`571.272.7822
`
`
`
`
`
` Paper No. 9
`
` Entered: April 30, 2018
`
`
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUROBINDO PHARMA USA INC.,
`Petitioner,
`
`v.
`
`ANDRX CORPORATION, ANDRX LABS, LLC, ANDRX
`LABORATORIES, INC., ANDRX LABORATORIES (NJ), INC., ANDRX
`EU LTD., ANDRX PHARMACEUTICALS, LLC, and TEVA
`PHARMACEUTICAL INDUSTRIES INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00530
`Patent 6,790,459 B1
`____________
`
`
`Before SUSAN L.C. MITCHELL, TINA E. HULSE, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2018-00530
`Patent 6,790,459 B1
`A conference call was held on April 26, 2018, among counsel for
`Petitioner, counsel for Patent Owner, and Judges Mitchell, Hulse, and
`Newman.
`Patent Owner requested the conference call to discuss Petitioner’s
`Updated Mandatory Notices in Regard to Related Cases to Address NVIDIA
`Factors (Paper 3). Specifically, Patent Owner contends Paper 3 includes
`impermissible argument not permitted under 37 C.F.R. § 42.8 and seeks to
`strike the paper.
`Having considered Paper 3, we agree with Patent Owner that it
`contains impermissible argument regarding the General Plastic/NVIDIA
`factors. Paper 3 will, therefore, be expunged as an improperly filed paper
`under 37 C.F.R. § 42.8.
`During the call, Petitioner sought guidance regarding where such
`arguments should be addressed in this proceeding. We discussed various
`options with the parties, including that Petitioner could request authorization
`to file a reply after Patent Owner files its Patent Owner Preliminary
`Response (assuming the Preliminary Response addresses the General Plastic
`factors) or could seek to amend the Petition to include such arguments in the
`Petition.
`We also discussed whether any further briefing would be necessary
`after the Supreme Court’s recent decisions in Oil States Energy Services,
`LLC v. Greene’s Energy Group, LLC, No. 16-712, 2018 WL 1914662 (U.S.
`Apr. 24, 2018) and SAS Institute Inc. v. Iancu, No. 16-969, 2018 WL
`1914661 (U.S. Apr. 24, 2018). The parties agreed to meet and confer to
`discuss the most efficient course of action to allow Petitioner to address the
`cases and to allow Patent Owner to respond to Petitioner’s arguments.
`
`1
`
`
`
`IPR2018-00530
`Patent 6,790,459 B1
`Counsel for Patent Owner indicated that he would respond via email
`after speaking with his client regarding each of these issues. Should further
`discussion with the panel be necessary, the parties may request another
`conference call via email to the Trials mailbox.
`On a final note, we appreciate the cordial nature of the parties’
`interactions with each other and commend the parties for working together
`to reach a fair and efficient resolution on these issues.
`ORDER
`
`Accordingly, it is
`ORDERED that Paper Number 3 shall be expunged; and
`FURTHER ORDERED that the parties shall meet and confer on the
`issues discussed in this Order and email the Board with any resolutions
`reached.
`
`
`
`
`PETITIONER:
`Steven Moore
`steven.moore@withersworldwide.com
`John Winterle
`john.winterle@withersworldwide.com
`
`PATENT OWNER:
`David Cavanaugh
`david.cavanaugh@wilmerhale.com
`Jonathan Roses
`jonathan.roses@wilmerhale.com
`David Chavous
`dchavous@chavousiplaw.com
`David Giordano
`davidg@giordanolawllc.com
`
`
`2
`
`
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