Trials@uspto.gov
`571-272-7822
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`Paper 17
`Entered: April 17, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`DR. REDDY’S LABORATORIES S.A. and DR. REDDY’S
`LABORATORIES, INC.,
`Petitioners,
`
`v.
`
`INDIVIOR UK LIMITED,
`Patent Owner.
`
`
`
`Case IPR2019-00328 (Patent No. 9,687,454 B2)
` Case IPR2019-00329 (Patent No. 9,687,454 B2)1
`____________
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and RICHARD J.
`SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1This Order addresses issues that are common to both cases. We, therefore,
`issue a single Order that has been entered in both cases. The parties may use
`this style caption when filing a single paper in multiple proceedings,
`provided that such caption includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the caption.”
`
`
`

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`IPR2019-00328 (Patent No. 9,687,454 B2)
`IPR2019-00329 (Patent No. 9,687,454 B2)
`
`Petitioners Dr. Reddy’s Laboratories S.A. and Dr. Reddy’s
`Laboratories, Inc. filed two Petitions on November 13, 2018, identifying
`Indivior UK Limited as Patent Owner. Paper 1 (“Pet.” or “Petitions”).2 The
`Petitions request inter partes review of claims 1–3 and 5–14 of U.S. Patent
`No. 9,687,454 B2 (“the ’454 patent,” Ex. 1001) (IPR2019-00328) and
`claims 1–5 and 7–14 of the ’454 patent (IPR2019-00329). Both Petitions
`identified Dr. Reddy’s Laboratories S.A. and Dr. Reddy’s Laboratories, Inc.
`as the real parties in interest. Pet. 61. Both Petitions were accompanied by a
`Declaration of Nandita Das, Ph.D. (“Das Declaration”).3 Ex. 1003.
`In its Preliminary Response (Paper 12, “Prelim. Resp.”) in both cases,
`Patent Owner argued that the respective Petitions should be denied because
`Petitioners failed to identify LTS Lohmann Therapy Systems, Corp. (“LTS”)
`as a real party in interest (“RPI”). Prelim. Resp. 50–52. Patent Owner also
`argued in its Preliminary Responses that the Das Declaration is deficient
`because it failed to include the statement required by 37 C.F.R. § 1.68. Id. at
`53. In its Preliminary Response in IPR2019-00328, Patent Owner argued
`that the Petition should be denied under 35 U.S.C. § 325(d) because the
`same or substantially the same prior art or arguments presented in the
`Petition were previously considered by the Office. 4 Id. at 1–29.
`
`
`2 Paper numbers in this Order refer to papers filed in IPR2019-00328,
`although this applies primarily to page numbers because, in both cases, the
`respective Petitions are Paper 1, the Preliminary Responses are Paper 12.
`3 A corrected version of the Das Declaration was submitted by Petitioners
`(without opposition by Patent Owner) on March 26, 2019, as a substitute for
`the original Das Declaration. (“Corrected Das Declaration,” Ex. 1003).
`4 The arguments advanced by Patent Owner regarding the RPI issue and the
`Das Declaration issue are the same in both IPR2019-00328 and IPR2019-
`00329. The Section 325(d) argument was only advanced in IPR2019-00328.
`2
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`

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`IPR2019-00328 (Patent No. 9,687,454 B2)
`IPR2019-00329 (Patent No. 9,687,454 B2)
`
`In an e-mail to the Board on March 29, 2019, Petitioners requested a
`telephone conference with the Board to seek authorization to file replies to
`address the RPI issue, the Das Declaration issue, and the Section 325(d)
`issue advanced in the Preliminary Responses. Patent Owner opposed
`Petitioners’ request to file replies regarding those issues. A conference call
`was held between and among counsel for the parties and Judges Zhenyu
`Yang and Richard J. Smith on April 16, 2019, to discuss Petitioners’ request.
`During the conference call, the parties were given the opportunity to
`present their arguments in support of their positions. Counsel for Patent
`Owner stated during the call that the issue regarding the Das Declaration
`was rendered moot by the filing of the Corrected Das Declaration. Petitioner
`s’ counsel was also advised that its pending motions to admit Robert
`Frederickson III pro hac vice (Paper 7) were denied without prejudice for
`failure of the accompanying declaration to include the statement required by
`37 C.F.R. § 1.68 or 28 U.S.C. § 1746.
`Based on our consideration of the parties’ positions, we authorized
`Petitioners to file a single reply addressing the RPI issue and the Section
`325(d) issue, and to file a single 2-page declaration accompanying the reply,
`and further authorized Patent Owner to file a single sur-reply, limited to a
`response to Petitioners’ reply, as set forth below.
`For the reasons given, it is hereby:
`ORDERED that Petitioners may file a single reply brief of no more
`than six pages, that shall be filed in both IPR2019-00328 and IPR2019-
`00329, to address Patent Owner’s real party in interest arguments and
`Section 325(d) arguments, within six business days after April 16, 2019; and
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`IPR2019-00328 (Patent No. 9,687,454 B2)
`IPR2019-00329 (Patent No. 9,687,454 B2)
`
`FURTHER ORDERED that Petitioners may file a 2-page declaration
`with its reply brief that is limited to addressing Patent Owner’s real party in
`interest arguments as advanced in its Preliminary Responses; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`single sur-reply of no more than six pages, that shall be filed in both
`IPR2019-00328 and IPR2019-00329, that is limited to a response to the
`arguments raised in Petitioners’ reply brief, within six business days after
`service of Petitioners’ reply brief; and
`FURTHER ORDERED that Petitioners’ Unopposed Motion for Pro
`Hac Vice Admission of Robert Frederickson III under 37 C.F.R. § 42.10(c),
`filed in both IPR2019-00328 and IPR2019-00329 (Paper 12), is denied
`without prejudice.
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`4
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`IPR2019-00328 (Patent No. 9,687,454 B2)
`IPR2019-00329 (Patent No. 9,687,454 B2)
`
`PETITIONER:
`
`Ira J. Levy
`John Coy Stull
`Goodwin Procter LLP
`ILevy@goodwinlaw.com
`JStull@goodwinlaw.com
`
`
`
`PATENT OWNER:
`
`David A. Garr
`Peter P. Chen
`Covington & Burling LLP
`dgarr@cov.com
`pchen@cov.com
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`5
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