Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 38
`
` Entered: May 18, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALTAIRE PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`PARAGON BIOTECK, INC.,
`Patent Owner.
`____________
`
`Case PGR2015-00011
`Patent 8,859,623 B1
`____________
`
`
`
`Before ZHENYU YANG and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 38
`
` Entered: May 18, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALTAIRE PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`PARAGON BIOTECK, INC.,
`Patent Owner.
`____________
`
`Case PGR2015-00011
`Patent 8,859,623 B1
`____________
`
`
`
`Before ZHENYU YANG and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`PGR2015-00011
`Patent 8,859,623 B1
`On May 17, 2016, the Board held a telephonic conference at the
`request of Patent Owner. Counsel for both parties and members of the panel
`attended the conference. This Order summarizes the issues discussed during
`the conference and provides further guidance on challenging new evidence
`and argument as untimely and/or outside of scope of a reply.
`Patent Owner raised two issues. First, Patent Owner alleged that
`certain arguments presented in and evidence filed with Petitioner’s Reply
`(including new declarations and testing reports) are untimely and/or outside
`of the scope of the reply. Patent Owner sought leave to file a motion to
`strike. Alternatively, Patent Owner requested our authorization to file a sur-
`reply, to be supported by additional evidence. Petitioner disagreed with
`Patent Owner’s characterization of the arguments and evidence. According
`to Petitioner, the allegedly new evidence filed with the Reply corroborated
`the results presented in the Petition. Patent Owner challenged the accuracy
`of Petitioner’s representation.
`During the conference, we explained that new evidence, including
`new testimonial evidence, filed in support of a reply, is not per se improper.
`Petitioner’s Reply, however, may only respond to arguments raised in Patent
`Owner’s Response. See 37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). Furthermore,
`“respond,” in the context of 37 C.F.R. § 42.23(b), does not permit Petitioner
`to depart from the position originally taken in the Petition and embark in a
`new direction with a new approach. See Apple Inc. v. E-Watch, Inc.,
`IPR2015-00412, slip op. 44 (PTAB May 6, 2016) (Paper 50).
`We noted that Patent Owner objected to, under 37 C.F.R.
`§ 42.64(b)(1), the evidence at issue as untimely and/or exceeding the proper
`scope of a reply. See Paper 37. We acknowledge that different Board
`
`1
`
`
`
`PGR2015-00011
`Patent 8,859,623 B1
`panels may have approached the issue differently. Nevertheless, in this
`proceeding, a motion to exclude, together with the corresponding objection,
`is not an appropriate vehicle for challenging a reply or supporting evidence
`as being of improper scope. As we explained during the conference, the
`objection and the motion to exclude under § 42.64 are reserved for
`challenging the admissibility of evidence under the Federal Rules of
`Evidence. See Trial Practice Guide, 77 Fed. Reg. 48,767. Indeed,
`§ 42.64(b)(2) provides a party an opportunity to respond to an objection by
`serving supplemental evidence. Untimeliness and improper scope, however,
`cannot be cured by supplemental evidence.
`Under the circumstances, the panel authorized Patent Owner to file a
`two-page document, identifying with particularity each argument or
`evidence in the Reply that Patent Owner alleges as inappropriate new
`argument or evidence. We also authorized Petitioner to file a two-page
`response, identifying with particularity (1) the arguments in the Patent
`Owner’s Response that each challenged argument or evidence is responsive
`to; and/or (2) the arguments in the Petition that provide a sufficient basis to
`justify characterizing each challenged argument or evidence as not
`improperly new. We further authorized Patent Owner to file a one-page
`reply, pointing out with particularity why the portions of the Petition
`identified by Petitioner do not justify characterizing each challenged
`argument or evidence as not improperly new. We hereby increase the page
`limit for Patent Owner’s reply from one page to two. We reiterate, as we
`emphasized during the conference, the key to these papers is specificity.
`Instead of referring to a paper generally, or a section that spans pages, the
`parties must identify the arguments by paper/exhibit, page, and line
`numbers.
`
`2
`
`
`
`PGR2015-00011
`Patent 8,859,623 B1
`The second issue Patent Owner brought up during the conference
`relates to real party in interest. Patent Owner pointed out that in the Reply,
`Petitioner asserted this issue was beyond the scope of a proper Patent
`Owner’s Response. See Paper 36, 17. As a result, Patent Owner sought
`authorization to file a motion to terminate. It is not improper to raise the
`real-party-in-interest issue in a patent owner’s response. See Atlanta Gas
`Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, slip op. 3
`(PTAB Jan. 6, 2015) (Paper 88) (addressing the real-party-in-interest issue
`briefed in the patent owner’s response). During the conference, we
`explained that in our view, the issue had been fully briefed by both parties in
`Patent Owner’s Response and Petitioner’s Reply. Both parties agreed that
`no additional briefing on the issue is needed at this time.
`
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file an Identification of
`Improper New Reply Materials, identifying item by item, and by
`paper/exhibit number, page number, and line numbers, each argument or
`evidence in the Reply Patent Owner alleges as improper new argument or
`evidence;
`FURTHER ORDERED that the Identification of Improper New Reply
`Materials is limited to two pages and must be filed by May 20, 2016;
`FURTHER ORDERED that Petitioner is authorized to file a response,
`identifying item by item, and by paper/exhibit number, page number, and
`line numbers, (1) the arguments in the Patent Owner’s Response each
`challenged argument or evidence is responsive to; and/or (2) the arguments
`in the Petition that provide a sufficient basis to justify characterizing each
`challenged argument or evidence in the Reply as not improperly new;
`
`3
`
`
`
`PGR2015-00011
`Patent 8,859,623 B1
`FURTHER ORDERED that the Response to Identification of
`Improper New Reply Materials is limited to two pages and must be filed by
`May 27, 2016;
`FURTHER ORDERED Patent Owner is authorized to file a reply,
`pointing out item by item why the portions of the Petition identified by
`Petitioner do not justify characterizing each challenged argument or
`evidence as not improperly new;
`FURTHER ORDERED that the Reply in Support of Identification of
`Improper New Reply Materials is limited to two pages and must be filed by
`June 2, 2016; and
`FURTHER ORDERED no additional briefing on the issue of real
`party in interest is authorized at this time.
`
`PETITIONER:
`Dipu Doshi
`Jonathan England
`Mark Thronson
`Blank Rome LLP
`ddoshi@blankrome.com
`jwengland@blankrome.com
`mthronson@blankrome.com
`
`
`
`
`
`
`
`4
`
`
`
`PGR2015-00011
`Patent 8,859,623 B1
`PATENT OWNER:
`Michael Rosato
`Andrew Brown
`Steven W. Parmelee
`Wilson Sonsini Goodrich & Rosati P.C.
`mrosato@wsgr.com
`asbrown@wsgr.com
`sparmelee@wsgr.com
`
`5
`
`
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