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Pfenex Inc. v. GlaxoSmithKline Biologicals SA

Docket IPR2019-01028, Patent Trial and Appeal Board (May 6, 2019)
Jo-Anne Kokoski, Richard Smith, Sheridan Snedden, presiding
Case TypeInter Partes Review
Patent9422345
Patent Owner GlaxoSmithKline Biologicals SA
Petitioner Pfenex Inc.
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62 Termination Decision Document: Termination Decision Document

Document IPR2019-01028, No. 62 Termination Decision Document - Termination Decision Document (P.T.A.B. Nov. 12, 2020)
The Amended Joint Motion to Terminate, providing the certification, was filed on November 4, 2020.2 Paper 61.
2 The certification in the Amended Joint Motion to Terminate refers to “Confidential Exhibit 1081.” Paper 61, 2–3.
Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement.
An oral hearing was held in the above-referenced case on September 9, 2020, but a final written decision has not been rendered.
Patent 9,422,345 B2 For PETITIONER: Jeffrey Guise Lora Green Wendy Devine Lorelei Westin
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60 Order: Order Denying Joint Motion To Terminate, Granting Leave To File Amended Motion To Terminate, And Granting Joint Request That Settlement Agreement Be Treated As Business Confidential Information And Be Kept Separate

Document IPR2019-01028, No. 60 Order - Order Denying Joint Motion To Terminate, Granting Leave To File Amended Motion To Terminate, And Granting Joint Request That Settlement Agreement Be Tre...
The parties state in the Joint Motion to Terminate that “Petitioner and Patent Owner concurrently file a true and complete copy of their confidential written settlement materials (Confidential Exhibit 2049) in connection with this matter as required by statute,” and that “the parties’ settlement completely resolves the controversy between Patent Owner and Petitioner relating to U.S. Patent No. 9,422,345.” Paper 57, 1, 2.
The parties are granted leave to file an Amended Motion to Terminate certifying that there are no such agreements or understandings.
Accordingly, for the foregoing reasons, it is hereby ORDERED that the parties’ request that the settlement materials (Confidential Ex. 2049) be treated as business confidential information, to be kept separate from the files of U.S. Patent No. 9,422,345 B2, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED; FURTHER ORDERED that the Joint Motion to Terminate the above- referenced proceeding is DENIED; and
Patent 9,422,345 B2 FURTHER ORDERED that the parties are granted leave to file an Amended Joint Motion to Terminate containing a certification that there are other agreements or understandings no later than November 5, 2020.
For PETITIONER: Jeffrey Guise Lora Green Wendy Devine Lorelei Westin
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56 Hearing Transcript: Hearing Transcript

Document IPR2019-01028, No. 56 Hearing Transcript - Hearing Transcript (P.T.A.B. Sep. 29, 2020)
And moving on to patent owners’ motion to amend, I’ve already touched on it some but just to sum it up, on slide 53 we’ve reproduced the first proposed amended claim…pardon me…as I have stated none of these proposed amendments ...
If we move to slide 56, now petitioner’s expert Dr. Georgiou explains none of the functional limitations proposed in the amended claims actually modify the polypeptides.
This implies that none of the expressed protein was transported to the periplasm.
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54 Other Not for motions: LEAP Practitioner Request and Verification Form

Document IPR2019-01028, No. 54 Other Not for motions - LEAP Practitioner Request and Verification Form (P.T.A.B. Sep. 8, 2020)
From: To: Cc: Subject: Date: PTAB Hearings Ward, Trenton (External); Trials; PTAB Hearings; Dill, John Guise, Jeff; Devine, Wendy; Westin, Lori; Green, Lora (External); Yang, Yieyie; Lipsey, Charles; Racine, Rich; Neth, Joann; Murphy, Amanda; Mcguire, Darnella; Swift, Erica RE: IPR2019-01028: Request for LEAP participation for upcoming Sept. 9 oral argument Wednesday, September 2, 2020 9:34:32 PM Good evening, Patent Owner’s request that Yieyie Yang be permitted to participate in the oral hearing as a LEAP practitioner is granted.
Patent Owner is granted an additional fifteen minutes of argument time during the oral hearing.
As set forth in the attached LEAP Practitioner Combined Request and Verification form, Ms. Yang satisfies the following eligibility requirements: (1) three or fewer substantive oral arguments in any federal tribunal, including the PTAB, and (2) seven or fewer years of experience as a licensed attorney or agent.
Co-counsel Amanda Murphy will provide the majority of the oral argument and will assist Ms. Yang if necessary.
This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential, proprietary, or otherwise exempt from disclosure under applicable law.
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42 Order: Oral Hearing 37 CFR sec 4270

Document IPR2019-01028, No. 42 Order - Oral Hearing 37 CFR sec 4270 (P.T.A.B. Aug. 5, 2020)
The Scheduling Order entered at that time set August 12, 2020, as the date for oral argument, if requested.
The parties are directed to contact the Board at least 10 days in advance of the hearing if there are any concerns about disclosing confidential information.
If at any time during the hearing, you encounter technical or other difficulties that fundamentally undermine your ability to adequately represent your client, please let the panel know immediately, and adjustments will be made.2
During the oral hearing, the parties are advised to identify clearly and specifically each demonstrative referenced (e.g., by slide or screen number) to ensure the clarity and accuracy of the court reporter’s transcript and to permit the judges to follow the arguments.
Patent 9,422,345 B2 For PETITIONER: Jeffrey Guise Lora Green Wendy Devine Lorelei Westin
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35 Order: REVISED SCHEDULING ORDER

Document IPR2019-01028, No. 35 Order - REVISED SCHEDULING ORDER (P.T.A.B. Jun. 23, 2020)
Patent 9,422,345 B2 responds to issues raised in the preliminary guidance (if provided) or in the corresponding revised MTA or opposition.
Once likely declarants are known, the parties should confer as to dates for scheduling all depositions related to the revised MTA after the relevant papers will be filed.
As needed, the parties may wish to agree to shortened periods for making objections and serving supplemental evidence prior to a deposition.
In the absence of such an agreement, the parties shall schedule such depositions in advance of a due date for serving supplemental evidence.
Thus, the Board strongly encourages the parties to meet and confer as soon as practicable (including before anticipated declarations are submitted, if possible) to coordinate schedules.
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31 Order: Preliminary Guidance Patent Owners Motion to Amend

Document IPR2019-01028, No. 31 Order - Preliminary Guidance Patent Owners Motion to Amend (P.T.A.B. Jun. 5, 2020)

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