`571.272.7822
`
`
`
`Paper 39
`
` Entered: March 7, 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.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 This Decision addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Decision to be entered
`in each proceeding. The parties are not authorized to use this joint heading
`and filing style in their papers.
`
`
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`On February 25, 2019, counsel for Petitioner sent the following email
`to the individual email address of a paralegal at the Board:
`I am an attorney working on the above-referenced IPRs. In
`addition to this email, I left you a voicemail message.
`
` write to ask for your guidance to correct an expert declaration
`filed on February 7. The required oath was inadvertently left
`out of the expert’s declaration, and we would like to correct this
`error.
`
`The questions I have are more procedurally-based, and I’m
`hoping you can help. For example, do we add the oath to the
`Feb. 7 declaration (exhibit 1045) and keep the dates the same,
`or do w need to file a new declaration updated dates, and a new
`exhibit number? Or perhaps there is a different convention or
`protocol we should follow that is not in the rules?
`
`Any advice you may provide would be greatly appreciated, and
`I thank you for your time.
`This email was improper for the following reasons. First, all email
`communications to the Board should be sent to Trials@uspto.gov, as
`instructed in the Scheduling Order (Paper 14). Email sent to the Board
`should not be addressed to an individual email address(es). See 37 C.F.R. §
`42.5(d) (prohibiting ex parte communications with any member of the
`Board, including employees acting with authority of the Board). Second, a
`party may communicate with the Board, without also copying opposing
`counsel, only on purely administrative matters (e.g., how to use E2E). On
`email communications to the Board involving issues that may not be entirely
`procedural, a party should copy opposing counsel out of an abundance of
`caution. In this instance, Petitioner’s email did not make clear that Patent
`Owner did not object to correction of the expert declaration, and thus, the
`issue was not entirely procedural and should not have been the subject of an
`
` I
`
`2
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`email communication to the Board that did not copy counsel for Patent
`Owner.
`
`With respect to Petitioner’s need to correct Ex. 1045 to include a
`proper oath (Ex. 1045), the panel orders the parties to meet and confer in an
`attempt to seek an agreed upon resolution (e.g., a motion to file a corrected
`declaration).
`
`
`IT IS:
`ORDERED that the parties meet and confer in an attempt to seek an
`
`agreed upon resolution (e.g., a motion to file a corrected declaration) with
`respect to Petitioner filing a declaration without a proper oath (Ex. 1045).
`
`
`
`3
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`
`PETITIONER:
`Steven Roth
`Thomas Vetter
`LUCAS & MERCANTI, LLP
`sroth@lmiplaw.com
`tvetter@lmiplaw.com
`
`PATENT OWNER:
`Joseph Robinson
`Robert Schaffer
`Dustin Weeks
`TROUTMAN SANDER LLP
`joseph.robinson@troutmansanders.com
`robert.schaffer@troutmansanders.com
`dustin.weeks@troutmansanders.com
`
`
`
`4
`
`
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