`Entered: January 10, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PROLLENIUM US, INC.,
`Petitioner,
`
`v.
`
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner.
`____________
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2); and
`IPR2020-00084 (Patent 9,089,519 B2)1
`____________
`
`Before GRACE KARAFFA OBERMANN, JOHN G. NEW,
`SHERIDAN K. SNEDDEN, and ROBERT A. POLLOCK,
`Administrative Patent Judges.2
`
`POLLOCK, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Request for Additional Briefing
`37 C.F.R. § 42.5
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Except as
`authorized herein, the parties shall not use this heading style in any
`subsequent papers.
`2 This is not a decision by an expanded panel.
`
`
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2); and
`IPR2020-00084 (Patent 9,089,519 B2)
`
`On January 10, 2020, and in response to Petitioner’s email of January
`
`6, 2020, Judges Pollock, Obermann, New and Snedden conducted a
`telephonic hearing with counsel for both parties. A court reporter was on the
`call, and the resulting transcript shall form the official record of this
`proceeding.
`
`Briefly, as set forth in item 1 of the January 6 email, Petitioner
`requested a Reply to the Patent Owner Preliminary Response “[r]esponding
`to Patent Owner’s (generally overlapping) threshold arguments that the
`Board should exercise discretion under § 325(d) and § 314(a) to deny the
`petitions, including the subsidiary argument in two proceedings that a cited
`reference (“CTA Summary,” Exhibit 1050) is not a printed publication.”3
`Petitioner’s counsel further explained that it could not have anticipated all of
`Patent Owner’s arguments, and wished to correct certain factual errors and
`mischaracterizations set forth in the Preliminary Response. Counsel for
`Patent Owner disagreed with Petitioner’s characterization of the Preliminary
`Response and argued that Petitioner should have anticipated its arguments.
`
`The panel finds that further briefing may be helpful in deciding
`whether to exercise our discretion to deny one or more of the above petitions
`under § 325(d) and/or § 314(a). Accordingly, it is:
`
`
`3 Although the email further requested briefing relating to claim construction
`(item 2 of the January 6 email), Petitioner expressly waived that request
`during the call.
`
`2
`
`
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2); and
`IPR2020-00084 (Patent 9,089,519 B2)
`
`
`ORDERED that, no later than Friday, January 17, 2020, Petitioner
`may file a Reply to the Patent Owner Preliminary Response addressing only
`the issues set forth in item 1 of its January 6 email;
`FURTHER ORDERED that, within one week of any such Reply,
`Patent Owner may submit a responsive Sur-reply;
`FURTHER ORDERED that each party shall submit one paper in each
`of the above-listed cases under the caption style of this Order and including
`a footnote attesting that the content of that paper is word-for-word identical
`in each case;
`FURTHER ORDERED that the above papers are limited to 10 pages
`each; and
`FURTHER ORDERED that parties may not submit additional
`evidence supporting the Reply or Sur-reply.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2019-01505 (Patent 8,450,475 B2);
`IPR2019-01506 and IPR2019-01632 (Patent 8,357,795 B2);
`IPR2019-01508 (Patent 9,238,013 B2);
`IPR2019-01509 (Patent 9,358,322 B2);
`IPR2019-01617 (Patent 8,822,676 B2); and
`IPR2020-00084 (Patent 9,089,519 B2)
`
`PETITIONER:
`
`Christopher L. Curfman
`William W. Cutchins
`MEUNIER CARLIN & CURFMAN LLC
`ccurfman@mcciplaw.com
`wcutchins@mcciplaw.com
`
`PATENT OWNER:
`
`Dorothy P. Whelan
`Michael Kane
`FISH & RICHARDSON P.C
`whelan@fr.com
`kane@fr.com
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
