`Tel: 571-272-7822
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`Paper 9
`Entered: March 23, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SLAYBACK PHARMA LLC,
`Petitioner,
`
`v.
`
`EYE THERAPIES, LLC,
`Patent Owner.
`____________
`
`IPR2022-00142 (Patent 8,293,742 B2)
`IPR2022-00146 (Patent 9,259,425 B2)1
`____________
`
`
`Before JOHN G. NEW, TINA E. HULSE, and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`1 This order addresses issues that are common to both cases. We therefore
`exercise our discretion and issue a single order that has been entered in each
`case. 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 identical paper is filed in each proceeding identified in the
`caption.”
`
`
`
`IPR2022-00142 (Patent 8,293,742 B2)
`IPR2022-00146 (Patent 9,259,425 B2)
`
`
`A conference call was held on March 22, 2022, among counsel for
`Petitioner, counsel for Patent Owner, and Judges New, Hulse, and Pollock.
`On March 15, 2022, Petitioner sent an email correspondence to the Board
`requesting authorization to file a Reply in both proceedings to address the Fintiv
`and 35 U.S.C. § 325(d) arguments made in Patent Owner’s Preliminary Response.
`See Ex. 3001. Patent Owner responded to Petitioner’s email, stating Patent Owner
`believed a Reply was not necessary, but that it would not oppose Petitioner’s
`request provided, among other things, the Reply was limited to addressing the
`Fintiv factors alone and that it be given an opportunity to file a Sur-reply. See id.
`During the call, Petitioner asserted that good cause exists for a Reply to
`respond to the Fintiv issues, because the Reply would address its Sotera-type
`stipulation filed after the Preliminary Response. Petitioner further asserted that it
`could not have foreseen Patent Owner’s complex arguments with respect to
`§ 325(d), and would like an opportunity to respond.
`Patent Owner states that it would agree to a Sur-reply with respect to the
`Fintiv issues, provided Petitioner did not use the Reply to address the substantive
`arguments on the merits (and that Patent Owner would be authorized to file a Sur-
`reply of the same length). Patent Owner did not agree, however, to a Sur-reply on
`the § 325(d) issues, because those issues were foreseeable and the Board is
`equipped to evaluate those issues without further briefing.
`Having considered the parties’ respective arguments, we find good cause
`exists for Petitioner to file a Reply and Patent Owner to file a Sur-reply on both the
`Fintiv and § 325(d) issues. The Sotera-type stipulation was filed in the district
`court case after the Preliminary Response was filed and is pertinent to Patent
`Owner’s Fintiv argument. And the panel may find the parties’ discussion of the
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`IPR2022-00142 (Patent 8,293,742 B2)
`IPR2022-00146 (Patent 9,259,425 B2)
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`§ 325(d) issues helpful, particularly in light of the dispositive nature of the issue
`presented.
`As such, we find good cause exists to grant Petitioner’s request for
`authorization to file a brief Reply to Patent Owner’s Preliminary Response.
`Petitioner’s Reply shall be no longer than seven pages and may address both the
`Fintiv and § 325(d) arguments made in the Preliminary Response. Patent Owner is
`also authorized to file a Sur-reply to the Reply of the same length. No further
`testimony or evidence shall be permitted in either paper (with the exception of the
`Sotera stipulation).
`Accordingly, it is
`ORDERED that Petitioner’s request for authorization to file a Reply to
`Patent Owner’s Preliminary Response in each proceeding is granted;
`FURTHER ORDERED that Petitioner may file a Reply no longer than seven
`pages by no later than Tuesday, March 29, 2022; and
`FURTHER ORDERED that Patent Owner may file a Sur-reply no longer
`than seven pages by no later than one calendar week after Petitioner files its Reply.
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`IPR2022-00142 (Patent 8,293,742 B2)
`IPR2022-00146 (Patent 9,259,425 B2)
`
`PETITIONER:
`
`Louis Weinstein
`lweinstein@winddelsmarx.com
`
`Patrick Pollard
`ppollard@windelsmarx.com
`
`
`PATENT OWNER:
`
`Bryan Diner
`Bryan.diner@finnegan.com
`
`Justin Hasford
`Justin.hasford@finnegan.com
`
`Caitlin O’Connell
`Caitlin.o’connell@finnegan.com
`
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