`Tel: 571-272-7822
`
`
`Paper 57
`Date: May 22, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMNEAL PHARMACEUTICALS LLC and AMNEAL
`PHARMACEUTICALS OF NEW YORK, LLC
`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.
`
`
`
`CONDUCT OF THE PROCEEDING
`Denying Authorization for Patent Owner
`Motion to file Supplemental Information
`37 C.F.R. § 42.5(a); § 42.123(b)
`
`
`
`
`
`1 Cases IPR2019-00207 and IPR2019-01095 have been joined in this
`proceeding. When referring herein to “this case” or “this proceeding” or
`variants of these, we refer to both joined cases.
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`
`In this proceeding, trial was instituted on May 10, 2019 (Paper 13),
`Patent Owner filed a Response (Paper 20), Petitioner filed a Reply thereto
`(Paper 28), and Patent Owner filed a Sur-reply thereto (Paper 37). A final
`hearing was conducted on February 7, 2020. See Paper 55. On May 5,
`2020, we issued an order adjusting the one-year pendency due to joinder for
`this proceeding such that our Final Written Decision shall be issued no later
`than June 5, 2020. Paper 56.
`On May 21, 2020, Patent Owner emailed the Board, stating:
`Patent Owner (Almirall) respectfully requests authorization to
`file a motion [to] submit Petitioner’s (Amneal’s) claim
`construction briefing recently served in a related litigation
`concerning U.S. Patent No. 9,517,219, Almirall, LLC v. Amneal
`Pharmaceuticals LLC, C.A. No. 1:19-cv-00658-GJP (D. Del.),
`as supplemental information pursuant to 37 CFR 42.123(b).
`Petitioner has indicated that it opposes the requested relief.
`Should the Board desire a conference call, counsel for both
`parties are mutually available for a conference at the Board’s
`nearest convenience.
`Ex. 3001. We note, neither party has previously identified the above-
`referenced district court case as related to this proceeding. See Paper 20;
`Paper 5; Paper 7; Paper 16; Paper 31. Under 37 C.F.R. § 42.8(a)(3),
`Mandatory Notices, including identification of related matters, must be
`updated “within 21 days of a change of the information” previously noticed
`under the Section.
`Given the late stage of this the proceeding, and our impending
`issuance of a Final Written Decision, no further evidence or briefing is
`authorized, and we deny Patent Owner authorization to file a motion to
`submit supplemental evidence.
`
`2
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`
`37 C.F.R. § 42.123(b) states:
`A party seeking to submit supplemental information more than
`one month after the date the trial is instituted, must request
`authorization to file a motion to submit the information. The
`motion to submit supplemental information must show why the
`supplemental information reasonably could not have been
`obtained earlier, and that consideration of the supplemental
`information would be in the interests-of-justice.
`Patent Owner has not previously sought any claim constructions in this
`proceeding. See PO Resp. 28. We conclude that the supplemental
`information identified by Patent Owner is not evidence needed to resolve
`any issues in this proceeding, and thus its submission in this proceeding
`would not be in the interests-of-justice.
`
`
`Accordingly, it is:
`ORDERED that Patent Owner is not authorized to file a motion to
`submit supplemental information.
`
`
`3
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`
`For PETITIONER:
`
`Representing Amneal Pharmaceuticals LLC and Amneal Pharmaceuticals of
`New York, LLC:
`
`Dennies Varughese
`Adam LaRock
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`dvarughe-ptab@skgf.com
`alarock-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
`Fenwick & West LLP
`jtrainor@fenwick.com
`ehagan@fenwick.com
`
`
`4
`
`
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