Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 14
` Entered: October 31, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NOVEN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners.
`____________
`
`Case IPR2014-00549 (Patent 6,316,023 B1)
` Case IPR2014-00550 (Patent 6,335,031 B1)1
`_____________
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This decision addresses issues that are identical in the two cases. We,
`therefore, exercise our discretion to issue one order to be filed in each case.
`The parties are not authorized to use this style heading for any papers.
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 14
` Entered: October 31, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NOVEN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners.
`____________
`
`Case IPR2014-00549 (Patent 6,316,023 B1)
` Case IPR2014-00550 (Patent 6,335,031 B1)1
`_____________
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This decision addresses issues that are identical in the two cases. We,
`therefore, exercise our discretion to issue one order to be filed in each case.
`The parties are not authorized to use this style heading for any papers.
`
`
`
`
`
`
`IPR2014-00549 (Patent 6,316,023 B1)
`IPR2014-00550 (Patent 6,335,031 B1)
`
`
`The initial conference call for this case was held on October 30, 2014,
`
`between Mr. Steven J. Lee, Mr. Michael K. Levy, counsel for Petitioner,
`
`Noven Pharmaceuticals, Inc.; Mr. Raymond R. Mandra, Mr. Nicholas N.
`
`Kallas, counsel for Patent Owner, Novartis AG and LTS Lohmann Therapie-
`
`Systeme AG; and Administrative Patent Judges Prats, Franklin, and
`
`Kamholz. Petitioner and Patent Owner each filed a List of Proposed
`
`Motions (Papers 12 and 13)2.
`
`The following matters were discussed during the call.
`
`Scheduling Order
`
`Both parties confirmed that they have stipulated to modify DUE
`
`DATES 1-3 of the Scheduling Order. The parties are reminded that a
`
`stipulation is not effective until a notice of it is filed with the Board.
`
`Related Cases
`
`The parties were reminded of their obligation to update their
`
`mandatory notices within twenty-one (21) days of any change in the
`
`information provided therein, including changes in the status of co-pending
`
`litigation. See 37 C.F.R. § 42.8(a)(3).
`
`
`
`
`
`Pro Hac Vice Motion
`
`Patent Owner anticipates filing a motion for pro hac vice admission of
`
`Ms. Charlotte C. Jacobsen. We reminded the parties that such motion is
`
`authorized in the Notice of Filing Date Accorded to the Petition (Paper 4).
`
`Such motion shall be filed in accordance with the “Order -- Authorizing
`
`Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a
`
`copy of which is available on the Board Web site under “Representative
`
`Orders, Decisions, and Notices.” The parties are advised that under 37
`
`
`2 Paper numbers cited in this Order relate to each case.
`2
`
`
`
`
`
`IPR2014-00549 (Patent 6,316,023 B1)
`IPR2014-00550 (Patent 6,335,031 B1)
`
`C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of
`
`good cause. We also advised Patent Owner to indicate in the motion
`
`whether Petitioner opposes the motion. Petitioner was advised that a party
`
`seeking to oppose a motion for pro hac vice admission must file its
`
`opposition no later than one week after the filing of the underlying motion.
`
`Protective Order
`
`We noted that a protective order has not been entered in these
`
`proceedings. Petitioner and Patent Owner indicated that they may seek entry
`
`of a protective order. If the parties file a motion to seal, and no protective
`
`order has been entered, a protective order must accompany the motion as an
`
`exhibit. The panel recommended the default protective order in the Office
`
`Trial Practice Guide. 77 Fed. Reg. 48,756, Appendix B (Aug. 14, 2012). If
`
`the parties choose to deviate from the default protective order, we suggested
`
`that the parties schedule a conference with the Board for guidance.
`
`Moreover, if the parties deviate from the default protective order, the
`
`modifications should be indicated in “redline” when the modified default
`
`protective order is submitted to the Board.
`
`Motion to Seal
`
`We reminded the parties that the Board has a strong interest in the
`
`public availability of the proceedings. Any motion to seal must be narrowly
`
`tailored to the confidential information. The parties are encouraged to
`
`stipulate to facts or use other means to present the evidence without the need
`
`for a motion to seal. The parties are reminded that information subject to a
`
`protective order will become public if identified in a final written decision in
`
`this proceeding, and that a motion to expunge the information will not
`
`necessarily prevail over the public interest in maintaining a complete and
`
`
`
`3
`
`
`
`IPR2014-00549 (Patent 6,316,023 B1)
`IPR2014-00550 (Patent 6,335,031 B1)
`
`understandable file history. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,761 (Aug. 14, 2012). Board authorization is not required
`
`before the filing of a motion to seal.
`
`Motion to Amend
`
`In Patent Owner’s List of Proposed Motions, Patent Owner stated that
`
`it does not intend to request to file a motion to amend the challenged claims
`
`of the patents at issue in these proceedings.
`
`
`
`
`
`Remaining Motions
`
`The parties confirmed that the remaining motions included in their
`
`respective lists of proposed motions are not intended to be filed imminently
`
`and do not require Board attention at this time. The parties are reminded
`
`that, except as otherwise provided in the Rules, Board authorization is
`
`required before filing a motion. 37 C.F.R. § 42.20(b). The party seeking to
`
`file a motion should request a conference to obtain authorization to file the
`
`motion.
`
`
`
`
`
`Responses to Objections to Evidence
`
`Petitioner sought guidance regarding responding to Patent Owner’s
`
`objections to evidence. As provided by 37 C.F.R. § 42.64(b)(2), the party
`
`relying on evidence to which an objection is served timely may respond to
`
`the objection by serving supplemental evidence within ten business days of
`
`service of the objection. If the parties agree that the supplemental evidence
`
`cures the alleged defect in the evidence, the parties are directed to seek
`
`authorization to file a motion to correct the relevant exhibit(s) or paper(s). If
`
`an objection is not resolved, the party who timely served the objection may
`
`file a motion to exclude evidence to preserve the objection no later than
`
`DUE DATE 4. See 37 C.F.R. § 42.64(c).
`
`
`
`4
`
`
`
`IPR2014-00549 (Patent 6,316,023 B1)
`IPR2014-00550 (Patent 6,335,031 B1)
`
`PETITIONER:
`
`Steven J. Lee
`Michael K. Levy
`KENYON & KENYON LLP
`slee@kenyon.com
`mlevy@kenyon.com
`
`PATENT OWNER:
`
`Raymond R. Mandra
`Nicholas N. Kallas
`FITZPATRICK, CELLA, HARPER & SCINTO
`rmandra@fchs.com
`ExelonPatchIPR@fchs.com
`
`
`
`
`5
`
`
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
