Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 25
`Entered: February 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.
`and MYLAN LABORATORIES LIMITED,
`Petitioner,
`
`v.
`
`UCB PHARMA GMBH,
`Patent Owner.
`____________
`
`Case IPR2016-005101,2 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`____________
`
`
`Before KRISTINA M. KALAN, ROBERT A. POLLOCK, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`
`1 Petitioners Alembic Pharmaceuticals Limited from IPR2016-01596,
`Torrent Pharmaceuticals Limited from IPR2016-01636, and Amerigen
`Pharmaceuticals Limited from IPR2016-01665 have been joined as
`Petitioners to this proceeding.
`2 We exercise our discretion to issue one order to be entered in all five cases.
`The parties are not authorized to use this style heading for subsequent papers
`without Board preapproval.
`
`
`571-272-7822
`
`
`
` Paper No. 25
`Entered: February 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.
`and MYLAN LABORATORIES LIMITED,
`Petitioner,
`
`v.
`
`UCB PHARMA GMBH,
`Patent Owner.
`____________
`
`Case IPR2016-005101,2 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`____________
`
`
`Before KRISTINA M. KALAN, ROBERT A. POLLOCK, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`
`1 Petitioners Alembic Pharmaceuticals Limited from IPR2016-01596,
`Torrent Pharmaceuticals Limited from IPR2016-01636, and Amerigen
`Pharmaceuticals Limited from IPR2016-01665 have been joined as
`Petitioners to this proceeding.
`2 We exercise our discretion to issue one order to be entered in all five cases.
`The parties are not authorized to use this style heading for subsequent papers
`without Board preapproval.
`
`
`
`Case IPR2016-00510 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A conference was held on February 15, 2017, between counsel for the
`parties and Judges Kalan, Pollock, and Ankenbrand. We convened the
`conference to discuss Mylan Pharmaceuticals, Inc.’s and Mylan Laboratories
`Ltd.’s (collectively, “Petitioner”) request for authorization to file a motion to
`file supplemental information.
`Prior to the conference, Patent Owner filed objections to Exhibits
`1073, 1074, 1075, and 1076, which Petitioner submitted in support of its
`Reply. Paper 29, 1.3 Petitioner responded to the objections, explaining that
`the four exhibits are portions of deposition transcripts from co-pending
`litigation that the parties agreed would serve as the cross-examination
`testimony of Patent Owner’s four declarants in these proceedings. Paper 30,
`1–2. Petitioner subsequently requested the conference with the Board.
`During the conference, Petitioner explained that it was seeking authorization
`to file the complete deposition transcripts that correspond to the previously
`filed deposition excerpts in Exhibits 1073, 1074, 1075, and 1076. Petitioner
`represented that it filed excerpted versions of the deposition transcripts to
`avoid potential confidentiality issues.
`Patent Owner indicated that it did not oppose Petitioner’s request,
`subject to Patent Owner’s review of the full transcripts first to identify any
`
`
`3 Unless otherwise noted, citations are to the papers filed in IPR2016-00510.
`Similar papers were filed in each of the above-captioned proceedings.
`2
`
`
`
`
`
`Case IPR2016-00510 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`
`confidentiality issues. Patent Owner stated that it also filed excerpts of
`deposition transcripts from the co-pending district court litigation as exhibits
`in these proceedings and requested the same authorization Petitioner
`requested (i.e., to file the complete deposition transcripts).
`Petitioner did not oppose Patent Owner’s request, subject to review of
`the full transcripts to identify any confidentiality issues. The parties
`represented that they would review the deposition transcripts prior to filing
`them to determine whether any contain confidential information. The parties
`also represented that, should any of the deposition transcripts contain
`confidential information, the parties will work together, without Board
`intervention, to submit a motion to seal and proposed protective order.
`After considering the parties’ representations, we authorized the
`parties to file the full deposition transcripts as exhibits in each of these
`proceedings. We further ordered the parties to file, in each proceeding, a
`joint document indicating how each full deposition transcript corresponds to
`the excerpts cited in the Response or Reply. For each full deposition
`transcript, the parties shall: (1) identify the name of the declarant or witness
`that is the subject of the deposition; (2) identify the pages of the Response or
`the Reply on which an excerpt of that deposition transcript is cited; and
`(3) correlate such excerpts to the newly submitted full deposition.
`If the parties determine that any deposition transcript contains
`confidential information, the parties shall file a motion to seal, with a
`proposed protective order presented as an exhibit to the motion. We expect
`the parties to agree on the terms of the proposed protective order and
`
`
`
`3
`
`
`
`Case IPR2016-00510 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`
`encourage the parties to utilize the Board’s default protective order. See
`Default Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, App. B (Aug. 14, 2012). If the parties choose to propose a
`protective order deviating from the default protective order, they should
`submit the proposed protective order jointly. A marked-up comparison of
`the proposed and default protective orders should be presented as an
`additional exhibit to the motion, so that differences can be understood
`readily.
`Redactions to the deposition transcripts should be limited strictly to
`isolated passages consisting entirely of confidential information, and the
`thrust of the underlying argument or evidence must be clearly discernible
`from any redacted versions.
`
`It is
`ORDERED that Petitioner and Patent Owner are authorized to file the
`full deposition transcripts corresponding to the deposition excerpts cited in
`the Response and Reply as exhibits in each of these proceedings;
`FURTHER ORDERED that Petitioner and Patent Owner shall file, in
`each proceeding, a joint document indicating how each full deposition
`transcript corresponds to the excerpts cited in the Response or Reply. For
`each full deposition transcript, the parties shall: (1) identify the name of the
`declarant or witness that is the subject of the deposition; (2) identify the
`pages of the Response or the Reply on which an excerpt of that deposition
`
`
`
`4
`
`
`
`Case IPR2016-00510 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`
`transcript is cited; and (3) correlate such excerpts to the newly submitted full
`deposition; and
`FURTHER ORDERED that if the parties determine that any
`deposition transcript contains confidential information, the parties shall file a
`motion to seal, with a proposed protective order presented as an exhibit to
`the motion in accordance with the guidance provided in this order.
`
`
`
`
`
`5
`
`
`
`Case IPR2016-00510 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`
`FOR PETITIONER:
`
`Mitchell Stockwell
`Clay Holloway
`Alyson L. Wooten
`KILPATRICK TOWNSEND & STOCKTON LLP
`mstockwell@kilpatricktownsend.com
`cholloway@kilpatricktownsend.com
`awooten@kilpatricktownsend.com
`
`FOR PATENT OWNER:
`
`Jeffrey Oelke
`Robert Counihan
`WHITE & CASE LLP
`joelke@whitecase.com
`rcounihan@whitecase.com
`
`
`
`6
`
`
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