Paper 21
`
`Trials@uspto.gov
`571-272-7822 Entered: March 5, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GLAXOSMITHKLINE BIOLOGICALS SA,
`Patent Owner.
`
`
`
`Case IPR2018-01229 (Patent No. 8,753,645)
`Case IPR2018-01236 (Patent No. 8,753,645)
`Case IPR2018-01234 (Patent No. 9,265,839)
` Case IPR2018-01237 (Patent No. 9,265,839)1
`____________
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5 and 42.123(a)
`
`1 This Order addresses issues that are common to all four cases. We,
`therefore, issue a single Order that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 5, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GLAXOSMITHKLINE BIOLOGICALS SA,
`Patent Owner.
`
`
`
`Case IPR2018-01229 (Patent No. 8,753,645)
`Case IPR2018-01236 (Patent No. 8,753,645)
`Case IPR2018-01234 (Patent No. 9,265,839)
` Case IPR2018-01237 (Patent No. 9,265,839)1
`____________
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5 and 42.123(a)
`
`1 This Order addresses issues that are common to all four cases. We,
`therefore, issue a single Order that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`
`
`IPR2018-01229, -01236 (Patent No. 8,753,645)
`IPR2018-01234, -01237 (Patent No. 9,265,839)
`
`Inter partes reviews in the above-referenced proceedings were
`instituted on December 18, 2018. Paper 13. 2 On January 17, 2019,
`Petitioner requested, via e-mail, authorization to file a motion to submit
`supplemental information in each of the above-referenced proceedings. That
`request was discussed during the initial conference call on January 22, 2019.
`We authorized Petitioner to file a motion to submit supplemental
`information pursuant to 37 C.F.R. § 42.123, and Patent Owner to file an
`opposition to that motion. Paper 16. Petitioner thereafter filed its Motion to
`Submit Supplemental Information under 37 C.F.R. § 42.123(a) (“Pet. Mot.,”
`Paper 17) in each of the above-referenced proceedings, and Patent Owner
`filed its Opposition to Petitioner’s Motion to Submit Supplemental
`Information (Paper 19).
`
`DISCUSSION
`37 C.F.R. § 42.123(a) states:
`(a) Motion to submit supplemental information. Once a trial has been
`instituted, a party may file a motion to submit supplemental information in
`accordance with the following requirements:
`(1) A request for the authorization to file a motion to submit
`supplemental information is made within one month of the date the
`trial is instituted.
`(2) The supplemental information must be relevant to a claim
`for which the trial has been instituted.
`In determining whether to grant a motion to submit supplemental
`information, we are guided by the principle of ensuring “the efficient
`
`
`2 Paper numbers in this Order refer to papers filed in IPR2018-01229.
`2
`
`
`
`
`
`IPR2018-01229, -01236 (Patent No. 8,753,645)
`IPR2018-01234, -01237 (Patent No. 9,265,839)
`
`administration of the Office, and the ability of the Office to timely complete
`[instituted IPR] proceedings.” 35 U.S.C. § 316(b); see Redline Detection,
`LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015) (“Requiring
`admission of supplemental information so long as it was timely submitted
`and relevant to the IPR proceeding would cut against this [§ 316(b)]
`mandate and alter the intended purpose of IPR proceedings.”).
`Petitioner complied with subpart (1) of Section 42.123(a) by making
`its request within one month of institution.
`As to subpart (2) of Section 42.123(a), Petitioner seeks to submit ten
`documents identified as Exhibits 1063 to 1072. Papers 17, 1–8; 18, 5–6.
`The alleged relevance of these exhibits is based on filings and/or arguments
`made by Patent Owner in foreign proceedings, and Patent Owner’s
`anticipated reliance on those arguments in these proceedings. Pet. Mot. 4–7.
`We find here that, regardless of whether any of the documents sought to be
`submitted are “relevant to a claim” under 37 C.F.R. § 42.123(a)(2), the
`submission of those documents based on anticipated arguments arising from
`foreign proceedings, or to preemptively rebut anticipated arguments, would
`not comport with our obligation to ensure “the efficient administration of the
`Office, and the ability of the Office to timely complete [instituted IPR]
`proceedings.” See 35 U.S.C. § 316(b).
`Under Board procedures, a petitioner is allowed to submit evidence
`with its reply to rebut an argument raised in the patent owner response. See,
`e.g., Office Patent Trial Practice Guide, August 2018 Update, 14, 83 Fed.
`Reg. 39,989 (Aug. 13, 2018) (“a petitioner may submit directly responsive
`rebuttal evidence in support of its reply”). Accordingly, Petitioner may
`submit directly responsive rebuttal evidence in support of its reply, and any
`
`
`
`3
`
`
`
`IPR2018-01229, -01236 (Patent No. 8,753,645)
`IPR2018-01234, -01237 (Patent No. 9,265,839)
`
`such rebuttal evidence may (depending on Patent Owner’s Response)
`include one or more of the documents Petitioner now seeks to submit.
`For the reasons given, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information under 37 C.F.R. § 42.123(a) is DENIED.
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2018-01229, -01236 (Patent No. 8,753,645)
`IPR2018-01234, -01237 (Patent No. 9,265,839)
`
`PETITIONER:
`
`Anthony Insogna
`Nikolaos George
`Gasper LaRosa
`Lisamarie LoGiudice
`Catharina Chin Eng
`JONES DAY
`aminsogna@jonesday.com
`ncgeorge@jonesday.com
`gjlarosa@jonesday.com
`llogiudice@jonesday.com
`cjchineng@jonesday.com
`
`
`Arlene Chow
`Ernest Yakob
`HOGAN LOVELLS US LLP
`arlene.chow@hoganlovells.com
`ernest.yakob@hoganlovells.com
`
`
`PATENT OWNER:
`
`Charles E. Lipsey
`Rich B. Racine
`Joann M. Neth
`Amanda Murphy
`Yieyie Yang
`Trenton Ward
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`charles.lipsey@finnegan.com
`rich.racine@finnegan.com
`joann.neth@finnegan.com
`amanda.murphy@finnegan.com
`yieyie.yang@finnegan.com
`trenton.ward@finnegan.com
`
`
`
`
`5
`
`
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