`Trials@uspto.gov
`Entered: July 2, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TARO PHARMACEUTICALS U.S.A., INC.,
`Petitioner,
`v.
`APOTEX TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2017-01446
`Patent 7,049,328 B2
`
`
`
`
`
`
`
`
`Before JEFFREY N. FREDMAN, ZHENYU YANG, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018). In our
`Decision on Institution, we determined that Petitioner demonstrated a
`reasonable likelihood that it would establish that at least one of the challenged
`claims of the ’328 patent is unpatentable. Paper 7. We modify our institution
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`decision to institute on all of the challenged claims and all of the grounds
`presented in the Petition.
`The parties shall confer to discuss the impact, if any, of this Order on
`the current schedule. If, after conferring, the parties wish to otherwise change
`the schedule or submit further briefing, the parties must, within one week of
`the date of this Order, request a conference call with the panel to seek
`authorization for such changes or briefing.
`As an alternative, the Board authorizes the parties to file, within one
`week of the date of this Order, a Joint Motion to Limit the Petition by
`removing the claims or grounds upon which we did not institute in our
`Decision on Institution. See, e.g., Apotex Inc., v. OSI Pharms., Inc., Case
`IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19) (granting, after institution,
`a joint motion to limit the petition by removing a patent claim that was
`included for trial in the institution decision); KVK-Tech, Inc. v. Silvergate
`Pharms., Inc., Case PGR2017-00039 (PTAB May 1, 2018) (Paper 17)
`(granting a joint motion to limit the petition by removing two grounds that
`were excluded from the institution decision).
`In consideration of the foregoing, it is hereby:
`ORDERED that our institution decision is modified to include review
`of all challenged claims and all grounds presented in the Petition; and
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or any further
`briefing, and, if so, shall request a conference call with the panel to seek
`authorization for such changes or briefing within one week of the date of this
`Order.
`
`
`
`
`
`2
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`PETITIONER:
`Huiya Wu
`Robert V. Cerwinski
`Sara Fink
`GOODWIN PROCTER LLP
`hwu@goodwinlaw.com
`rcerwinski@goodwinlaw.com
`sfink@goodwinlaw.com
`
`PATENT OWNER:
`W. Blake Coblentz
`Aaron S. Lukas
`COZEN O’CONNOR
`WCoblentz@cozen.com
`ALukas@cozen.com
`
`3
`
`