`571.272.7822
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` Paper No. 19
`
`Entered: August 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INDIVIOR INC.,
`Petitioner,
`
`v.
`
`RHODES PHARMACEUTICALS L.P.,
`Patent Owner.
`____________
`
`Case IPR2018-00795
`Patent 9,370,512 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN and TINA E. HULSE,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00795
`Patent 9,370,512 B2
`
`
`A conference call was held on July 31, 2018, among counsel for
`Petitioner, counsel for Patent Owner, and Judges Snedden and Hulse.
`Petitioner requested the conference call on July 25, 2018, to seek
`authorization to file a reply to Patent Owner’s Preliminary Response to
`address Patent Owner’s arguments regarding 35 U.S.C. § 325(d) and the
`prosecution histories of the patent at issue and its parent patent. Patent
`Owner opposed the request, but, in the event we grant Petitioner’s request,
`Patent Owner requested leave to file a surreply.
`Having considered the parties’ respective arguments, we grant
`Petitioner’s request. Although Petitioner did address § 325(d) in the
`Petition, we do not expect Petitioner to foresee and address every potential
`counterargument in the Petition. Given that the issue is potentially case
`dispositive and that the prosecution history of the parent patent appears
`sufficiently complicated, we are persuaded that additional briefing would be
`helpful.
`Finally, we noted during the call that there are two pending motions
`for pro hac vice admission filed by Petitioner’s prior counsel, Thomas H.
`Wintner and Adam P. Samansky, both from the law firm of Mintz, Levin,
`Cohn, Ferris, Glovsky, and Popeo P.C. Paper 6; Paper 7. Because counsel
`for Mintz Levin have withdrawn from this proceeding, those motions are
`dismissed as moot.
`
`It is, therefore,
`ORDERED that Petitioner’s request for authorization to file a reply to
`Patent Owner’s Preliminary Response to address Patent Owner’s 35 U.S.C.
`
`2
`
`
`
`IPR2018-00795
`Patent 9,370,512 B2
`
`§ 325(d) arguments and the characterization of the prosecution histories of
`U.S. Patent Nos. 9,370,512 and 9,101,625 is granted;
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file a surreply to Petitioner’s reply is granted;
`FURTHER ORDERED that Petitioner’s reply shall be limited to five
`pages and filed no later than August 7;
`FURTHER ORDERED that Patent Owner’s surreply shall be limited
`to five pages and filed no later than August 14; and
`FURTHER ORDERED that the pending Motions for Pro Hac Vice
`Admission of Thomas H. Wintner and Adam P. Samansky are dismissed as
`moot.
`
`
`
`PETITIONER:
`
`Carol Pitzel Cruz
`Christie R.W. Matthaei
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2CMP@knobbe.com
`2CRW@knobbe.com
`BoxIndivior@knobbe.com
`
`PATENT OWNER:
`
`Eldora L. Ellison
`Neil P. Shull
`Joshua G. McCoy
`Matthew S. Bodenstein
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`eellison-PTAB@sternekessler.com
`nshull-PTAB@sternekessler.com
`jmccoy-PTAB@sternekessler.com
`mbodenstein-PTAB@sternekessler.com
`
`3
`
`
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