`Tel: 571-272-7822
`
`
`
`
`Paper 22
`Entered: April 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01403
`Patent No. 8,399,514
`_______________
`
`
`Before SHERIDAN K. SNEDDEN and JACQUELINE T. HARLOW,
`Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`With its Petition, Petitioner submitted a declaration of Robert Mihail.
`Ex. 1054. The Mihail Declaration is an identical copy of the declaration
`previously submitted in IPR2015-01993. Petitioner also served on Patent
`Owner supplemental evidence in the form of a declaration from Emily Greb,
`not yet entered into this proceeding. A conference call in the above
`proceeding was held on April 12, 2019, among respective counsel for
`Petitioner and Patent Owner, and Judges Snedden and Harlow. During the
`call, we discussed whether the declarations are subject to the provisions of
`37 C.F.R. § 42.51(b)(1) (“routine discovery”) or § 42.51(b)(2) (“additional
`discovery”). A transcript of the conference call will be entered by Patent
`Owner.
`During the call, it was preliminarily determined that those declarations
`were not prepared for the purposes of this inter partes review, and thus, that
`the routine-discovery provisions of § 42.51(b)(1) do not apply. See
`Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., Case
`IPR2013–00576, Paper 29 (PTAB Aug. 15, 2014) (“if the declaration was
`not prepared for purposes of the instant inter partes review—such as
`preexisting documentary evidence filed previously in another proceeding—
`cross-examination of the witness would not be provided as routine
`discovery.”). We further explained that, although cross-examination of the
`declarants is not provided as routine discovery under § 42.51(b)(1), several
`factors remain relevant in assessing the weight to be accorded to their
`testimony, including whether the declarants were cross-examined.
`Additionally, we will evaluate whether evidence cited in a paper sufficiently
`supports a contention made by a party in the paper. See Mexichem at 3.
`
`2
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`During the call, Patent Owner requested authorization to file a motion
`for additional discovery to compel testimony in the form of deposition
`testimony from Mr. Mihail and Ms. Greb. Based on our consideration of the
`parties’ position, we agreed to authorize Patent Owner to file a motion for
`additional discovery. The parties are reminded that additional discovery is
`permitted in an inter partes review only in the interests of justice. See
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip
`op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (precedential) (providing factors
`important to deciding a motion for additional discovery). The mere
`possibility of finding something useful, and mere allegation that something
`useful will be found, are insufficient to demonstrate that the requested
`discovery is necessary in the interest of justice. Id. at 6. The party
`requesting discovery should already be in possession of evidence tending to
`show beyond speculation that in fact something useful will be uncovered.
`Id.
`
`Accordingly, Patent Owner is granted permission to file its motion,
`limited to 7 pages, no later than April 22, 2019. Petitioner may file an
`opposition by April 30, 2019, also limited to 7 pages.
`It is
`SO ORDERED
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`PETITIONER:
`
`Brandon White
`Emily Greb
`PERKINS COIE LLP
`White-ptab@perkinscoie.com
`Greb-ptab@perinscoie.com
`
`
`
`PATENT OWNER:
`
`Barbara McCurdy
`Erin Sommers
`Pier DeRoo
`Mark Feldstein
`FINNEGAN, HENDERSON, FARABOW, GARRETT
` & DUNNER, LLP
`Barbara.mccurdy@finnegan.com
`Erin.sommers@finnegan.com
`Pier.deroo@frinnegan.com
`Mark.feldstein@finnegan.com
`
`
`
`
`4
`
`
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