`Trials@uspto.gov
`571-272-7822 Entered: May 8, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`AMNEAL PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`ENDO PHARMACEUTICALS INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00361
`Patent 8,309,122 B2
`____________
`
`
`
`Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2014-00361
`Patent 8,309,122 B2
`
`
`INTRODUCTION
`A telephone conference was held on May 7, 2014, between respective
`counsel for the parties, and Judges Bonilla, Scheiner, and Prats. Petitioner
`requested the call to seek authorization to file a reply to Patent Owner’s
`preliminary response regarding an alleged time-bar under 35 U.S.C.
`§ 315(b). The call addressed Petitioner’s request in this proceeding, as well
`as a similar request in IPR2014-00360. In this case, in its preliminary
`response (Paper 7, 1-11), Patent Owner argued, inter alia, that Petitioner was
`barred under § 315(b) from pursuing an inter partes review for U.S. Patent
`No. 8,309,122 B2 (“the ’122 patent”) because Petitioner was served a
`complaint alleging infringement of the ’122 patent more than one year
`before filing its petition (Paper 1).
`DISCUSSION
`During the call, Petitioner argued that Patent Owner’s preliminary
`response presents factual inaccuracies relevant to the alleged § 315(b) bar.
`Petitioner requested authorization to file a reply to the preliminary response
`to address such inaccuracies. Patent Owner opposed Petitioner’s request.
`Under the particular circumstances of these cases, we are persuaded
`that additional briefing is warranted on the issue of whether Petitioner was
`“served with a complaint” alleging infringement of the ’122 patent more
`than one year before the petition was filed—i.e., more than one year before
`January 16, 2014. 35 U.S.C. § 315(b). Specifically, we request that the
`parties address Patent Owner’s contention that it served Petitioner with a
`
`2
`
`
`
`Case IPR2014-00361
`Patent 8,309,122 B2
`
`relevant complaint on November 20, 2012, when Patent Owner served
`Petitioner an amended complaint (Ex. 2002; Ex. 2003). See Paper 7, 8-9.
`We authorize Petitioner to file a 5-page reply addressing the § 315(b)
`bar issue raised in Patent Owner’s preliminary response. We also authorize
`Patent Owner to file a 5-page sur-reply that responds to points raised in
`Petitioner’s reply.
`The parties are directed to Motorola Mobility LLC v. Arnouse,
`IPR2013-00010, Paper 20 (PTAB Jan. 30, 2013), regarding the meaning of
`“served” in the context of § 315(b). The parties’ briefs should address how
`and when Petitioner was served with a relevant complaint in the
`corresponding district court litigation pursuant to the applicable Federal
`Rules of Civil Procedure. The parties may submit evidence, but not
`testimony, with their briefs.
`
`Accordingly, it is hereby
`ORDERED that Petitioner is authorized to file, by Thursday, May 15,
`2014, a reply limited to five pages, addressing the issue of when Petitioner
`was “served with a complaint” alleging infringement of the ’122 patent
`under 35 U.S.C. § 315(b); and
`FURTHER ORDERED that Patent Owner is authorized to file, by
`Thursday, May 22, 2014, a responsive sur-reply limited to five pages.
`
`
`
`3
`
`
`
`Case IPR2014-00361
`Patent 8,309,122 B2
`
`For PETITIONER:
`Eldora L. Ellison
`Dennies Varughese
`STERN, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`eellison-PTAB@skgf.com
`dvarughe-PTAB@skgf.com
`
`For PATENT OWNER:
`Joseph A. Mahoney
`Erick J. Palmer
`MAYER BROWN LLP
`jmahoney@mayerbrown.com
`ejpalmer@mayerbrown.com
`
`
`4
`
`
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