`571-272-7822
`
`
` Paper 10
`
`Entered: August 8, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FRESENIUS KABI USA, LLC and
`FRESENIUS KABI SWISSBIOSIM GmbH.,
`Petitioner,
`
`v.
`
`AMGEN INC. and AMGEN MANUFACTURING, LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00971
`Patent 9,856,287 B2
`____________
`
`
`Before ZHENYU YANG, J. JOHN LEE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2019-00971
`Patent 9,856,287 B2
`
`Petitioner contacted the Board to request authorization to file a reply to
`the Patent Owner Preliminary Response (Paper 8). Specifically, Petitioner
`requests a reply of 7 pages to address the following issues:
`1. Whether 35 U.S.C. § 311(c)(2) or 37 C.F.R. § 42.102(a)(3) bars
`the filing of a petition for inter partes review more than nine
`months after issuance of the challenged patent and before
`institution of any post-grant review on the challenged patent; and
`2. Whether the Board should exercise its discretion under either
`35 U.S.C. § 325(d) or 35 U.S.C. § 314(d) to deny institution of
`the Petition.
`Patent Owner opposes Petitioner’s request but has indicated it does not oppose
`a 5-page reply addressing these topics if it is limited only to addressing any
`new cases post-dating the petition, no additional exhibits or evidence are filed
`therewith, and Patent Owner is granted a 5-page sur-reply. Petitioner does not
`oppose the sur-reply but otherwise disagrees with Patent Owner’s proposed
`restrictions on the reply.
`Considering the parties’ positions, we authorize Petitioner to file a reply
`addressing only the two topics identified above. The reply shall not exceed
`five pages, and no additional evidence or exhibits may be filed in support of
`the reply, but Petitioner may address any relevant legal authority. Further,
`Patent Owner is authorized to file a sur-reply. The sur-reply shall not exceed
`five pages, no additional evidence or exhibits may be filed in support of the
`sur-reply, and the sur-reply may only address matters raised in the reply.
`
`
`
`2
`
`
`
`IPR2019-00971
`Patent 9,856,287 B2
`
`It is, therefore,
`ORDERED that Petitioner is authorized to file a reply of no
`more than five (5) pages consistent with the limitations set forth
`above, and which may be filed no later than August 22, 2019; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply of no more than five (5) pages consistent with the limitations
`set forth above, and which may be filed no later than September 5,
`2019.
`
`3
`
`
`
`IPR2019-00971
`Patent 9,856,287 B2
`
`PETITIONER:
`Huiya Wu
`Linnea Cipriano
`GOODWIN PROCTER LLP
`hwu@goodwinlaw.com
`lcipriano@goodwinlaw.com
`
`
`PATENT OWNER:
`
`J. Steven Baughman
`Megan Raymond
`Catherine Nyarady
`PAUL, WEISS, RIFKIND, WHARTON
`& GARRISON LLP
`sbaughman@paulweiss.com
`mraymond@paulweiss.com
`cnyarady@paulweiss.com
`
`4
`
`
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