Trials@uspto.gov IPR2018-01675, Paper No. 21
`571-272-7822
`
`IPR2019-00122, Paper No. 11
` Entered: February 20, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner.
`_____________
`
`Cases
`IPR2018-01675 (Patent 8,603,044 B2)
` IPR2019-00122 (Patent 8,992,486 B2)1
`_____________
`
`
`Before HYUN J. JUNG, BART A. GERSTENBLITH, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Granting Petitioner’s Motions to Correct
`37 C.F.R. § 42.104(c)
`
`
`
`
`1 This Decision is entered in each case. The parties are not authorized to use
`a multiple-case caption.
`
`
`571-272-7822
`
`IPR2019-00122, Paper No. 11
` Entered: February 20, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner.
`_____________
`
`Cases
`IPR2018-01675 (Patent 8,603,044 B2)
` IPR2019-00122 (Patent 8,992,486 B2)1
`_____________
`
`
`Before HYUN J. JUNG, BART A. GERSTENBLITH, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Granting Petitioner’s Motions to Correct
`37 C.F.R. § 42.104(c)
`
`
`
`
`1 This Decision is entered in each case. The parties are not authorized to use
`a multiple-case caption.
`
`
`
`IPR2018-01675 (Patent 8,603,044 B2)
`IPR2019-00122 (Patent 8,992,486 B2)
`
`
`BACKGROUND
`I.
`With prior authorization, Petitioner filed a Motion to Correct the
`Petition in each of the above-referenced proceedings. IPR2018-01675,
`Paper 15; IPR2019-00122, Paper 7. In IPR2018-01675, Patent Owner filed
`an Opposition to Petitioner’s Motion to Correct (Paper 18), but Patent
`Owner did not oppose Petitioner’s Motion in IPR2019-00122. We
`conducted a teleconference with counsel for each party on February 13,
`2019, during which Petitioner’s Motions were discussed. A transcript of the
`teleconference was prepared and will be filed as an exhibit in each
`proceeding.2
`
`II. DISCUSSION
`In IPR2018-01675, Petitioner challenges claims 11, 14, 15, 18, and 19
`of U.S. Patent No. 8,603,044 B2 (“the ’044 patent”). IPR2018-01675,
`Paper 2 at 1. In IPR2019-00122, Petitioner challenges claims 1–6, 12–18,
`20, 23, 26–30, 32, 33, 36, and 38–40 of U.S. Patent No. 8,992,486 B2 (“the
`’486 patent”). IPR2019-00122, Paper 2 at 1. The ’044 and ’486 patents
`issued from continuation applications based on U.S. Patent Application
`No. 12/944,544, and have identical specifications. Compare IPR2018-
`01675, Ex. 1002 at [63], with IPR2019-00122, Ex. 1003 at [63] (claiming
`priority to the same patent application).
`Petitioner’s Motions seek to correct one citation to the specification of
`the respective challenged patent. In particular, on page 25 of the Petition in
`IPR2018-01675 and on page 28 of the Petition in IPR2019-00122, Petitioner
`cited to “3:62-64” rather than “3:42-44.” See IPR2018-01675, Paper 15 at 1;
`
`
`2 At the time of this Decision, the transcript had not been filed yet.
`
`
`
`2
`
`
`
`IPR2018-01675 (Patent 8,603,044 B2)
`IPR2019-00122 (Patent 8,992,486 B2)
`
`IPR2019-00122, Paper 7 at 1. Petitioner explains that the error was
`typographical and that “[t]he accompanying parenthetical and textual
`context make the nature of the error self-evident . . . .” IPR2018-01675,
`Paper 15 at 1.
`In IPR2018-01675, Patent Owner filed an Opposition to Petitioner’s
`Motion (Paper 18), in which Patent Owner acknowledges that “the error’s
`origin appears to be typographical.” Paper 18, 2.
`In IPR2019-00122, Petitioner represented, via email on February 1,
`2019, that Patent Owner did not oppose Petitioner’s Motion. In its Motion
`for this proceeding, Petitioner also represented that Patent Owner “has
`indicated that it does not oppose this correction.” IPR2019-00122, Paper 7,
`1. During the teleconference, counsel for Patent Owner confirmed that
`position—that it does not oppose Petitioner’s Motion in IPR2019-00122
`because, in that case, Patent Owner had not yet filed its Preliminary
`Response.
`Our rules provide that “[a] motion may be filed that seeks to correct a
`clerical or typographical mistake in the petition.” 37 C.F.R. § 42.104(c). In
`the two instances before us, it is very clear from the context of the citation
`and papers filed by the parties that the error was typographical.
`Additionally, it is also clear that Patent Owner’s primary objection to
`Petitioner’s correction in IPR2018-01675 is based on timing. In other
`words, Patent Owner already had filed its Preliminary Response in IPR2018-
`01675 and was concerned about potential prejudice if it were not permitted
`to amend its Preliminary Response to respond to the corrected citation. See,
`e.g., IPR2018-01675, Paper 18 at 2–3; see also Transcript of February 13,
`
`
`
`3
`
`
`
`IPR2018-01675 (Patent 8,603,044 B2)
`IPR2019-00122 (Patent 8,992,486 B2)
`
`2019, Teleconference. Further, these cases are still at an early stage and
`Petitioner’s correction appears relatively minor.3
`Accordingly, on the teleconference, we granted Petitioner’s Motions
`to Correct. We also ruled that Patent Owner may file an amended
`preliminary response in IPR2018-01675 and a redline version showing the
`changes between the first-filed Preliminary Response and amended version
`as an exhibit by February 20, 2019.
`
`III. ORDER
`
`It is:
`ORDERED that Petitioner’s Motions to Correct (IPR2018-01675,
`Paper 15; IPR2019-00122, Paper 7) are granted; and
`FURTHER ORDERED that Patent Owner may file an amended
`preliminary response in IPR2018-01675, along with a redline version
`showing the changes as compared to Patent Owner’s first-filed Preliminary
`Response (Paper 12), by February 20, 2019.
`
`
`
`
`3 Any additional details of the discussion will be reflected in the transcript of
`the teleconference.
`
`
`
`4
`
`
`
`IPR2018-01675 (Patent 8,603,044 B2)
`IPR2019-00122 (Patent 8,992,486 B2)
`
`
`For PETITIONER:
`Richard Torczon
`Douglas Carsten
`Wesley Derryberry
`Tasha Thomas
`Jeffrey W. Guise
`Arthur Dykhuis
`Lorelei Westin
`Franklin Chu
`Nicole W. Stafford
`WILSON SONSINI GOODRICH &
`ROSATI
`rtorczon@wsgr.com
`dcarsten@wsgr.com
`wderryberry@wsgr.com
`tthomas@wsgr.com
`jguise@wsgr.com
`adykhuis@wsgr.com
`lwestin@wsgr.com
`ychu@wsgr.com
`nstafford@wsgr.com
`
`For PATENT OWNER:
`Elizabeth Stotland Weiswasser
`Anish R. Desai
`Sudip K. Kundu
`Kathryn M. Kantha
`Adrian C. Percer
`Brian C. Chang
`William S. Ansley
`Matthew D. Sieger
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`
`anish.desai@weil.com
`sudip.kundu@weil.com
`kathryn.kantha@weil.com
`adrian.percer@weil.com
`brian.chang@weil.com
`sutton.ansley@weil.com
`matthew.sieger@weil.com
`
`
`
`
`
`
`
`5
`
`
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