`Tel: 571-272-7822
`
`Paper: 8
`Entered: August 7, 2018
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`BAYLOR COLLEGE OF MEDICINE,
`Petitioner,
`
`v.
`
`THE BOARD OF REGENTS OF THE
`UNIVERSITY OF TEXAS SYSTEM and GENSETIX, INC.,
`Patent Owner.
`____________
`
`Cases
`IPR2018-00948 (Patent 8,728,806 B2)
`IPR2018-00949 (Patent 9,333,248 B2)
`____________
`
`
`Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`SCHNEIDER, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2016, p. 1
`
`
`
`IPR2018-00948 (Patent 8,728,806 B2)
`IPR2018-00949 (Patent 9,333,248 B2)
`
`
`In an email dated July 3, 2018, The Board of Regents of the University of
`Texas System (“Patent Owner) requested authorization to file a motion to dismiss in
`IPR2018-00948 and IPR2018-00949. Patent Owner indicated that the request would
`be based on Patent Owner’s claim of sovereign immunity. In the email, Patent
`Owner proposed a briefing schedule for the proposed motions and indicated that
`Petitioner consented to the proposed briefing schedule.
`On July 10, 20018, we issued an order denying Patent Owner’s request but
`authorized Patent Owner to renew its request once the Federal Circuit issue its
`decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc., Appeal No.
`18-1638 (“Saint Regis”). (Paper 7). We also suspended the deadline for filing the
`Patent Owner’s preliminary response until the Federal Circuit issued its decision in
`St. Regis.
`On July 20, 208, the Federal Circuit issued its decision in St. Regis. Saint
`Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc., 2018 WL 3484448 (Fed. Cir.
`2018). In an email dated July 25, 2018, Patent Owner renewed it request to file a
`motion to dismiss on the grounds of sovereign immunity.
`1. Request to File Motion to Dismiss
`We have considered Patent Owner’s renewed request and authorize filing a
`motion to dismiss. Patent Owner may file a motion to dismiss, not to exceed 15
`pages, no later than August 13, 2018. The motion to dismiss shall be limited to the
`issue of whether sovereign immunity is applicable to the present proceeding.
`Petitioner may file a response to Patent Owner’s motion to dismiss, not to exceed 15
`pages, no later than August 27, 2018. Patent Owner may file a reply to Petitioner’s
`response, not to exceed 5 pages, no later than September 4, 2018.
`
`
`
`2
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2016, p. 2
`
`
`
`IPR2018-00948 (Patent 8,728,806 B2)
`IPR2018-00949 (Patent 9,333,248 B2)
`
`
`2. Patent Owner’s Preliminary Response
`In our order of July 10, 2018, we suspended the deadline for filing of the
`Patent Owner’s Preliminary Response. In light of our authorizing Patent Owner to
`file a motion to dismiss, we deem it proper to continue to suspend the deadline for
`the response until we decide Patent Owner’s motion to dismiss. Patent Owner’s
`Preliminary Response will now be due within 30 days of our decision on Patent
`Owner’s motion to dismiss.
`Accordingly, it is
`ORDERED that Patent is authorized to file a motion to dismiss, not
`to exceed 15 pages, no later than August 13, 2018;
`FURTHER ORDERED that Petitioner is authorized to file a response
`to Patent Owner’s motion to dismiss, not to exceed 15 pages, no later than
`August 27, 2018;
`FURTHER ORDERED that Patent Owner is authorized to file a reply
`to Petitioner’s response, not to exceed 5 pages, no later than September 4,
`2018; and
`FURTHER ORDERED that the deadline for the filing of Patent
`Owner’s Preliminary Response will be extended until 30 days after our
`decision on Patent Owner’s motion to dismiss.
`
`
`
`
`3
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2016, p. 3
`
`
`
`IPR 2018-00948 (Patent 8,728,806 B2)
`IPR 2018-00949 (Patent 9,333,248 B2)
`
`
`PETITONER:
`Stephen M. Hash
`Paul M. Morico
`Jeffrey S. Gritton
`BAKER BOTTS, L.L.P.
`Stephen.hash@bakerbotts.com
`Paul.morico@bakerbotts.com
`Jeff.gritton@bakerbotts.com
`Baylor0109@bakerbotts.com
`
`PATENT OWNER:
`Peter E. Mims
`Steve Borgman
`VINSON & ELKINS
`AND-IPR@velaw.com
`
`
`
`
`
`4
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2016, p. 4
`
`
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