`571.272.7822
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` Entered: May 8, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`VALERITAS, INC. and VALERITAS HOLDINGS, INC.,
`Petitioner,
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`v.
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`ROCHE DIABETES CARE, INC.,
`Patent Owner.
`____________
`
`IPR2019-00552 and IPR2019-005531
`Patent 6,736,795 B2
`____________
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`
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`Before JON B. TORNQUIST, WESLEY B. DERRICK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
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`DERRICK, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`1 This Order address issues common to both cases; therefore, we issue a
`single Order to be entered in each case. The parties are not authorized to use
`this style heading.
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`IPR2019-00552
`IPR2019-00553
`Patent 6,736,795 B2
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`On May 6, 2019, a conference call was held involving counsel for the
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`respective parties and Judges Tornquist, Derrick, and Harlow. The purpose
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`of the conference call was for Petitioner to seek authorization to file a reply
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`to Patent Owner’s Preliminary Response in IPR2019-00552 and in IPR2019-
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`00553 (Paper 6 in each proceeding). Patent Owner opposed.
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` During the conference call, Petitioner argued that we should
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`authorize a reply to address claim construction issues relating to the phrase
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`“container . . . accommodated by [a] casing” and to two means-plus-function
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`limitations, i.e., “delivering means” and “pressure reducing means.”
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`Petitioner contended that there is good cause for considering a reply,
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`because Petitioner could not have anticipated the arguments made by Patent
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`Owner regarding the claim construction issues. Petitioner also contended
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`error in Patent Owner’s claim construction positions.
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`Patent Owner contended that its arguments and claim construction
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`positions were foreseeable, contrary to Petitioner’s contention, and that a
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`reply is not warranted.
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`Our rules do not authorize a petitioner to file a reply to a preliminary
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`response. Rather, a petitioner seeking leave to file a reply must make a
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`showing of good cause. 37 C.F.R. § 42.108(c). Based on the facts of this
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`case and the arguments presented during the call, the panel does not find
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`Petitioner has established that further briefing would be helpful or is
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`warranted under the good cause standard.
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`Petitioner is required to set forth how the challenged claims are to be
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`construed. 37 C.F.R. § 42.104(3). Petitioner now seeks to present
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`additional arguments with respect to claim terms, or closely related claim
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`2
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`
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`IPR2019-00552
`IPR2019-00553
`Patent 6,736,795 B2
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`terms, that were addressed in the Petition. Petitioner does not persuasively
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`explain, however, why it could not have anticipated Patent Owner’s
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`arguments related to the identified claim terms, which Patent Owner
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`represents rely solely on the intrinsic record of the challenged patent.
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`Moreover, the Board is capable of reviewing the present record, including
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`the intrinsic record, and construing the claims. Thus, Petitioner’s request to
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`a file a reply to Patent Owner’s Preliminary Response in both IPR2019-
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`00552 and IPR2019-00553 is denied.
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`Accordingly, it is:
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`ORDER
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`ORDERED that Petitioner’s request to file a reply to Patent Owner’s
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`Preliminary Response is denied.
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`3
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`IPR2019-00552
`IPR2019-00553
`Patent 6,736,795 B2
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`PETITIONER:
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`Sanjay K. Murthy
`John Hemmer
`Maria Doukas
`MORGAN, LEWIS & BOCKIUS LLP
`sanjay.murthy@morganlewis.com
`john.hemmer@morganlewis.com
`maria.doukas@morganlewis.com
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`PATENT OWNER:
`
`Michael Hawkins
`Thomas H. Reger II
`Craig Deutsch
`Sangki Park
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`reger@fr.com
`deutsch@fr.com
`spark@fr.com
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`4
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