`Trials@uspto.gov
`Entered: July 17, 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
`Granting Joint Motion to Limit the Petition
`37 C.F.R. §§ 42.1(b), 42.71
`The Institution Decision in this case instituted trial on all of the
`challenged claims (i.e., claims 1, 2, 4–17, and 19), but not all of the
`challenged grounds.1 Paper 7. By Order dated July 2, 2018, we modified
`the Institution Decision to institute trial on “all of the grounds presented in
`the Petition” (Paper 2). Paper 50.
`
`
`1 As we explained in the Institution Decision, although the Petition
`challenged claim 3, Patent Owner subsequently disclaimed that claim. We
`dismissed the Petition as to claim 3. Paper 7, 2 n.1.
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`
`As authorized in our Order (Paper 50), the parties filed a Joint Motion
`to Limit the Petition. Paper 52. Specifically, the parties request that the
`Board remove the grounds based on MIMS 1998 and Agarwal 2000 under
`35 U.S.C. §§ 102(b) and 103(a). Id. at 2. Removing grounds from dispute,
`pursuant to a joint request of the parties, serves our overarching goal of
`resolving this consolidated proceeding in a just, speedy, and inexpensive
`manner. 37 C.F.R. § 42.1(b).
`Accordingly, we grant the Joint Motion to Limit the Petition. As
`such, the following grounds of unpatentability are removed from dispute in
`this proceeding:
`Reference
`MIMS 1998
`Agarwal 2000
`MIMS 1998
`Agarwal 2000
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Limit the Petition is granted;
`
`Basis
`§ 102(b)
`§ 102(b)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1, 2, 4–11, 13–17, 19
`1, 2, 4–11, 13–17, 19
`1, 2, 4–17, 19
`1, 2, 4–17, 19
`
`and
`
`FURTHER ORDERED that the Petition is limited to the following
`claims and grounds of unpatentability:
`References
`Basis
`Hoffbrand 1998
`§ 102(b)
`Olivieri Abstract 1995
`§ 102(b)
`Olivieri 1995
`§ 102(b)
`Hoffbrand 1998
`§ 103(a)
`Olivieri Abstract 1995
`§ 103(a)
`Olivieri 1995
`§ 103(a)
`
`
`Claims Challenged
`1, 2, 4–11, 13–17, 19
`1, 2, 4–11, 13–17, 19
`1, 2, 4–11, 13–17, 19
`1, 2, 4–17, 19
`1, 2, 4–17, 19
`1, 2, 4–17, 19
`
`
`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
`
`
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