`Tel: 571-272-7822
`
`
`
`
`
`Paper 8
`Entered: December 10, 2018
`
`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
`
`
`In an email correspondence sent to the Board on November 30, 2018,
`
`the counsel for Petitioner requested a teleconference to seek permission to
`
`file a three-page reply to the Patent Owner Preliminary Response. The
`
`relevant portion of the email reads as follows:
`
`Patent Owner Biogen MA, Inc.’s (“Biogen”) preliminary
`response asks the Board to deny institution of Mylan’s IPR based
`on, inter alia, the Federal Circuit’s October 24, 2018 decision in
`FWP IP APS v. Biogen MA, Inc., No. 2017-2109. See, e.g., Paper
`No. 7 at 2, 15-16, 33-34, 45, 47. That decision concerns
`Interference No. 106,023 and the ’514 patent challenged here.
`Among other things, Biogen claims the Federal Circuit’s opinion
`“confirmed that Biogen’s unexpected results are ‘significant.’”
`Id. at 2. Mylan disagrees, and respectfully requests an
`opportunity to respond. Because the Federal Circuit’s decision
`was published several months after the July 13, 2018 filing date
`of Mylan’s Petition, it was impossible for Mylan to address the
`decision in its Petition. Given the timing of the Federal Circuit’s
`decision, and the fact that it involves the same patent at issue
`here, Mylan believes that there is good cause to grant this
`request.
`
`Patent Owner opposes Petitioner’s request.
`
`Given the timing of the Federal Circuit’s opinion, we authorize
`
`Petitioner to file a reply and Patent Owner to file a sur-reply.
`
`Upon consideration thereof, it is hereby:
`
`ORDERED that Petitioner may file a 3-page reply brief to Patent
`
`Owner’s Preliminary Response within 7 days of the entry of this Order; and
`
`FURTHER ORDERED that Patent Owner may file a 3-page sur-reply
`
`in response to Petitioner’s Reply within 7 days of the filing of Petitioner’s
`
`Reply.
`
`
`
`
`
`2
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`PETITIONER:
`
`Brandon White
`bmwhite@perkinscoie.com
`
`Emily Greb
`egreb@perkinscoie.com
`
`PATENT OWNER:
`
`Barbara McCurdy
`Barbara.mccurdy@finnegan.com
`
`Erin Sommers
`Erin.sommers@finnegan.com
`
`Pier DeRoo
`Pier.deroo@finnegan.com
`
`
`
`3
`
`
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