`Tel: 571-272-7822
`
`Entered: March 1, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NEPTUNE GENERICS, LLC,
`Petitioner,
`
`v.
`
`AVENTIS GENERICS S.A.,
`Patent Owner.
`_____________
`
`IPR2019-00136
`Patent 5,847,170
`_______________
`
`Before TINA E. HULSE and TIMOTHY G. MAJORS, Administrative
`Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5; 37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`
`
`
`
`IPR2019-00136
`Patent 5,847,170
`
`On February 21, 2019, Petitioner requested a conference call seeking
`permission to file a Reply to Patent Owner’s Preliminary Response. Paper 9
`(“Preliminary Response”). More specifically, Petitioner requested
`authorization to file a Reply addressing Patent Owner’s arguments for denial
`of institution under 35 U.S.C. §§ 325(d) and 314(a), and to address an
`allegedly incorrect legal standard for obviousness advanced in the
`Preliminary Response.
`A conference between the Board (Judges Majors and Hulse) and the
`parties’ counsel took place on February 28, 2019.1 At the conference,
`Petitioner contended it should be permitted to respond to Patent Owner’s
`arguments under §§ 325(d) and 314(a) because, among other things, Patent
`Owner has mischaracterized the similarities between the prior art and
`obviousness challenges raised in the present Petition versus the challenges
`presented by Mylan in a prior petition for inter partes review (IPR2016-
`00627), and because Patent Owner’s argument relies on Board decisions that
`post-date the filing of the Petition. Petitioner further contended that Patent
`Owner misstates the law on obviousness insofar as the Preliminary Response
`allegedly conflates “unexpected results” and the “reasonable expectation of
`success.” According to Patent Owner, Petitioner should have foreseen the
`§§ 325(d) and 314(a) arguments raised in the Preliminary Response, and
`addressed them more thoroughly in the Petition.
`After considering the parties’ contentions made during the conference,
`we concluded that good cause exists for Petitioner’s request, and we
`authorized the filing of a Reply to the Preliminary Response. 37 C.F.R.
`
`
`1 A court reporter was also present, and the Board requested that a transcript
`of the conference be filed as an exhibit with the Board when available.
`
`2
`
`
`
`IPR2019-00136
`Patent 5,847,170
`
`§ 42.108(c) (“A petitioner may seek leave to file a reply to the preliminary
`response in accordance with §§ 42.23 and 42.24(c). Any such request must
`make a showing of good cause.”). Petitioner did foresee that Patent Owner
`would raise §§ 325(d) and 314(a) issues. Paper 1 (“Petition”) 77–78, n.3.
`But we are persuaded Petitioner could not have foreseen Patent Owner’s
`particular arguments on those issues and, thus, Petitioner should be given an
`opportunity to respond to those arguments now. Moreover, having a
`meaningful response from Petitioner on those arguments will help the Board
`determine whether denial of the Petition under §§ 325(d) and/or 314(a) is (or
`is not) appropriate. Although the Board is familiar with the law of
`obviousness, and capable of determining whether the law’s requirements
`have been misstated, Petitioner may (though need not) explain in the Reply
`how Patent Owner has allegedly misstated the law and cite to authority
`Petitioner would like to bring to the Board’s attention on that topic.
`
`
`It is
`ORDERED that Petitioner’s request to file a Reply to Patent Owner’s
`Preliminary Response in IPR2019-00136 is granted;
`FURTHER ORDERED that Petitioner’s Reply shall be limited to
`responding to Patent Owner’s arguments for denial of the Petition under
`§§ 325(d) and/or 314(a), and the Reply may also address whether Patent
`Owner’s Preliminary Response misstates the law under 35 U.S.C. § 103; and
`FURTHER ORDERED that Petitioner’s Reply shall be filed no later
`than March 7, 2019, and shall be limited to five pages;
`
`
`
`3
`
`
`
`IPR2019-00136
`Patent 5,847,170
`
`
`
`
`
`FOR PETITIONER:
`Alexander E. Gasser
`Sarah Spires
`SKIERMONT DERBY LLP
`agasser@skiermontderby.com
`sspires@skiermontderby.com
`
`
`
`FOR PATENT OWNER:
`Daniel J. Minion
`Dominick A. Cond
`VENABLE LLP
`DMinion@Venable.com
`DConde@Venable.com
`
`
`4
`
`
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