`571-272-7822
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` Paper No. 25
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` Entered: March 12, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MODERNA THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`ARBUTUS BIOPHARMA CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2019-00554
`Patent 8,058,069 B2
`____________
`
`
`
`Before TINA E. HULSE, CHRISTOPHER G. PAULRAJ, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Authorizing Motion to Strike
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2019-00554
`Patent 8,058,069 B2
`
`
`This Order memorializes a conference call that was held in this
`proceeding on March 11, 2020. The Judges of this panel, as well as counsel
`for Patent Owner and Petitioner participated. The purpose of the call was to
`address Patent Owner’s request for authorization to file a motion to strike
`Petitioner’s Reply in light of allegedly new arguments included with a
`declaration from Petitioner’s new expert witness (Ex. 1020). Patent Owner
`contends that much of Petitioner’s Reply declaration attempts to belatedly
`introduce aspects of Petitioner’s obviousness case that were specifically
`identified in the Patent Owner Response as critically missing from the
`petition materials. Patent Owner further contends that other aspects of the
`declaration introduce entirely new theories and arguments never previously
`presented.
`Petitioner responds that its original expert, Dr. Andrew Janoff, passed
`away on December 19, 2019, and, as such, Petitioner engaged a replacement
`expert, Dr. Thomas Anchordoquy to provide the Reply declaration.
`Petitioner contends that Dr. Anchordoquy’s declaration and Petitioner’s
`Reply properly respond to the arguments set forth in Patent Owner’s
`Response.
`Having considered the parties’ respective positions during the
`conference call, we authorize Patent Owner to file a motion to strike and
`Petitioner to file an opposition to such a motion to strike. During the
`conference call, counsel for Patent Owner also inquired about including new
`evidence with its Sur-Reply, currently due March 25, 2020, to address the
`allegedly new arguments in the Reply. We decline to authorize new
`evidence with the Sur-Reply. As set forth in our Trial Practice Guide, “[t]he
`sur-reply may not be accompanied by new evidence other than deposition
`
`2
`
`
`
`IPR2019-00554
`Patent 8,058,069 B2
`
`transcripts of the cross-examination of any reply witness.” See Patent Trial
`and Appeal Board Consolidated Trial Practice Guide, 73 (Nov. 2019),
`available at:
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
`Accordingly, it is hereby:
`ORDERED that Patent Owner is authorized to file a motion to strike,
`limited to five pages in length, by no later than March 25, 2020;
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition to Patent Owner’s motion to strike, also limited to five pages in
`length, by no later than April 1, 2020; and
`FURTHER ORDERED that Patent Owner is not authorized to file any
`new evidence with its Sur-Reply other than the deposition transcripts of the
`cross-examination of any reply witness.
`
`
`
`3
`
`
`
`IPR2019-00554
`Patent 8,058,069 B2
`
`PETITIONER:
`
`Michael Fleming
`C. Maclain Wells
`IRELL & MANELLA LLP
`mfleming@irell.com
`mwells@irell.com
`
`
`PATENT OWNER:
`
`Michael T. Rosato
`Steven W. Parmelee
`Sonja R. Gerrard
`Lora M. Green
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`sparmelee@wsgr.com
`sgerrard@wsgr.com
`lgreen@wsgr.com
`
`
`
`
`
`
`4
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`
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