`571-272-7822
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`Paper No. 8
`Entered: Aug. 1, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NALOX-1 PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`ADAPT PHARMA LIMITED, and
`OPIANT PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case Nos.
`IPR2019-00688, IPR2019-00689, and IPR2019-00690
`Patent No. 9,468,747 B2
`____________
`
`Before: ERICA A. FRANKLIN, ZHENYU YANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
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`
`
`IPR2019-00688
`IPR2019-00689
`IPR2019-00690
`Patent No. 9,468,747 B2
`
`
`On February 19, 2019, in each of the three above-captioned
`proceedings, Petitioner filed a Petition requesting an inter partes review of
`claims 1–45 of U.S. Patent No. 9,468,747 B2.1 In its Preliminary
`Responses, Patent Owner contends the Petitions in IPR2019-00689 and
`IPR2019-00690 are “secondary, redundant petitions” because they “merely
`add[] grounds that make the same arguments with more complicated
`combinations of more references” than those set forth in IPR2019-00688.
`See, e.g., IPR2019-00690, Paper 6, 1–2. According to Patent Owner, “not
`only are large swaths of text word-for-word identical,” but each Petition
`“relies extensively on the Wyse reference that is the principal reference in
`Case IPR2019-00688.” Id. at 2. Patent Owner argues that we should
`exercise discretion to deny institution of IPR2019-00689 and IPR2019-
`00690 on this basis. Id.
`The Director has discretion to deny a petition under 35 U.S.C.
`§ 314(a). See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”). The Board takes into account various
`considerations when exercising discretion on behalf of the Director. See
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357 (PTAB Sept. 6, 2017) (Paper 19) (Section II.B.4.i. designated as
`
`1 In all, Petitioner has challenged five patents with 15 separate petitions filed
`at or about the same time. IPR2019-00688, Paper 5, 1–2 (listing petitions
`for inter partes review filed by Petitioner against patents held by Patent
`Owner). According to Patent Owner, all of these patents relate to the same
`product, “NARCAN® Nasal Spray 4 mg.” IPR2019-00688, Paper 6, 1.
`2
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`
`
`
`
`IPR2019-00688
`IPR2019-00689
`IPR2019-00690
`Patent No. 9,468,747 B2
`
`precedential) (stating factors considered in Board’s exercise of discretion
`under 35 U.S.C. § 314(a)). Although the facts of General Plastic concern
`serial or “follow-on” petitions, the August 2018 Update to the Office Trial
`Practice Guide notes
`[t]here may be other reasons besides the “follow-on” petition
`context where the “effect . . . on the economy, the integrity of the
`patent system, the efficient administration of the Office, and the
`ability of the Office to timely complete proceedings,” favors
`denying a petition even though some claims meet the threshold
`standards for institution.
`Office Trial Practice Guide August 2018 Update2 referenced at 83 Fed. Reg.
`39,989 (“August 2018 TPG Update”) (Aug. 13, 2018), at 10 (quoting
`35 U.S.C. § 316(b)). With particular regard to “parallel petitions,” i.e.,
`“[t]wo or more petitions filed against the same patent at or about the same
`time,” the July 2019 Update to the Office Trial Practice Guide explains that
`such petitions “may place a substantial and unnecessary burden on the Board
`and the patent owner and could raise fairness, timing, and efficiency
`concerns.” Office Trial Practice Guide July 2019 Update3 referenced at 84
`Fed. Reg. 33,925 (“July 2019 TPG Update”) (July 16, 2019), at 26 (citing
`35 U.S.C. § 316(b)).
`Maintaining multiple, concurrent proceedings per patent presents a
`significant burden for the Board, because, among other things, the Board
`endeavors to assign all such cases to the same panel. See SOP 1 (Rev. 15),
`
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`2 Available at https://go.usa.gov/xU7GP.
`3 Available at https://www.uspto.gov/sites/default/files/documents/trial-
`practice-guide-update3.pdf.
`
`3
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`IPR2019-00688
`IPR2019-00689
`IPR2019-00690
`Patent No. 9,468,747 B2
`
`III.G.3. Additionally, when there are other related patents challenged by
`multiple petitions at the same time, as is the case here, this can undermine
`the Office’s ability to complete proceedings in a timely manner and may
`place an unfair burden on Patent Owner. See August 2018 TPG Update at
`10; cf. General Plastic, slip op. at 16 (requiring the Board to consider ability
`to meet statutory deadlines as an institution factor); 37 C.F.R. § 42.1(b)
`(“[The rules] shall be construed to secure the just, speedy, and inexpensive
`resolution of every proceeding.”).
`We agree with Patent Owner that the number of Petitions challenging
`the same patent here may place a substantial and unnecessary burden on the
`Board and Patent Owner, particularly if we determine the Petitions rely on
`substantially overlapping grounds and theories. Accordingly, the panel
`issues this Order under 37 C.F.R. § 42.5 to give the parties an opportunity to
`focus the Board’s limited resources on genuine issues in dispute.
`Within 7 days of this Order, Petitioner shall provide a Notice not to
`exceed 3 pages identifying (1) a ranking of the three Petitions in the order in
`which it wishes the panel to consider the merits, if the Board uses its
`discretion to institute any of the Petitions, and (2) a succinct explanation of
`the differences between the Petitions, why the differences are material, and
`why the Board should exercise its discretion to consider the additional
`Petitions if it identifies a Petition that satisfies Petitioner’s burden under 35
`U.S.C. § 314(a). The Board encourages Petitioner to use a table to aid in
`identifying the similarities and differences between the Petitions.
`
`4
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`
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`IPR2019-00688
`IPR2019-00689
`IPR2019-00690
`Patent No. 9,468,747 B2
`
`
`If it so chooses, Patent Owner may, within 7 days of the receipt of
`Petitioner’s Notice, provide a Response not to exceed 3 pages, stating its
`position with respect to any of the differences identified by Petitioner. In
`particular, Patent Owner should explain whether the differences identified
`by Petitioner are material and in dispute. If stating that reasons are not
`material or in dispute, Patent Owner should clearly proffer any necessary
`stipulations. For example, Patent Owner may seek to avoid additional
`Petitions by proffering a stipulation that certain claim limitations or priority
`dates are not disputed.
`Petitioner and Patent Owner are instructed to file the same paper in all
`proceedings and use this Order’s case caption format. The panel will
`consider the parties’ submissions in determining whether to exercise its
`discretion to institute inter partes review under 35 U.S.C. § 314(a).
`It is
`ORDERED that within 7 days of this Order, Petitioner shall file a
`
`Notice consistent with the foregoing instructions; and
`FURTHER ORDERED that, within 7 days of Petitioner’s Notice, if it
`chooses to, Patent Owner may file a Response consistent with the foregoing
`instructions.
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`5
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`IPR2019-00688
`IPR2019-00689
`IPR2019-00690
`Patent No. 9,468,747 B2
`
`PETITIONER:
`
`Yelee Y. Kim
`Janine A. Carlan
`Richard Berman
`Bradford Frese
`Christopher Yaen
`ARENT FOX LLP
`Yelee.Kim@arentfox.com
`Janine.Carlan@arentfox.com
`Richard.Berman@arentfox.com
`Bradford.Frese@arentfox.com
`Christopher.Yaen@arentfox.com
`
`PATENT OWNER:
`
`Robert F. Green
`Jessica Tyrus Mackay
`GREEN, GRIFFITH & BORG-BREEN, LLP
`rgreen@greengriffith.com
`jmackay@greengriffith.com
`
`
`6
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