Paper 24
`Date: June 7, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DERMIRA, INC.,
`Petitioner,
`
`v.
`
`PUREPHARM, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01594
`Patent 8,252,316 B2
`____________
`
`Before LORA M. GREEN, DEBORAH KATZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`ORDER
`Staying Examination of Reissue Application No. 15/148,510
`35 U.S.C. § 315(d) and 37 C.F.R. §§ 42.3, 42.122
`
`
`
`
`
`
`
`Date: June 7, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DERMIRA, INC.,
`Petitioner,
`
`v.
`
`PUREPHARM, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01594
`Patent 8,252,316 B2
`____________
`
`Before LORA M. GREEN, DEBORAH KATZ, and ZHENYU YANG,
`Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`ORDER
`Staying Examination of Reissue Application No. 15/148,510
`35 U.S.C. § 315(d) and 37 C.F.R. §§ 42.3, 42.122
`
`
`
`
`
`
`
`
`IPR2015-01594
`Patent 8,252,316 B2
`
`
`On May 6, 2016, Purepharm, Inc. (“Patent Owner”) filed reissue application
`15/148,510 (“the ’510 reissue application”) for U.S. Patent No. 8,252,316 B2 (“the
`’316 patent”). See Paper 23. On May 23, the Board held a telephonic conference
`at the request of Patent Owner. Counsel for both parties and members of the panel
`attended the conference. The purpose of the conference was to discuss what
`course of action the panel should take in this inter partes review proceeding
`(“IPR”) given the filing of the ’510 reissue application. After reviewing the record
`in this IPR and in the ’510 reissue application, we determine that, under the
`circumstances, it is appropriate to stay examination the ’510 reissue application.
`DISCUSSION
`During the May 23 conference, Patent Owner sought to file a motion to stay
`this IPR. Petitioner opposed such a request. Instead, Petitioner proposed that we
`either treat the reissue application as a request for adverse judgement, or stay the
`reissue application, rather than this IPR.
`
`In an IPR, cancellation of claims such that no instituted claim remains in the
`trial is construed as a request for adverse judgment. 37 C.F.R. §42.73(b). Claims
`1–8 of the ’316 patent are involved in this IPR. In the preliminary amendment
`filed in the ’510 reissue application, Patent Owner seeks to cancel those claims and
`replace them with a new set of claims, claims 9–16. Ex. 3001, 3–4. Under 35
`U.S.C. § 252, however, the surrender of the original claims do not take effect until
`the reissued patent is issued. Because the ’510 reissue application has not been
`examined, the cancellation of claims 1–8 of the ’316 patent has not taken effect.
`As a result, we do not construe Patent Owner’s claim amendment in the ’510
`reissue application as a request for adverse judgment. The circumstances,
`however, warrant staying the ’510 reissue application.
`
`2
`
`
`
`IPR2015-01594
`Patent 8,252,316 B2
`
`
`
`
`The Director has authority to stay a reissue proceeding pursuant to 35 U.S.C.
`§ 315(d), which provides:
`(d) Multiple Proceedings.—Notwithstanding sections 135(a),
`251, and 252, and chapter 30, during the pendency of an inter partes
`review, if another proceeding or matter involving the patent is before
`the Office, the Director may determine the manner in which the inter
`partes review or other proceeding or matter may proceed, including
`providing for stay, transfer, consolidation, or termination of any such
`matter or proceeding.
`Under 37 C.F.R. § 42.122(a), the Board may enter an order to effect a stay:
`Multiple proceedings. Where another matter involving the patent is
`before the Office, the Board may during the pendency of the inter
`partes review enter any appropriate order regarding the additional
`matter including providing for the stay, transfer, consolidation, or
`termination of any such matter.
`In addition, the Board may exercise exclusive jurisdiction within the Office
`
`over an application underlying a patent involved in an IPR. 37 C.F.R. § 42.3(a).
`When doing so, the Board may take various action, including staying that
`application.
`Here, staying examination of the ’510 reissue application is the proper
`course of action. Conducting examination of the ’510 reissue application
`concurrently with this IPR would duplicate efforts within the Office and could
`potentially result in inconsistencies between the proceedings. Indeed, according to
`Patent Owner, new proposed claims 9–16 in the ’510 reissue application “are the
`same as claims 1–8 but for [an] added limitation in claim 11.” Ex. 3001, 5.
`Should examination of the ’510 reissue application begin, the Office may allow
`claims 9–16, thereby changing the scope of the instituted claims while the Board is
`conducting this IPR.
`
`3
`
`
`
`IPR2015-01594
`Patent 8,252,316 B2
`
`
`Based upon the facts in this proceeding and in the ’510 reissue application,
`we conclude it is necessary to stay examination of the ’510 reissue application
`pending the completion or termination of this proceeding.
`ORDER
`
`Accordingly, it is
`ORDERED that pursuant to our authority arising under 35 U.S.C. § 315(d),
`and 37 C.F.R. §§ 42.3(a), 42.122(a), examination of reissue application 15/148,510
`is hereby stayed pending the completion or termination of this inter partes review
`proceeding;
`FURTHER ORDERED that this stay tolls all time periods for filing further
`papers in reissue application 15/148,510, and no further papers shall be filed in that
`application while this stay remains in place; and
`FURTHER ORDERED that all time periods in reissue application
`15/148,510 will be restarted upon lifting of the stay.
`
`
`
`PETITIONER:
`Matthew Smith
`smith@turnerboyd.com
`
`Keeley Vega
`vega@turnerboyd.com
`
`
`PATENT OWNER:
`
`Christopher Brody
`cbrody@clarkbrody.com
`
`4
`
`
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