`Entered: January 10, 2020
`
`Trials@uspto.gov
`571-272-7822
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`
`
`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.
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`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
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`