Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
`
`Paper 36
`Entered: February 25, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KVK-TECH, INC.,
`Petitioner,
`
`v.
`
`SHIRE PLC,
`Patent Owner.
`____________
`
`Case IPR2018-00290 (Patent 8,846,100 B2)
`Case IPR2018-00293 (Patent 9,173,857 B2)1
`____________
`
`
`Before RAMA G. ELLURU, SHERIDAN K. SNEDDEN, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`NEWMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`
`Granting Parties’ Request for Authorization to File Briefing in Lieu of
`Observations
`37 C.F.R. §§ 42.5(a), 42.24(c)(1)
`
`
`
`
`1 This Decision addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Order to be entered in
`each proceeding. The parties are not authorized to use this joint heading and
`filing style in their papers.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`
`
`Paper 36
`Entered: February 25, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KVK-TECH, INC.,
`Petitioner,
`
`v.
`
`SHIRE PLC,
`Patent Owner.
`____________
`
`Case IPR2018-00290 (Patent 8,846,100 B2)
`Case IPR2018-00293 (Patent 9,173,857 B2)1
`____________
`
`
`Before RAMA G. ELLURU, SHERIDAN K. SNEDDEN, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`NEWMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`
`Granting Parties’ Request for Authorization to File Briefing in Lieu of
`Observations
`37 C.F.R. §§ 42.5(a), 42.24(c)(1)
`
`
`
`
`1 This Decision addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Order to be entered in
`each proceeding. The parties are not authorized to use this joint heading and
`filing style in their papers.
`
`
`
`
`
`IPR2018-00293
`Patent 9,173,857 B2
`
`
`
`A telephone conference was held February 22, 2019, between Judges
`Elluru, Sheridan, Newman, and respective counsel for the parties. The
`conference was held to clarify the page lengths on briefing authorized by the
`Board’s Order Granting Patent Owner’s Request for Authorization to File a
`Sur-Reply (Paper 36).
`By way of a brief history, counsel for Patent Owner, in an email to the
`Board on February 13, 2019, requested authorization to file a sur-reply per
`the Practice Guide Update. The email indicated Petitioner did not oppose
`provided Petitioner was authorized to file a response to Patent Owner’s sur-
`reply.
`
`We authorized Patent Owner’s unopposed request to file a sur-reply
`not exceeding five pages, to be filed by Due Date 4. (Paper 36) In addition,
`we granted Petitioner’s unopposed request to file a response to Patent
`Owner’s surreply, not exceeding five pages, to be filed by Due Date 5. Id.
`
`Counsel for Patent Owner subsequently requested a telephone call to
`discuss the briefing authorized by the Board, by way of email to the Board
`on February 20, 2019. The relevant portion of the email reads as follows:
`When Patent Owner requested “authorization to file a
`sur-reply to the petition on Due Date 4 in lieu of observations,
`consistent with the conditions set forth in the Trial Practice
`Guide Update (August 2018),” Patent Owner understood and
`was requesting that its sur-reply be no more than 5600 words,
`as the Trial Practice Guide specifies. The Board authorized a
`sur-reply of five pages for both parties.
`
`Patent Owner has consulted with Petitioner. Patent
`Owner understands that Petitioner opposes a 5600-word limit
`for Patent Owner’s sur-reply, but would agree to a 10-page
`limit for a sur-reply by each party.
`
`2
`
`
`
`IPR2018-00293
`Patent 9,173,857 B2
`
`
`
`Patent Owner believes the circumstances of this case
`make it necessary to request that it be allowed 5600 words for
`its sur-reply, and is ready to discuss its reasons with the Board.
`
`
`
`Counsel for Petitioner responded by email on February 20, 2019, in
`relevant part as follows:
` With respect to the e-mail from the Patent Owner below,
`Petitioner understood that the sur-reply and response were
`intended to be “in lieu of observations,” which according to the
`Scheduling Orders in these IPRs (pp. 4-5), were required to be
`“concise.”
`
`The August 2018 Trial Practice Guide Update (p. 6)
`leaves authorization to file a sur-reply, and its length, up to the
`discretion of the Board (with a ceiling of 5600 words).
`
`In view of the lengthy briefing and three expert
`declarations each side has already submitted in these cases,
`Petitioner agreed to ask the Board to raise the page limit on
`Patent Owner’s sur-reply and Petitioner’s response to 10 pages
`each.
`
`
`
`During the call, Counsel for Patent Owner explained that, in his view,
`the Trial Practice Guidelines provide for a sur-reply of up to 5600 words,
`and that the 5 pages authorized by the Board was insufficient because Patent
`Owner needed to respond to information on the merits submitted by
`Petitioner in connection with a new declarant, Mr. McCracken. Counsel for
`Patent Owner indicated that the information included testimony on
`secondary considerations, and that additional briefing was preferable rather
`than a motion to strike. Petitioner’s counsel indicated that Petitioner also
`needed additional briefing to respond to lengthy information contained in
`Patent Owner’s Response because the page length provided was insufficient.
`
`3
`
`
`
`IPR2018-00293
`Patent 9,173,857 B2
`
`
`For several reasons, we find good cause in granting the parties some,
`but not extensive, additional briefing, with limitations. Counsel for the
`parties indicated that each understood that the additional briefing authorized
`is in lieu of observations. In addition, counsel agreed that neither party will
`offer additional declarant testimony, and that any additional evidence
`submitted in connection with the briefing will be restricted to evidence
`relating to the credibility of the additional declarant.
`Conclusion
`
`
`
`
`It is
`ORDERED that Patent Owner is authorized to file a sur-reply, not
`exceeding fifteen pages, due by Due Date 4, in lieu of filing observations;
`and
`
`FURTHER ORDERED that Petitioner is authorized to file a response
`to Patent Owner’s sur-reply, not to exceed fifteen pages, due by Due Date 5,
`in lieu of filing observations.
`FURTHER ORDERED that neither Patent Owner’s surreply or
`Petitioner’s a response to Patent Owner’s sur-reply shall include any
`additional declaration, and that any additional evidence submitted in
`connection with the briefing will be restricted to evidence relating to the
`credibility of Petitioner’s additional declarant.
`
`
`
`
`
`
`4
`
`
`
`IPR2018-00293
`Patent 9,173,857 B2
`
`PETITIONER:
`Steven Roth
`Thomas Vetter
`LUCAS & MERCANTI, LLP
`srot@lmiplaw.com
`tvetter@lmiplaw.com
`
`
`PATENT OWNER:
`
`Joseph Robinson
`Robert Schaffer
`Dustin Weeks
`TROUTMAN SANDER LLP
`Joseph.robinson@troutmansanders.com
`Robert.schaffer@troutmansanders.com
`Dusti.weeks@troutmansanders.com
`
`
`5
`
`
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