UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BIOFRONTERA INCORPORATED, BIOFRONTERA BIOSCIENCE GMBH,
`BIOFRONTERA PHARMA GMBH, and BIOFRONTERA AG
`Petitioner
`
`v.
`
`DUSA PHARMACEUTICALS, INC.
`Patent Owner
`
`Case IPR2018-01585
`
`Patent 8,216,289
`
`
`
`
`
`JOINT MOTION & CERTIFICATION UNDER 37 C.F.R. § 42.100(b)
`REQUESTING DISTRICT COURT-TYPE CLAIM CONSTRUCTION
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BIOFRONTERA INCORPORATED, BIOFRONTERA BIOSCIENCE GMBH,
`BIOFRONTERA PHARMA GMBH, and BIOFRONTERA AG
`Petitioner
`
`v.
`
`DUSA PHARMACEUTICALS, INC.
`Patent Owner
`
`Case IPR2018-01585
`
`Patent 8,216,289
`
`
`
`
`
`JOINT MOTION & CERTIFICATION UNDER 37 C.F.R. § 42.100(b)
`REQUESTING DISTRICT COURT-TYPE CLAIM CONSTRUCTION
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`
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`Joint Motion & Certification Under 37 C.F.R. § 42.100(b)
`IPR2018-01585
`Patent 8,216,289
`
`I.
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`RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. §§ 42.21(a) and 42.100(b), Patent Owner DUSA
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`Pharmaceuticals, Inc. and Petitioner Biofrontera Incorporated, Biofrontera
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`Bioscience GmbH, Biofrontera Pharma GmbH, and Biofrontera AG respectfully
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`request that the Board apply a district court-type claim construction approach during
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`this proceeding.
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`II. GOVERNING RULE
`The broadest reasonable construction applies to the claims in an unexpired
`
`patent. In re Cuozzo Speed Techs., 793 F.3d 1268, 1279 (Fed. Cir. 2015); see also
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`37 C.F.R. § 42.100(b) (“A claim in an unexpired patent shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
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`appears”). However, the Phillips claim construction rubric applies to the claims in
`
`an expired patent. Black & Decker v. Positec USA, Inc., 646 Fed. App’x 1019, 1024
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`(Fed. Cir. 2016) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) (en
`
`banc)); In re CSB–Sys. Int’l, Inc., 832 F.3d 1335, 1341–42 (Fed. Cir. 2016); see also
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`Emerson Electrical Co. v. IPCO, LLC, IPR2017-00007, Paper 7, at 6 (PTAB April
`
`5, 2017) (applying Phillips to claims of expired patent); Intel Corp. v. FuzzySharp
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`Tech., Inc., IPR2014-00001, Paper 7, at 9 (PTAB Jan. 29, 2014) (same).
`
`III. STATEMENT OF FACTS
`This motion is based on the following facts:
`2
`
`
`107103176_3
`
`
`
`Joint Motion & Certification Under 37 C.F.R. § 42.100(b)
`IPR2018-01585
`Patent 8,216,289
`
`1.
`
`The patent subject to this proceeding, U.S. Patent No. 8,216,289 (the
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`“’289 Patent”), claims priority to Application No. 12/621,845, filed on November
`
`19, 2009 (now U.S. Patent No. 8,030,836), which is a continuation of Application
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`No. 11/716,014, filed on March 9, 2007 (now U.S. Patent No. 7,723,910), which is
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`a continuation of Application No. 10/755,318, filed on January 13, 2004 (now Pat.
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`No. 7,190,109), which is a divisional of Application No. 09/774,084, filed on
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`January 31, 2001 (now Pat. No. 6,709,446), which is a divisional of Application No.
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`09/070,772, filed on May 1, 1998 (now Pat. No. 6,223,071). Thus, the earliest
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`possible priority date is May 1, 1998. (Paper 1 at Ex. 1001 § (60).)
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`2.
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`The ’289 Patent therefore expired on May 1, 2018 (i.e., 20 years from
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`May 1, 1998).
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`3.
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`Petitioner filed its Petition on August 22, 2018. On August 28, 2018,
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`the Board issued its Notice Of Filing Date, according the Petition a filing date of
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`August 22, 2018 and making Patent Owner’s preliminary response due November
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`28, 2018. (Paper 3 at 1–2.)
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`4.
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`5.
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`motion.
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`This motion is made within 30 days from the filing of the Petition.
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`On September 13, 2018, the Board authorized Petitioner to file this
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`-3-
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`Joint Motion & Certification Under 37 C.F.R. § 42.100(b)
`IPR2018-01585
`Patent 8,216,289
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`6.
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`Petitioner has proposed several claim terms for construction under
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) in support of its Petition.
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`(Paper 1 at 11–15.)
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`7.
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`Patent Owner has not yet taken a position as to which, if any, claim
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`terms it believes require construction.
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`8.
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`Both Petitioner and Patent Owner agree, however, that to the extent the
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`Board is to construe any claim term, it should employ a district court style claim
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`construction.
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`IV. CERTIFICATION
`Patent Owner and Petitioner certify, through the undersigned counsel, that
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`the ’289 Patent expired on May 1, 2018.
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`V. CONCLUSION
`For the foregoing reasons, Patent Owner and Petitioner respectfully request
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`that to the extent the Board determines claim construction is necessary during this
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`proceeding, the Board apply a district court-type claim construction approach.
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`Respectfully submitted,
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`By/Stuart A. Nelson/
`Stuart A. Nelson
`Reg. No. 63,947
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`
`Dated: September 19, 2018
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`By:
`
`/Rachelle H. Thompson/
`Rachelle H. Thompson
`Reg. No. 50,860
`McGuireWoods LLP
`434 Fayetteville St., Suite 1400
`Raleigh, NC 27601
`Telephone: (919) 755-6600
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`
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`-4-
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`
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`Joint Motion & Certification Under 37 C.F.R. § 42.100(b)
`IPR2018-01585
`Patent 8,216,289
`
`Facsimile: (919) 755-6591
`Email:
`BIOFRONTERA@mcguirewoods.com
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`Counsel for Petitioner
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`
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`
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`Fax: 877-769-7945
`Email: IPR46697-0002IP1@fr.com
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`
`Counsel for Patent Owner
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`-5-
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`Joint Motion & Certification Under 37 C.F.R. § 42.100(b)
`IPR2018-01585
`Patent 8,216,289
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) the undersigned certifies that on September
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`19, 2018, a true and correct copy of the Joint Motion & Certification Under 37 C.F.R.
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`§ 42.100(b) Requesting District-Court Type Claim Construction was served via
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`electronic mail on the following counsel of record for Patent Owner:
`
`W. Karl Renner, Reg. No. 41,265 (Lead Counsel)
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Email: IPR46697-0002IP1@fr.com
`Fax: 877-769-7945
`
`Stuart A. Nelson, Reg. No. 63,947 (Backup Counsel)
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-337-2538
`Email: PTABInbound@fr.com
`Fax: 877-769-7945
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`
`By:
`
`/s/
`George B. Davis (Reg. No. 68,205)
`BIOFRONTERA@mcguirewoods.com
`Counsel for Petitioner
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`-6-
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