`Tel: 571-272-7822
`
`Paper 10
`Entered: July 2, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MYLAN LABORATORIES LTD.
`Petitioner,
`
`v.
`
`JANSSEN PHARMACEUTICA NV,
`Patent Owner.
`
`
`IPR2020-00440
`Patent 9,439,906
`
`
`
`
`
`
`
`
`
`Before JOHN G. NEW, KRISTINA M. KALAN, and ROBERT A.
`POLLOCK, Administrative Patent Judges.
`PER CURIAM
`
`
`
`ORDER
`Granting Petitioner’s and Patent Owner’s Requests for Authorization for
`Additional Briefing
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00440
`Patent 9,439,906
`
`
`In response to an email request by Petitioner Mylan Laboratories Ltd.
`(“Mylan”), a telephonic conference was held on June 30, 2019 at 1:00 p.m.
`EDT. Present were counsel for both Mylan and Patent Owner Janssen
`Pharmaceuticals N.V. (“Janssen”). A preliminary transcript of the call was
`filed as Exhibit 1048.
`Mylan requests authorization to file a Reply Brief in Response to
`Janssen’s Preliminary Response (Paper 8). Specifically, Mylan seeks
`authorization to respond to Janssen’s arguments with respect to 35 U.S.C.
`§§ 314(a) and 325(d) in view of the factors set forth in the Board’s recent
`decision in Apple Inc. v. Fintiv, Inc., IPR2020-00019 (March 20, 2020)
`(precedential). Mylan also seeks authorization to respond to Janssen’s
`arguments with respect to whether Janssen’s patent-in-suit can claim the
`priority benefit of Janssen’s U.S. Provisional Application No. 61/014,918
`(the “’918 application”). Mylan requests ten pages to brief these issues, to
`be submitted one week subsequent to an order authorizing the briefing.
`Janssen does not oppose Mylan’s request with respect to the
`§§ 314(a)/325(d) issue, but opposes additional briefing with respect to the
`priority issue. However, if Mylan’s request is granted, Janssen seeks
`authorization to also file a Sur-Reply in response to Mylan’s submitted
`Reply Brief.
`
`Having considered the arguments presented by both sides in the
`conference, we determine that further briefing would be useful for our
`determination whether to institute trial. Accordingly we authorize Mylan’s
`request to file a Reply with respect to both issues and we likewise authorize
`Janssen’s request to file a Sur-Reply to address both issues. The Reply and
`Sur-Reply briefings on both issues are limited to a combined ten-page limit
`2
`
`
`
`
`IPR2020-00440
`Patent 9,439,906
`
`for each, and subject to the requirements of 37 C.F.R. § 42.6(a). Mylan’s
`Reply shall be submitted no later than one week following the issuance of
`this order, and Janssen’s Sur-Reply shall be filed no later than one week
`subsequent to the filing of Mylan’s Reply.
`
`
`ORDER
`
`It is therefore,
`ORDERED that Mylan’s request to file a Reply Brief on both issues is
`authorized, said Reply Brief not to exceed ten pages, and to be filed no later
`than July 10, 2020, and
`FURTHER ORDERED that Janssen is authorized to file a Sur-Reply
`in response to Mylan’s Reply, said Sur-Reply not to exceed ten pages, and to
`be filed no later than July 17, 2020.
`
`
`
`
`
`
`3
`
`
`
`
`IPR2020-00440
`Patent 9,439,906
`
`PETITIONER:
`
`Jitendra Malik, Ph.D.
`Guylaine Haché, Ph.D.
`Alissa M. Pacchioli
`Lance Soderstrom
`KATTEN MUCHIN ROSENMAN LLP
`jitty.malik@katten.com
`alissa.pacchioli@katten.com
`lance.soderstrom@katten.com
`
`PATENT OWNER:
`
`Barbara L. Mullin
`Andrew D. Cohen
`Joong Youn (Jay) Cho
`PATTERSON BELKNAP WEBB & TYLER LLP
`bmullin@pbwt.com
`acohen@pbwt.com
`jcho@pbwt.com
`
`Ruben H. Munoz
`AKIN GUMP STRAUSS HAUER & FELD LLP
`rmunoz@akingump.com
`
`
`
`4
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
