`Tel: 571-272-7822
`
`
`Paper 63
`Date: August 20, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMNEAL PHARMACEUTICALS LLC and AMNEAL
`PHARMACEUTICALS OF NEW YORK, LLC
`Petitioners,
`
`v.
`
`ALMIRALL, LLC,
`Patent Owner.
`____________
`
`IPR2019-002071
`Patent 9,517,219 B2
`____________
`
`
`Before SUSAN L. C. MITCHELL, CHRISTOPHER G. PAULRAJ, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`CONDUCT OF THE PROCEEDING
`Expunging Unauthorized New Evidence
`37 C.F.R. § 42.7
`
`
`
`
`
`
`1 Cases IPR2019-00207 and IPR2019-01095 have been joined in this
`proceeding. Herein, we refer to both joined cases.
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`A Final Decision was entered in this inter partes review on May 29,
`2020. Paper 58. Subsequent thereto, Patent Owner filed a Request for
`Rehearing under 37 C.F.R. § 42.71(d) (Paper 61, “Request for Rehearing”),
`and therewith new Exhibits 2071 and 2072. The Board denied Patent
`Owner’s Request for Rehearing. Paper 62.
`By email on May 21, 2020, Petitioner requested that these two
`aforementioned exhibits be expunged from the record, stating:
`In view of the Board’s Decision Denying Patent Owner’s
`Request for Rehearing, Petitioners respectfully request that the
`Board expunge Exhibits 2071 and 2072 from the record.
`Exhibits 2071 and 2072 were not of record at the time Patent
`Owner filed its Request for Rehearing on June 29, 2020, and
`Patent Owner has not made a showing of “good cause” to admit
`this new evidence into the record. Because Exhibits 2071 and
`2072 were filed out-of-time and Patent Owner did not follow the
`proper procedure for admitting new evidence with its Request for
`Rehearing, Petitioners respectfully request that Exhibits 2071
`and 2072 be expunged. We contacted counsel for Patent Owner
`on Thursday, July 23 and Friday, July 24 to inquire whether
`Patent Owner intended to oppose Petitioners’ request. Patent
`Owner did not respond.
`Ex. 3002. To which Patent Owner responded via a second email to the
`Board, stating:
`In response to Petitioners’ July 27, 2020 and August 13, 2020
`e-mails, Patent Owner respectfully submits that the Board should
`not expunge Exhibits 2071 and 2072 from the IPR Record. First,
`Exhibits 2071 and 2072 should not be considered “new
`evidence” since they are cites to a public record, which were
`attached Patent Owner’s Request for Rehearing as Exhibits for
`the Board’s convenience. Second, the Request for Rehearing
`made a showing of “good cause.” Exhibits 2071 and 2072 were
`submitted at first opportunity, and Patent Owner’s Request for
`Rehearing established the relevance of these Exhibits to Patent
`
`2
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`Owner’s argument in support thereof. Thank you kindly in
`advance for your attention and consideration here.
`
`Id.
`
`At this stage in the proceeding, as well as at the time Patent Owner
`filed its Request for Rehearing and submitted Exhibits 2071 and 2072, no
`further evidence was authorized by the Board.
`Ideally, a party seeking to admit new evidence with a rehearing
`request would request a conference call with the Board prior to
`filing such a request so that it could argue “good cause” exists
`for admitting the new evidence. Alternatively, a party may argue
`‘good cause’ exists in the rehearing itself.
`Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, IPR2018-00816,
`Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential). Absent a showing of
`“good cause” prior to filing the request for rehearing or in the request for
`rehearing itself, new evidence will not be admitted. Id.
`Patent Owner did not request a conference call with the Board, or
`otherwise request authorization to file new evidence with its Request for
`Rehearing prior to filing the evidence at issue. Furthermore, Patent Owner
`did not otherwise show that good cause exists for admitting the new
`evidence. See Request for Rehearing; see also Ex. 3002 (Patent Owner’s
`email). We conclude that Exhibits 2071 and 2072 are not evidence needed
`in the interest-of-justice in this proceeding.
`Under the Board’s authority to manage the record, we may expunge
`any paper directed to a proceeding or filed while an application or patent is
`under the jurisdiction of the Board that is not authorized. 37 C.F.R.
`§ 42.7(a) (2019). Therefore, we expunge from the record Exhibit 2071 and
`Exhibit 2072.
`
`3
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`
`Accordingly, it is:
`ORDERED that Exhibit 2071 and Exhibit 2072 are each expunged
`from the record.
`
`
`4
`
`
`
`IPR2019-00207
`US 9,517,219 B2
`
`For PETITIONER:
`
`Dennies Varughese
`Adam LaRock
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dvarughe-ptab@skgf.com
`alarock-ptab@skgf.com
`
`
`For PATENT OWNER:
`
`James Trainor
`Elizabeth Hagan
`FENWICK & WEST LLP
`jtrainor@fenwick.com
`ehagan@fenwick.com
`
`
`5
`
`
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