`Tel: 571-272-7822
`
`
`Paper 24
`Entered: October 11, 2019
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`
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`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.
`____________
`
`Case IPR2019-00207
`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 PROCEEDINGS
`Authorizing Petitioners’ Motion for Discovery
`and Patent Owner’s Opposition Thereto
`37 C.F.R. § 42.5(a); § 42.20; § 42.51(b)(2)
`
`
`
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`
`On October 8, 2019, Petitioners emailed the Board, stating the
`following:
`Petitioners request authorization to file a motion for additional
`discovery. Patent Owner in this proceeding relies upon a
`declaration of co-inventor Dr. Kevin Warner. Patent Owner has
`refused to make Dr. Warner available for cross-examination.
`Petitioners seek:
`(1) the opportunity to cross-examine Dr. Warner in this
`proceeding.
`(2) the production of the transcript of Dr. Kevin Warner’s
`deposition that occurred in the related district court
`litigation
`(Almirall LLC v. Taro Pharmaceutical
`Industries Ltd., No. 1-17-cv-00663 (D. Del. Mar. 11,
`2019)) involving the same ‘219 patent challenged in this
`IPR proceeding.
`Petitioners conferred with Patent Owner, and Patent Owner
`confirmed that it opposes Petitioners’ request. Counsel for both
`parties are available for a teleconference with the Board any time
`on Thursday, October 10, per the Board’s convenience.
`A conference call was held on October 10, 2019 between the parties
`and the Panel in this IPR, where the parties explained their positions on such
`potential discovery.
`Accordingly, it is:
`ORDERED that Petitioners are granted authorization to file a motion,
`not exceeding ten (10) pages, on or before October 18, 2019, requesting
`additional discovery relating to the cross-examination of Kevin S. Warner,
`Ph.D. and to the production of a deposition transcript of Kevin S. Warner,
`Ph.D. from district court litigation Almirall LLC v. Taro Pharmaceutical
`Industries Ltd., No. 1-17-cv-00663 (D. Del); and
`
`2
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`
`FURTHER ORDERED that Patent Owner is granted authorization to
`file an opposition to the aforementioned motion, not exceeding ten (10)
`pages, within five business days of receipt of said motion.
`
`
`
`3
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`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`FOR PETITIONERS:
`
`Dennies Varughese
`Adam C. LaRock
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dvarughe-PTAB@skgf.com
`alarock-PTAB@skgf.com
`PTAB@skgf.com.
`
`
`FOR PATENT OWNER:
`
`James Trainor
`FENWICK & WEST LLP
`jtrainor@fenwick.com
`
`4
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