Trials@uspto.gov
`571-272-7822
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`Paper 19
`Date: September 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BRISTOL-MYERS SQUIBB COMPANY and PFIZER INC.,
`Patent Owners.
`
`
`
`Case IPR2018-00892
`Patent 9,326,945 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN and ZHENYU YANG, Administrative
`Patent Judges.
`
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`571-272-7822
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`
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`
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`Paper 19
`Date: September 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BRISTOL-MYERS SQUIBB COMPANY and PFIZER INC.,
`Patent Owners.
`
`
`
`Case IPR2018-00892
`Patent 9,326,945 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN and ZHENYU YANG, Administrative
`Patent Judges.
`
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2018-00892
`Patent 9,326,945 B2
`
`Petitioner Mylan Pharmaceuticals Inc. filed a Petition requesting inter
`
`partes review of claims 1–38 of U.S. Patent No. 9,326,945 B2 (Ex. 1001).
`
`Paper 2 (“Pet.”). The Petition identifies Mylan Pharmaceuticals Inc., Mylan
`
`Inc., and Mylan N.V. as the real parties in interest. Pet. 1. The relationship
`
`between the entities is described in the Petition as follows:
`
`The real parties-in-interest are Mylan Pharmaceuticals
`Inc., the Petitioner in this matter and a wholly owned
`subsidiary of Mylan Inc.; Mylan Inc., which is an indirectly
`wholly owned subsidiary of Mylan N.V.; and Mylan N.V.
`
`Id.
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`In its preliminary response, Bristol-Myers Squibb Company and
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`Pfizer Inc. (“Patent Owners”) argued that Petitioner failed to name all real
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`parties in interest (“RPI”). Paper 18 (“Prelim. Resp.”), 45–50. In particular,
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`Patent Owners question whether Mylan N.V. is properly listed as a real party
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`in interest and whether at least Mylan Holdings Ltd. and Mylan Holdings
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`Inc. are real parties in interest. In an e-mail to the Board on August 9, 2018,
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`Petitioner requested permission to file a reply to address the RPI issue. A
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`conference call was held between counsel for the parties and the Board on
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`August 30, 2018, to discuss Petitioner’s request. A transcript of the
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`conference call will be entered by Petitioner.
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`During the conference call, we discussed the reasons for Petitioner’s
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`request, giving the parties the opportunity to present their arguments and
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`explanations to support their positions. Based on our consideration of the
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`parties’ position, we agreed to authorize Petitioner to file a reply and Patent
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`Owner to file a sur-reply to Petitioner’s Reply. We ordered, with the parties’
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`agreement, that Petitioner will have until September 7, 2018 to file its reply,
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`and we limited the reply to 7 pages. We further ordered that Patent Owner
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`2
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`IPR2018-00892
`Patent 9,326,945 B2
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`will have until September 14, 2018 to file its sur-reply, and we limited the
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`sur-reply to 7 pages. Neither the reply nor the sur-reply shall include any
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`new evidence beyond that already of record. Any information violating our
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`Order will not be considered.
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`We further considered the question of authorizing Petitioner to modify
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`its mandatory notices to amend its mandatory notices to name other real
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`parties in interest. Our precedential decision in Lumentum Holdings, Inc. v.
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`Capella Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB Mar. 4,
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`2016) (Paper 38), indicates that “a lapse in compliance with those
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`requirements [under 35 U.S.C. § 312(a), including that all real parties in
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`interest be identified] does not deprive the Board of jurisdiction over the
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`proceeding, or preclude the Board from permitting such lapse to be
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`rectified.” See also Intel Corp. v. Alacritech, Inc., Case IPR2017-01392,
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`slip op. at 23 (PTAB Nov. 30, 2017) (Paper 11) (noting that real parties in
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`interest can be corrected); Elekta, Inc. v. Varian Med. Sys., Inc., Case
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`IPR2015-01401, slip op. at 6–10 (PTAB Dec. 31, 2015) (Paper 19) (holding
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`that disclosing additional real parties in interest via an updated disclosure
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`does not mandate a change in petition filing date). Furthermore, our policy
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`is to “secure the just, speedy, and inexpensive resolution of every [inter
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`partes review] proceeding.” 37 C.F.R. § 42.1. To that end, we grant
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`Petitioner leave, if it wishes, to amend its mandatory notices to include other
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`parties. Such amendment would not change the filing date accorded to the
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`petitions in these proceedings. This Order shall not be construed as a
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`finding that any of Mylan N.V., Mylan Holdings Ltd., or Mylan Holdings
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`Inc. are real parties in interest in these proceedings.
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`For the reasons given, it is hereby:
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`
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`3
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`IPR2018-00892
`Patent 9,326,945 B2
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`ORDERED that within 7 days of the entry of this Order, Petitioner
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`may amend its mandatory notices to name other parties as a real party in
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`interest, and such updating of its mandatory notices will not result in a new
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`filing date accorded to the petitions;
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`FURTHER ORDERED that in lieu of updating its mandatory notices,
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`Petitioner may file a 7-page reply brief to address Patent Owner’s RPI
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`arguments, if such briefs are filed by September 7, 2018; and
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`FURTHER ORDERED that Patent Owner is authorized to file a 7-
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`page sur-reply in response to Petitioner’s reply brief, if filed, by September
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`14, 2018.
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`4
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`IPR2018-00892
`Patent 9,326,945 B2
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`PETITIONER:
`
`Robert Florence
`robertflorence@parkerpoe.com
`
`Karen Carroll
`karencarroll@parkerpoe.com
`
`Michael Binns
`michaelbinns@parkerpoe.com
`
`Sharad Bijanki
`sharadbijanki@parkerpoe.com
`
`
`
`PATENT OWNER:
`
`Heather Petruzzi
`Heather.petruzzi@wilmerhale.com
`
`Timothy Cook
`Tim.cook@wilmerhale.com
`
`Kevin Yurkerwich
`Kevin.yurkerwich@wilmerhale.com
`
`Michael Nelson
`Michael.nelson@wilmerhale.com
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`5
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