IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`
`_____________________
`
`Case No.: IPR2018-01550
`U.S. Patent No. 9,561,197
`_____________________
`
`PETITIONER’S MOTION TO ACCEPT FILING OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,561,197
`ON AUGUST 16, 2018 UNDER 37 C.F.R. § 42.6(b)
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`
`_____________________
`
`Case No.: IPR2018-01550
`U.S. Patent No. 9,561,197
`_____________________
`
`PETITIONER’S MOTION TO ACCEPT FILING OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,561,197
`ON AUGUST 16, 2018 UNDER 37 C.F.R. § 42.6(b)
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2018-01550
`Petitioner’s Motion to Accept Filing of Petition for
`Inter Partes Review of U.S. Patent No. 9,561,197 on August 16, 2017
`TABLE OF CONTENTS
`
`
`
`
`
`
`
`Introduction ...................................................................................................... 1
`Statement of Material Facts ............................................................................. 2
` Relief Requested .............................................................................................. 3
` Statement of the Reasons for Relief Requested .............................................. 3
`Conclusion ....................................................................................................... 5
`
`
`
`
`i
`
`
`
`IPR2018-01550
`Petitioner’s Motion to Accept Filing of Petition for
`Inter Partes Review of U.S. Patent No. 9,561,197 on August 16, 2017
`INTRODUCTION
`Petitioner Par Pharmaceutical, Inc. (“Par”) respectfully requests a filing date
`
`
`
`of August 16, 2018, for its Petition for Inter Partes Review of U.S. Patent
`
`No. 9,561,197 (“the ’197 patent”) (Case No. IPR2018-01550). As laid out below,
`
`Par filed its Petition on August 16, 2018 using alternate means directed by the
`
`Patent Trial and Appeal Board (“PTAB”), because the PTAB’s End to End
`
`(“E2E”) system was offline that entire day.
`
`Par herewith submits along with this motion the Petition1 and accompanying
`
`exhibits, along with Par’s Power of Attorney, that it served on Patent Owner
`
`Horizon Therapeutics, LLC (“Horizon”) on August 16, 2018 following the
`
`instructions provided in Question A2 of the PTAB E2E Frequently Asked
`
`Questions (available at https://www.uspto.gov/patents-application-process/patent-
`
`trial-and-appeal-board/ptab-e2e-frequently-asked-questions).
`
`
`1 As instructed by the Board, Par has filed on E2E versions of its Petition and
`
`EX1002 that correct “µ” symbols that became corrupted during finalizing of those
`
`documents, which came to Par’s attention on August 20, 2018. (EX1033, ¶¶ 12-
`
`14; EX1038.)
`
`1
`
`
`
`IPR2018-01550
`Petitioner’s Motion to Accept Filing of Petition for
`Inter Partes Review of U.S. Patent No. 9,561,197 on August 16, 2017
`STATEMENT OF MATERIAL FACTS
`On August 16, 2018, Par filed its Petition for Inter Partes Review of the
`
`
`
`’197 patent using alternate means directed by the PTAB, because the E2E system
`
`was offline that entire day. (EX1033, ¶ 4.) Par contacted the Board for guidance
`
`in how to proceed and confirmed that it should follow the instructions provided at
`
`Question A2 of the PTAB E2E Frequently Asked Questions (available at
`
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`
`board/ptab-e2e-frequently-asked-questions). (Id., ¶ 5.)
`
`Following these instructions, Par served by email its Petition and
`
`accompanying exhibits, along with Par’s Power of Attorney on counsel for
`
`Horizon in the related federal district court litigation involving the ’197 patent and
`
`in Inter Partes Review proceedings involving patents directed to related subject
`
`matter (IPR2017-01767, -01768, -01769). (Id., ¶ 6; EX1034.) Par also served
`
`these documents by FedEx on Horizon’s counsel and the correspondence address
`
`of record for the ’197 patent, as noted on the certificates of service for Par’s
`
`Petition and Par’s Power of Attorney. (EX1033, ¶ 7; EX1036.) Par also notified
`
`the Board by email, with Horizon’s counsel copied, that it had served Horizon with
`
`those documents. (EX1033, ¶ 8; EX1035.) Par’s email to the Board provided the
`
`following information in accordance with Question A2’s instructions: (1) name of
`
`point of contact; (2) email address of point of contact; (3) patent number to which
`
`2
`
`
`
`IPR2018-01550
`Petitioner’s Motion to Accept Filing of Petition for
`Inter Partes Review of U.S. Patent No. 9,561,197 on August 16, 2017
`the petition corresponds; (4) application number of the patent; (5) number of
`
`claims challenged; (6) type of trial proceeding; (7) a copy of Par’s Power of
`
`Attorney; and (8) a deposit account authorization. (EX1033, ¶ 9; EX1035.)
`
`The Board notified the parties by email on August 21, 2018 that the E2E
`
`system’s functionality was restored. (EX1033, ¶ 10; EX1037.) In the Board’s e-
`
`mail, the Board authorized Par to submit its Petition2 and instant motion using the
`
`E2E system. (EX1033, ¶11; EX1037.) Par now concurrently submits herewith to
`
`the E2E system the current motion under 37 C.F.R. § 42.6(b), the requested
`
`Petition, the exhibits to Par’s Petition, Par’s Power of Attorney, Par’s Updated
`Exhibit List, and an affidavit (EX1033) attesting to the facts outlined above.
` RELIEF REQUESTED
`Par requests that the Board deem filed and accepted, as of August 16, 2018,
`
`Par’s Petition being submitted herewith to the E2E system.
`
` STATEMENT OF THE REASONS FOR RELIEF REQUESTED
`Per the instructions provided at Question A2, “[i]f PTAB E2E is unavailable
`
`during normal business hours or other unscheduled outage periods, petitions . . .
`
`may be served on opposing counsel via email, and the Board notified of the service
`
`by email copying opposing counsel.” (see https://www.uspto.gov/patents-
`
`
`2 See supra n.1
`
`3
`
`
`
`IPR2018-01550
`Petitioner’s Motion to Accept Filing of Petition for
`Inter Partes Review of U.S. Patent No. 9,561,197 on August 16, 2017
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-asked-
`
`questions.)
`
`Notification to the Board of petitions served via email
`must include:
`* name of point of contact;
`* email address of point of contact;
`* patent number to which the petition corresponds . . .;
`* application number of the patent; . . .
`* number of claims challenged;
`* type of trial proceeding;
`* power of attorney; and
`* fee, e.g., a deposit account authorization.
`(Id.) Petitions served in this manner “must be followed by a later-filed motion
`
`requesting accceptance [sic] of the submission once PTAB E2E is available.” (Id.)
`
`And “[t]he petition . . . will be accorded the date on the certificate of service as the
`
`identified filing date.” (Id. (citing 37 C.F.R. § 42.6(b).)
`
`As set forth above, Par complied with these instructions by (1) serving Par’s
`
`Petition on Horizon on August 16, 2018 (EX1034); (2) providing the Board with
`
`notice of Par’s service of its Petition and the information delineated in Question A2
`
`(EX1035); and (3) electronically filing the instant motion concurrently with Par’s
`
`Petition now that the E2E system’s functionality has been restored. Par, therefore,
`
`requests that the Board accept the submission of Par’s Petition and accord it a
`
`4
`
`
`
`IPR2018-01550
`Petitioner’s Motion to Accept Filing of Petition for
`Inter Partes Review of U.S. Patent No. 9,561,197 on August 16, 2017
`filing date of August 16, 2018, as noted on the certificate of service of Par’s
`
`Petition.
`
`Further, because the E2E system is designed to automatically assign a filing
`
`date to a submission based on when the submission is entered into E2E, Par also
`
`moves the Board to correct the E2E system’s indication of filing date associated
`
`with the August 16, 2018 Petition for Inter Partes Review of U.S. Patent No.
`
`9,561,197 from the filing date reflected in the E2E system to its actual filing date
`
`of August 16, 2018, which is the date on which Par complied with the Board’s
`
`requirements for filing provided in Question A2.
`
`Please apply any fees or any credits to Deposit Account No. 013050.
`
` CONCLUSION
`For the reasons discussed above, Par requests that the Board deem Par’s
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`Petition filed on August 16, 2018 and accept its submission to the E2E system as
`
`of that date.
`
`Dated: August 21, 2018
`
`
`
`
`David H. Silverstein (Reg. No. 61,948)
`AXINN, VELTROP & HARKRIDER LLP
`114 West 47th Street, 22nd Floor
`New York, NY 10036
`(212) 261-5651
`
`Counsel for Petitioner
`Par Pharmaceutical, Inc.
`
`5
`
`
`
`IPR2018-01550
`Petitioner’s Motion to Accept Filing of Petition for
`Inter Partes Review of U.S. Patent No. 9,561,197 on August 16, 2017
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`The undersigned hereby certifies that the above-captioned “Petitioner’s
`
`Motion to Accept Filing of Petition for Inter Partes Review of U.S. Patent
`
`No. 9,561,197 on August 16, 2017,” including its supporting evidence (Exhibits
`
`1033 – 1038), was served in its entirety on August 21, 2018 upon the following
`
`parties via FedEx®, a means at least as fast and reliable as Priority Mail Express®:
`
`Global Patent Group – HOR
`17014 New College Avenue
`Suite 201
`St. Louis, MO 63040
`
`Patent owner’s correspondence
`address of record for U.S. Patent
`No. 9,561,197
`
`
`Dated: August 21, 2018
`
`
`
`Robert Green
`Caryn Borg-Breen
`Emer Simic
`Ann Kotze
`Rachel Bell
`GREEN GRIFFITH & BORG-BREEN LLP
`676 North Michigan Avenue
`Suite 3900
`Chicago, Illinois 60611
`(312) 883-8000
`rgreen@greengriffith.com
`cborg-breen@greengriffith.com
`esimic@greengriffith.com
`akotze@greengriffith.com
`rbell@greengriffith.com
`
`Additional addresses known to
`Petitioner as likely to effect service
`
`
`David H. Silverstein (Reg. No. 61,948)
`AXINN, VELTROP & HARKRIDER LLP
`114 West 47th Street, 22nd Floor
`New York, NY 10036
`(212) 261-5651
`
`Counsel for Petitioner
`Par Pharmaceutical, Inc.
`
`
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