Trials@uspto.gov
`571-272-7822
`
`Paper 38
`Entered: May 8, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MODERNA THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`PROTIVA BIOTHERAPEUTICS, INC.,
`Patent Owner.
`________
`____________
`
`Case IPR2018-00680 (Patent 9,404,127 B2)
`Case IPR2018-00739 (Patent 9,364,435 B2)1
`_____________
`
`Before SHERIDAN K. SNEDDEN, SUSAN L.C. MITCHELL, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 This Order addresses an issue that is common to both cases. We, therefore,
`issue a single Order that has been entered in each case. The parties may use
`this style caption when filing a single paper in multiple proceedings,
`provided that such caption includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the caption.”
`
`
`571-272-7822
`
`Paper 38
`Entered: May 8, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MODERNA THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`PROTIVA BIOTHERAPEUTICS, INC.,
`Patent Owner.
`________
`____________
`
`Case IPR2018-00680 (Patent 9,404,127 B2)
`Case IPR2018-00739 (Patent 9,364,435 B2)1
`_____________
`
`Before SHERIDAN K. SNEDDEN, SUSAN L.C. MITCHELL, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 This Order addresses an issue that is common to both cases. We, therefore,
`issue a single Order that has been entered in each case. The parties may use
`this style caption when filing a single paper in multiple proceedings,
`provided that such caption includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the caption.”
`
`
`
`IPR2018-00680 (Patent 9,404,127 B2)
`IPR2018-00739 (Patent 9,364,435 B2)
`
`
`Moderna Therapeutics, Inc. (“Petitioner”) requests authorization to
`
`file a motion to strike alleged new evidence, new arguments, and related
`
`portions of a sur-reply filed by Protiva Biotherapeutics, Inc. (“Patent
`
`Owner”). Ex. 3001, 2; Ex. 1026, 4:1–16. Patent Owner responds that the
`
`alleged new material is not, in fact, new and is proper rebuttal as it addresses
`
`alleged new arguments that Petitioner raised in its Reply. Ex. 3001, 1;
`
`Ex. 1026, 4:20–6:12. If authorization is granted for Petitioner to file a
`
`motion to strike, Patent Owner seeks authorization to file a motion for
`
`sanctions for Petitioner’s alleged failure to comply with discovery
`
`requirements to produce Petitioner’s publications that allegedly contradict
`
`positions taken by Petitioner in its Reply. Ex. 3001, 1; Ex. 1026, 14:16–
`
`17:25. Patent Owner also requests that Petitioner replace marked up
`
`versions of several exhibits in both IPR2018-00680 and IPR2018-00739
`
`with clean versions for use by both parties. Ex. 3002, 3; Ex. 1026, 24:5–
`
`25:1. We held a conference call with the parties on April 30, 2019, to
`
`discuss these requests.
`
`
`
`With regard to Petitioner’s request for authorization to file a motion to
`
`strike alleged new evidence and argument presented by Patent Owner in its
`
`sur-reply, Petitioner asserts the following:
`
`The sur-reply materials attempt to introduce new evidence for
`the ’435 patent on which trial was instituted, including new
`exhibits 2046–2052 and related discussions in the sur-reply at
`pages 19–20 & 25–29. The sur-reply materials also attempt to
`introduce new arguments regarding the ’554 publication at
`page 11, footnote 7 and test data from Examples 7–11 in the
`’435 patent that was not previously referenced.
`
`Ex. 3001, 2.
`
`
`
`2
`
`
`
`IPR2018-00680 (Patent 9,404,127 B2)
`IPR2018-00739 (Patent 9,364,435 B2)
`
`
`
`Patent Owner responds that the same material is addressed in the
`
`Patent Owner’s Reply to Petitioner’s Opposition to its Motion to Amend.
`
`Id. at 1. Patent Owner also asserts that “the identified material directly
`
`addresses new arguments raised in Petitioner’s Reply and, therefore, is
`
`properly responsive in Sur-Reply.” Id.
`
`Petitioner points us to the recent Trial Practice Guide Update of
`
`August 2018 that states that:
`
`The sur-reply may not be accompanied by new evidence other
`than deposition transcripts of the cross-examination of any
`reply witness. Sur-replies should only respond to arguments
`made in reply briefs, comment on reply declaration testimony,
`or point to cross-examination testimony. . . . This sur-reply
`practice essentially replaces the previous practice of filing
`observations on cross-examination testimony.
`
`TRIAL PRACTICE GUIDE UPDATE, 83 Fed. Reg. 39,989 (announced);
`
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`
`actice_Guide.pdf (full text) at 14 (last visited May 6, 2019).
`
`
`
`The Trial Practice Guide Update also discusses when a motion to
`
`strike is appropriate.
`
`A motion to strike may be appropriate when a party believes the
`Board should disregard arguments or late-filed evidence in its
`entirety, whereas further briefing may be more appropriate
`when the party wishes to address the proper weight the Board
`should give to the arguments or evidence. In most cases, the
`Board is capable of identifying new issues or belatedly
`presented evidence when weighing the evidence at the close of
`trial, and disregarding any new issues or belatedly presented
`evidence that exceeds the proper scope of reply or sur-reply.
`As such, striking the entirety or a portion of a party’s brief is an
`exceptional remedy that the Board expects will be granted
`rarely.
`
`Id. at 17–18.
`
`
`
`3
`
`
`
`IPR2018-00680 (Patent 9,404,127 B2)
`IPR2018-00739 (Patent 9,364,435 B2)
`
`
`With this guidance in mind, we address the parties’ requests for
`
`authorization. The first question to consider is whether Exhibits 2046–2052
`
`are, in fact, new. Patent Owner submitted Exhibits 2046–2052 with its
`
`Reply to Opposition to the Motion to Amend, see Ex. 1026, 4:20–5:7, as
`
`well as in support of its sur-reply. Petitioner does not appear to complain
`
`about Patent Owner’s use of these exhibits in support of its Motion to
`
`Amend except as a possible end-run around the guidance that a sur-reply
`
`may not be accompanied by new evidence other than deposition transcripts
`
`of the cross-examination of any reply witness. See id. at 10:19–11:20.
`
`Petitioner does not assert that Patent Owner improperly relied on any
`
`evidence or argument in Patent Owner’s Reply to Opposition to the Motion
`
`to Amend at least in relation to its request to file a motion to strike.
`
`Therefore, at least as to the exhibits and arguments supported by these
`
`exhibits presented in Patent Owner’s Reply to Opposition to the Motion to
`
`Amend, the evidence should not be considered “new” in relation to Patent
`
`Owner’s sur-reply.
`
`In any event, we have reviewed Patent Owner’s citations to the
`
`discussions in Patent Owner’s sur-reply at pages 19–20 and 25–29, and the
`
`alleged new arguments regarding the ’554 publication and the test data from
`
`Examples 7–11 in the ’435 patent, and find that these discussions are
`
`responsive to Petitioner’s arguments set forth in its Reply, which is an
`
`appropriate use of Patent Owner’s sur-reply. Therefore, we deny
`
`Petitioner’s request for authorization to file a motion to strike. Patent
`
`Owner’s request to file a motion for sanctions is also denied.
`
`With regard to Patent Owner’s request that clean copies of exhibits be
`
`filed to replace exhibits with highlighted portions that Petitioner referenced
`
`
`
`4
`
`
`
`IPR2018-00680 (Patent 9,404,127 B2)
`IPR2018-00739 (Patent 9,364,435 B2)
`
`in briefing, we agree that Petitioner should file clean copies of these
`
`exhibits. Both parties may utilize any evidence in the record and should be
`
`able to refer to exhibits that are not highlighted with an opposing party’s
`
`referenced material. Therefore, we grant Patent Owner’s request that
`
`Exhibits 1019 and 1020 in IPR2018-00739 and Exhibits 1023, 1024, and
`
`1026 in IPR2018-00680 be replaced with clean copies of the exhibits.
`
`In consideration of the foregoing, it is hereby:
`
`ORDER
`
`
`
`ORDERED that the Petitioner’s request for authorization to file a
`
`Motion to Strike is denied;
`
`
`
`FURTHER ORDERED that Patent Owner’s request for authorization
`
`to file a Motion for Sanctions is denied;
`
`FURTHER ORDERED that Patent Owner’s request that Petitioner
`
`replace marked up versions of several exhibits in both IPR2018-00680 and
`
`IPR2018-00739 with clean versions for use by both parties is granted;
`
`FURTHER ORDERED that the Petitioner shall file replacement,
`
`clean copies of Exhibits 1019 and 1020 in IPR2018-00739 and Exhibits
`
`1023, 1024, and 1026 in IPR2018-00680, preserving the same exhibit
`
`numbers, within five (5) business days from the entry of this Order; and
`
`FURTHER ORDERED that the highlighted copies of Exhibits 1019
`
`and 1020 in IPR2018-00739 and Exhibits 1023, 1024, and 1026 in IPR2018-
`
`00680, will be expunged when the replacement copies are filed.
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00680 (Patent 9,404,127 B2)
`IPR2018-00739 (Patent 9,364,435 B2)
`
`PETITIONER:
`
`Michael Fleming
`mfleming@irell.com
`
`Crawford Wells
`mwells@irell.com
`
`
`PATENT OWNER:
`
`Michael Rosato
`mrosato@wsgr.com
`
`Steven Parmelee
`sparmelee@wsgr.com
`
`Sonja Gerrard
`sgerrard@wsgr.com
`
`
`
`
`6
`
`
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