`571.272.7822
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`Paper: 19
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`Entered: October 18, 2018
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`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)
` Case IPR2018-00739 (Patent 9,364,435)1
`____________
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, SUSAN L.C. MITCHELL, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1This Order addresses issues that are 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)
`IPR2018-00739 (Patent 9,364,435)
`
`
`An initial conference in both IPR2018-00680, involving U.S. Patent
`No. 9,404,127, and IPR2018-00739, involving U.S. Patent No. 9,364,435,
`was conducted among Judges Snedden and Smith and respective counsel for
`the parties on October 2, 2018. Petitioner Moderna Therapeutics, Inc. was
`represented by Michael Fleming and Patent Owner Protiva Biotherapeutics,
`Inc. was represented by Michael Rosato. A written transcript of the
`conference call is of record in the respective proceedings. Ex. 2008.
`During the call, counsel for the parties indicated that they were aware
`of the recent Trial Practice Guide Update (August 2018).
`Counsel for Patent Owner raised questions about the Trial Practice
`Guide Update and the grounds of challenge presented in the respective
`petitions or institution decisions. As to any potential difference between the
`Office Patent Trial Practice Guide published in August 2012 and the August
`2018 update thereto (and any other updates), the most recent update controls
`unless it expressly states otherwise.
`As to Patent Owner’s concerns regarding the grounds of challenge,
`both parties will continue to have a fair opportunity to respond to any
`evidence or arguments presented by the other party, and improper evidence
`or arguments will not be allowed. For example, as set forth in the Section II
`(I.) of the Trial Practice Guide Update (August 2018), Patent Owner is
`allowed a sur-reply to respond to Petitioner’s reply.
`So ORDERED.
`
`
`
`
`
`
`2
`
`
`
`IPR2018-00680 (Patent 9,404,127)
`IPR2018-00739 (Patent 9,364,435)
`
`
`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 s
`gerrard@wsgr.com
`
`3
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`