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