed Patent Owners’ request, pointing to our Decision on
`Institution in each of these proceedings, which applied the asserted prior art to the
`challenged claims of the ’698 and ’208 patents. Petitioner also pointed out that
`Patent Owners had not yet stated whether they would appeal the district court’s
`decision and argued that it would be inappropriate to terminate these proceedings if
`Patent Owners were to appeal the district court’s decision because that decision
`would not be final.
`After having considered the parties’ arguments, and based upon the facts and
`circumstances presented, we grant Patent Owners’ request for authorization to file
`the motion, subject to the following deadlines and pages limits. Patent Owners’
`may file a motion to terminate, of no more than ten (10) pages, by close of
`business (5:00 PM ET) on February 8, 2019. Petitioner may file a response to the
`motion, of no more than ten (10) pages, by close of business (5:00 PM ET) on
`February 22, 2019.
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`IPR2017-01995 (Patent 9,220,698 B2)
`IPR2018-00272 (Patent 9,393,208 B2)
`
`
`ORDER
`
`It is
`ORDERED that the parties meet and confer, and file a jointly proposed
`Scheduling Order on or before February 1, 2019, in accordance with the guidance
`set forth herein, and which shall include a proposed hearing date in early to mid-
`June, 2019;
`FURTHER ORDERED that either party desiring to file a brief on the
`applicability of 35 U.S.C. §§ 315(a) and (b) shall file such brief, of no more than
`five (5) pages, by close of business (5:00 PM ET) on February 8, 2019;
`FURTHER ORDERED that Patent Owners may file a motion to terminate,
`of no more than ten (10) pages, by close of business (5:00 PM ET) on February 8,
`2019; and
`FURTHER ORDERED that Petitioner may file a response to the motion to
`terminate, of no more than ten (10) pages, by close of business (5:00 PM ET) on
`February 22, 2019.
`
`
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`IPR2017-01995 (Patent 9,220,698 B2)
`IPR2018-00272 (Patent 9,393,208 B2)
`
`For PETITIONER:
`
`Brandon M. White
`Emily Greb
`PERKINS COIE LLP
`bmwhite@perkinscoie.com
`egreb@perkinscoie.com
`
`Allan Pollack
`Louis Weinstein
`BUDD LARNER PC
`apollack@buddlarner.com
`lweinstein@buddlarner.com
`
`For PATENT OWNER:
`Thomas A. Blinka, Ph.D.
`COOLEY LLP
`TBlinka@cooley.com
`
`Margaret J. Sampson, Ph.D.
`BAKER BOTTS LLP
`Margaret.Sampson@bakerbotts.com
`
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