`571-272-7822
`
`Paper No. 9
`Date: December 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BIOCON PHARMA LIMITED,
`Petitioner,
`v.
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owner.
`
`IPR2020-01263
`Patent 8,101,659 B2
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, ROBERT A. POLLOCK, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`SAWERT, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Request for Additional Briefing
`37 C.F.R. § 42.5; 37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`
`
`
`IPR2020-01263
`Patent 8,101,659 B2
`
`
`On November 30, 2020, counsel for Biocon Pharma Limited
`(“Petitioner”) contacted the Board via e-mail to request a conference call
`seeking authorization to file a Preliminary Reply to Novartis
`Pharmaceuticals Corporation’s (“Patent Owner’s”) Preliminary Response in
`the above-identified proceeding. See Ex. 3001. Petitioner seeks
`authorization to file a Preliminary Reply addressing Patent Owner’s
`arguments under 35 U.S.C. § 325(d). Id. In its e-mail, Petitioner states that,
`although it addressed § 325(d) in its Petition, “Patent Owner has crystalized”
`its § 325(d) arguments in its Preliminary Response, and Petitioner seeks a
`“short 3 page Reply.” Id. Petitioner states further that Patent Owner
`opposes Petitioner’s request, because “Biocon has not established good
`cause, as required by 37 C.F.R. § 42.108(c), and replies are not
`automatically granted absent such a showing.” Id. According to Petitioner,
`Patent Owner also opposes because “[Petitioner] had the opportunity to and
`did address 35 U.S.C. § 325(d) in its Petition.” Id. Petitioner states that it
`“has no objection to Patent Owner receiving a 3 page Sur-Reply in
`response.” Id.
`The panel has conferred and determined that a conference call is not
`necessary. The panel determines that it would be helpful for the parties to
`provide additional briefing on the applicability of 35 U.S.C. § 325(d) to the
`particular facts of this proceeding. Thus, we authorize Petitioner to file a
`Preliminary Reply and Patent Owner to file a Preliminary Sur-Reply, if
`desired. See 37 C.F.R. §§ 42.20(d), 42.108(c). Specifically, Petitioner is
`authorized to file a three-page Preliminary Reply no later than 5:00 PM
`Eastern Time, one week from the date of this Order. Petitioner’s
`Preliminary Reply is limited to responding to the § 325 issues raised in
`
`2
`
`
`
`IPR2020-01263
`Patent 8,101,659 B2
`
`Patent Owner’s Preliminary Response. If desired, Patent Owner is
`authorized to file a three-page Preliminary Sur-Reply, responding to
`Petitioner’s §325(d) arguments. If Patent Owner elects to file a Preliminary
`Sur-Reply, it shall be filed no later than 5:00 PM Eastern Time, one week
`from the date of Petitioner’s Preliminary Reply. No additional briefing and
`no new evidence from either party are authorized at this time. Any portion
`of the briefing that is not responsive to this Order will not be considered.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for authorization to file a
`Preliminary Reply to Patent Owner’s Preliminary Response is granted;
`FURTHER ORDERED that the Preliminary Reply is limited to
`addressing the 35 U.S.C. § 325(b) issues raised in Patent Owner’s
`Preliminary Response;
`FURTHER ORDERED that the Preliminary Reply may be no more
`than three (3) pages in length;
`FURTHER ORDERED that Petitioner shall file the Preliminary Reply
`by 5:00 PM Eastern Time, within one week from the date of this Order;
`FURTHER ORDERED that, if desired, Patent Owner is authorized to
`file a Preliminary Sur-Reply of no more than three (3) pages in length,
`addressing Petitioner’s 35 U.S.C. § 325(b) arguments;
`FURTHER ORDERED that Patent Owner shall file any such
`Preliminary Sur-Reply by 5:00 PM Eastern Time, within one week from the
`date of the Preliminary Reply;
`FURTHER ORDERED that the parties may not submit new evidence;
`
`and
`
`3
`
`
`
`IPR2020-01263
`Patent 8,101,659 B2
`
`
`FURTHER ORDERED that no additional briefing is permitted.
`
`4
`
`
`
`IPR2020-01263
`Patent 8,101,659 B2
`
`For PETITIONER:
`
`Christopher Ferenc
`Brian Sodikoff
`KATTEN MUCHIN ROSENMAN LLP
`christopher.ferenc@kattenlaw.com
`brian.sodikoff@kattenlaw.com
`
`For PATENT OWNER:
`
`Nicholas N. Kallas
`Venable LLP
`nkallas@Venable.com
`
`
`
`5
`
`
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