`
`Trials@uspto.gov
`571-272-7822
`
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` Paper No. 38
`
`
`Entered: September 10, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAR PHARMACEUTICAL, INC.,
`Petitioners,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)1
`____________
`
`Before TONI R. SCHEINER, DEBORAH KATZ, GRACE KARAFFA
`OBERMANN, and RAMA G. ELLURU, Administrative Patent Judges.
`
`KATZ, Administrative Patent Judge.
`
`
`
`ORDER
`Briefing on Evidence in Sur-Reply
`37 C.F.R. § 42.5
`
`
`
`1 We exercise our discretion to issue one Order to be filed in the three cited cases.
`The parties are not authorized to use this style heading for any subsequent papers.
`
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`
`On August 23, 2018, Patent Owner Horizon Therapeutics, LLC (“Horizon”)
`contacted the Board by e-mail regarding filing sur-replies in response to replies
`filed by Petitioner Par Pharmaceutical, Inc. (“Par”) in each of the three instant
`proceedings. Horizon reported that Par did not oppose the filing of sur-replies by
`Horizon in lieu of motions for observation on cross-examination.
`We authorized Horizon to file a sur-reply in these proceedings. (See
`IPR2017-01767, Paper 37; IPR2017-01768, Paper 36; IPR2017-01769, Paper 37
`(“Order authorizing sur-replies”).)
`In the e-mail of August 23, 2018, Horizon also sought confirmation that it
`may discuss and include as an exhibit in its sur-replies, a declaration of Dr.
`Sondheimer filed by Par in a different proceeding (Inter Partes Review of U.S.
`Patent No. 9,561,197 (IPR2018-01550, Ex. 1002) (“the Sondheimer ’197
`declaration”)). At that time Horizon asserted that the Sondheimer ’197 declaration
`contains testimony that is “relevant” to Dr. Sondheimer’s opinions in the instant
`proceedings. Horizon reported that Par opposes the submission of the Sondheimer
`declaration from IPR2018-01550 as an exhibit to Horizon’s sur-reply.
`We did not authorize Horizon to include the Sondheimer ’197 declaration in
`its sur-reply because Horizon will have an opportunity to elicit any information
`relevant to these proceedings when it cross-examines Dr. Sondheimer. (See
`IPR2017-01767, Paper 37; IPR2017-01768, Paper 36; IPR2017-01769, Paper 37.)
`On September 6, 2018, Horizon again contacted the Board, this time
`asserting that the Sondheimer ’197 declaration contains testimony that is
`“inconsistent” with Dr. Sondheimer’s positions in the instant proceedings.
`Horizon requested reconsideration of our Order denying authorization to submit
`the Sondheimer ’197 declaration with its sur-reply.
`
`
`
`2
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`
`On September 7, 2018, Par sent an e-mail to the Board asking that Horizon’s
`e-mail, and the attached Federal Circuit opinion, be disregarded as containing
`improper substantive argument.
`Nevertheless, we authorize briefing for the limited purpose of completing
`the record regarding Horizon’s current assertion that the Sondheimer ’197
`declaration is inconsistent with Dr. Sondheimer’s positions in the instant
`proceedings.
`Accordingly, it is ORDERED that Horizon is AUTHORIZED to file a
`request for reconsideration of our Order authorizing sur-replies, explaining how the
`Sondheimer ’197 declaration is inconsistent with Dr. Sondheimer’s positions in the
`instant proceedings and how this inconsistency is relevant to the issues in dispute
`between the parties in the instant proceedings;
`It is further ORDERED that any request for reconsideration filed by Horizon
`may not exceed three pages and must be filed by September 11, 2018;
`It is further ORDERED that Par is AUTHORIZED to file an opposition to
`Horizon’s request;
`It is further ORDERED that any opposition filed by Par may not exceed
`three pages and must be filed by September 17, 2018;
`It is further ORDERED that neither party may file any evidence with the
`papers authorized herein, including the Sondheimer ’197 declaration;
`It is further ORDERED that the due date for Horizon’s sur-reply is
`suspended and will be rescheduled when a decision on the parties’ briefing is
`issued; and
`It is further ORDERED that no other briefing or argument is authorized at
`this time.
`
`
`
`
`3
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`
`
`Petitioner:
`
`
`Patent Owner:
`
`
`
`
`
`
`
`
`David H. Silverstein
`Dan Feng Mei
`Aziz Burgy
`Axinn, Veltrop & Harkrider LLP
`dsilverstein@axinn.com
`dmei@axinn.com
`aburgy@axinn.com
`Ravicti@axinn.com
`
`
`Robert Green
`Emer Simic
`Ann Kotze
`Griffith & Borg-Breen, LLP
`rgreen@greengriffith.com
`esimic@greengriffith.com
`akotze@greengriffith.com
`
`Matthew Phillips
`Laurence & Phillips IP Law LLP
`mphillips@lpiplaw.com
`
`Dennis Bennett
`GLOBAL PATENT GROUP, LLC
`dennisbennett@globalpatentgroup.com
`
`4
`
`
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