Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 44
`
` Entered: January 21, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMNEAL PHARMACEUTICALS LLC, AMNEAL
`PHARMACEUTICALS OF NEW YORK, LLC, and MYLAN
`PHARMACEUTICALS INC.,
`Petitioners,
`
`v.
`
`ALMIRALL, LLC,
`Patent Owner.
`____________
`
`IPR2019-002071
`Patent 9,517,219 B2
`____________
`
`
`
`Before SUSAN L. C. MITCHELL, CHRISTOPHER G. PAULRAJ, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Modifying Schedule
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Cases IPR2019-00207 and IPR2019-01095 have been joined in this
`proceeding.
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 44
`
` Entered: January 21, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMNEAL PHARMACEUTICALS LLC, AMNEAL
`PHARMACEUTICALS OF NEW YORK, LLC, and MYLAN
`PHARMACEUTICALS INC.,
`Petitioners,
`
`v.
`
`ALMIRALL, LLC,
`Patent Owner.
`____________
`
`IPR2019-002071
`Patent 9,517,219 B2
`____________
`
`
`
`Before SUSAN L. C. MITCHELL, CHRISTOPHER G. PAULRAJ, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Modifying Schedule
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Cases IPR2019-00207 and IPR2019-01095 have been joined in this
`proceeding.
`
`
`
`IPR2019-00207
`Patent 9,517,219 B2
`
`
`In an Order dated December 31, 2019 (Paper 39), this Panel granted
`Petitioner’s Motion for Additional Discovery (Paper 26), ordering Patent
`Owner’s production of deposition transcripts of Dr. Kevin S. Warner, the
`deposition of this same Dr. Warner by January 17, 2020, and authorizing
`additional briefing to Petitioner by January 24, 2020 relating to this sought
`evidence, and, if submitted, also to Patent Owner on January 31, 2020 in
`response thereto.
`On January 13, 2020, Patent Owner emailed the Board, stating the
`following:
`Patent Owner requests a teleconference with the Board.
`Dr. Warner is not available for deposition by the January 17,
`2020 deadline of the Board’s December 31, 2019 Order (Paper
`39). The Order also orders briefing to be submitted and
`evidence to be filed after the January 17, 2020 deadline for
`motions to exclude evidence (see Paper 14, Due Date 5). Patent
`Owner seeks the following relief:
`(1) A modification of the December 31, 2019 Order to
`allow Dr. Warner’s deposition after January 17, 2020;
`(2) An extension of Due Date 5 to allow the parties to
`submit motions to exclude evidence included with the
`additional briefing ordered by the December 31, 2019
`Order; and
`(3) Guidance regarding offering Dr. Warner’s
`testimony live at oral argument.
`Patent Owner conferred with Petitioners, and Petitioners
`confirmed that they oppose Patent Owner’s request.
`A conference call was held on January 17, 2020, between the parties
`and the Panel in this case. Patent Owner explained that the ordered
`production of the deposition transcript(s) had been completed, but explained
`that the deposition of Dr. Warner had not occurred because the witness was
`
`2
`
`
`
`IPR2019-00207
`Patent 9,517,219 B2
`
`not available until, at the earliest, January 30, 2020. Patent Owner explained
`that it had no direct control over Dr. Warner, who is not employed by Patent
`Owner. Patent Owner argued that the schedule of the proceedings could be
`modified to allow for a late deposition of Dr. Warner and related briefing, as
`well as related motions to exclude evidence, and alternatively argued to
`reserve the right to provide Dr. Warner at the final hearing whereat he might
`testify live as a substitute for his deposition. Patent Owner also argued that
`if supplemental briefing and evidence was submitted by Petitioner as
`provided for in the December 31, 2019 Order, Patent Owner lacked an
`opportunity to object and move to exclude such evidence on the current
`schedule of the proceedings.
`Petitioner explained its understanding of the circumstances and argued
`that a deposition of Dr. Warner on January 30, 2020 would not be practical
`in view of its proximity to the final hearing, scheduled to occur on February
`7, 2020. Petitioner suggested adhering to the current schedule of the
`proceedings, and as provided in the December 31, 2019 Order (Paper 39)
`and, should Dr. Warner not be deposed by Petitioner, Petitioner would
`address this in a motion to exclude evidence. Petitioner opposed having
`Dr. Warner present live testimony at the final hearing.
`After considering the positions of each party set forth above, we
`conclude that this proceeding shall remain on its current schedule as set forth
`in the Scheduling Order (Paper 14) regarding Due Dates 5–8 and as
`provided for in the December 31, 2020 Order (Paper 39) regarding
`additional discovery and authorized briefing. The Panel is sensitive to
`Patent Owner’s point regarding an opportunity to object and move to
`exclude any additional evidence and related briefing; therefore, we authorize
`
`3
`
`
`
`IPR2019-00207
`Patent 9,517,219 B2
`
`Patent Owner to file a supplemental motion to exclude thereon by January
`31, 2020, and authorize Petitioner to file an opposition to such a
`supplemental motion to exclude by February 7, 2020. The parties may
`address such supplemental motion to exclude and the related opposition at
`the final hearing. No live testimony by Dr. Warner or any witness is
`authorized.
`
`For the foregoing reasons, it is
`ORDERED that Patent Owner is authorized to file a Supplemental
`Motion to Exclude by January 31, 2020, with respect to evidence and
`arguments filed by Petitioner as authorized in the December 31, 2019 Order
`(Paper 39); and
`FURTHER ORDERED that Petitioner is authorized to file an
`Opposition to Patent Owner’s above-authorized Supplemental Motion to
`Exclude, if filed, by February 7, 2020.
`
`
`
`
`
`
`4
`
`
`
`IPR2019-00207
`Patent 9,517,219 B2
`
`For PETITIONERS:
`
`Representing Amneal Pharmaceuticals LLC and Amneal Pharmaceuticals of
`New York, LLC:
`
`Dennies Varughese
`Adam LaRock
`Tyler Liu
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dvarughe-ptab@skgf.com
`alarock-ptab@skgf.com
`tliu-ptab@skgf.com
`
`Representing Mylan Pharmaceuticals Inc.:
`
`Jitendra Malik
`Alissa Pacchioli
`Lance Soderstrom
`Heike Radeke
`KATTEN MUCHIN ROSENMAN LLP
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`lance.soderstrom@kattenlaw.com
`heike.radeke@kattenlaw.com
`
`
`For PATENT OWNER:
`
`James Trainor
`Elizabeth Hagan
`Jennifer R. Bush
`Richard J. Shea
`FENWICK & WEST LLP
`jtrainor@fenwick.com
`ehagan@fenwick.com
`jbush@fenwick.com
`rshea@fenwick.com
`
`5
`
`
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