`571.272.7822
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`Paper 20
`Entered: May 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUROBINDO PHARMA USA, INC.
`Petitioner,
`
`v.
`
`ANDRX CORPORATION,
`ANDRX LABORATORIES, INC.
`ANDRX LABORATORIES (NJ), INC.
`ANDRX EU LTD.
`ANDRX PHARMACEUTICALS, LLC,
`TEVA PHARMACEUTICAL INDUSTRIES LTD.
`Patent Owner(s).
`____________
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`Before SUSAN L.C. MITCHELL, TINA E. HULSE, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`NEWMAN, Administrative Patent Judge.
`
`
`Case IPR2017-01648
`Patent 6,866,866 B1
`____________
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`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`IPR2017-01648
`Patent 6,866,866 B1
`
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`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, No. 16-969, 2018 WL 1914661, at
`*10 (U.S. Apr. 24, 2018). In our Decision on Institution, we determined that
`Petitioner demonstrated a reasonable likelihood that it would establish that at
`least one of the challenged claims of the ’866 patent is unpatentable. Paper
`12, 15–22. We modify our institution decision to institute on all of the
`challenged claims and all of the grounds presented in the Petition.
`The parties shall confer to discuss the impact, if any, of this Order on
`the current schedule. If, after conferring, the parties wish to otherwise
`change the schedule or submit further briefing, the parties must, within one
`week of the date of this Order, request a conference call with the panel to
`seek authorization for such changes or briefing. If the parties do not request
`such a call, the parties waive any request for additional briefing on the newly
`instituted claims and grounds.
`As an alternative, the Board authorizes the parties to file, within one
`week of the date of this Order, a Joint Motion to Limit the Petition by
`removing the claims and grounds upon which we did not institute in our
`institution decision. See, e.g., Apotex Inc. v. OSI Pharms, Inc., Case
`IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19) (granting, after institution,
`a joint motion to limit the petition by removing a patent claim that was
`included for trial in the institution decision).
`In consideration of the foregoing, it is hereby:
`ORDERED that our institution decision is modified to include review
`of all challenged claims and all grounds presented in the Petition;
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`2
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`IPR2017-01648
`Patent 6,866,866 B1
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`FURTHER ORDERED that, Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or any further
`briefing, and, if so, shall request a conference call with the panel to seek
`authorization for such changes or briefing within one week of the date of this
`Order.
`FURTHER ORDERED that the parties are authorized to file, within
`one week of the date of this Order, a Joint Motion to Limit the Petition by
`removing any claims and/or grounds presented in the Petition that we did not
`institute upon in our Decision on Institution
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`IPR2017-01648
`Patent 6,866,866 B1
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`PETITIONER:
`Steven J. Moore
`John Winterle
`Alan Gardner
`WITHERS BERGMAN LLP
`steven.moore@withersworldwide.com
`john.winterle@withersworldwide.com
`alan.gardner@withersworldwide.com
`
`
`PATENT OWNER:
`David L. Cavanaugh
`Jonathan Ben-Ur Roses
`WILMER HALE
`david.cavanaugh@wilmerhale.com
`jonathan.roses@wilmerhale.com
`
`David A. Chavous
`Chavous Intellectual Property Law LLC
`dchavous@chavousiplaw.com
`
`David A. Giordano
`Wilmer Cutler Pickering Hale and Dorr LLP
`davidg@giordanolawllc.com
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