throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 11
`Date: Nov. 18, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VETERINARY ORTHOPEDIC IMPLANTS, INC.,
`Petitioner,
`
`v.
`
`DEPUY SYNTHES PRODUCTS, INC.,
`Patent Owner.
`_____________
`
`IPR2019-01331 (Patent 8,523,921 B2)
` IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)1
`_______________
`
`Before HYUN J. JUNG and TIMOTHY G. MAJORS,
`Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each of the
`above-listed proceedings. Parties are not authorized to use this format
`absent permission of the Board.
`
`

`

`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`
`On November 14, 2019, the Board held a conference call with the
`parties pursuant to Petitioner’s request for such conference, which request
`was made in an email dated November 8, 2019. A court reporter was also
`present, and the Board instructed the parties to file a transcript of the
`conference when available.
`As indicated during the conference, Petitioner requests authorization
`to file a Reply to the Patent Owner’s Preliminary Response in each of the
`above-captioned proceedings. See 37 C.F.R. § 42.108(c). According to
`Petitioner, it seeks to respond to several issues raised in Patent Owner’s
`Preliminary Response. Those issues are, in general, the following: whether
`the Petition complies with 37 C.F.R. § 42.104(b)(3) in setting forth “[h]ow
`the challenged claim[s] [are] to be construed;” the priority date of certain
`prior art and evidence purporting to show that the claimed subject matter
`antedates that prior art; Patent Owner’s citation to objective indicia of
`nonobviousness; and why Petitioner filed three petitions on the same patent.
`Rule 42.108(c) states as follows: “A petitioner may seek leave to file a
`reply to the preliminary response in accordance with §§ 42.23 and 42.24(c).
`Any such request must make a showing of good cause.” Id.
`After hearing from the parties, good cause exists here. Although a
`close call on whether Petitioner should have foreseen, and sought to
`preempt, Patent Owner’s particular challenges to the Petition on the above-
`
`
`
`2
`
`

`

`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`
`noted issues,2 we conclude on this record that the Board may benefit from
`further argument from Petitioner to explain why trial should be instituted
`notwithstanding those challenges. Accordingly, Petitioner will be given an
`opportunity to address briefly, and in writing, the above issues including,
`inter alia, to explain its position on whether the Petition advances a claim
`construction that complies with Rule 42.104(b)(3) and whether the Petition
`meets the burden at this stage in setting forth the priority dates of the relied-
`upon references, particularly the Forstein reference. We emphasized during
`the conference call, and do so again here, that Petitioner’s Reply should
`focus on the sufficiency of the Petition—on the record as it is—in justifying
`institution of trial. Patent Owner is also permitted a brief written response to
`Petitioner’s authorized Reply. Neither party is permitted to submit new
`evidence with the Reply or Sur-Reply.
`The authorized Reply and Sur-Reply, along with the argument and
`evidence addressed in the Petition and Patent Owner’s Preliminary Response
`will comprise the full record of points raised by the parties that the Board
`will consider in deciding whether inter partes review will be instituted.
`Contentions made by the parties during the November 14 conference, except
`
`
`2 On the filing of multiple petitions, we accept Petitioner’s representation
`that the petitions were filed either before or without Petitioner’s awareness
`of more recent guidance from the Office, which indicates that an explanation
`should be provided from Petitioner (in the Petition itself, or a separate paper)
`on why multiple, parallel petitions are necessary. See Office Trial Practice
`Guide July 2019 Update referenced at 84 Fed. Reg. 33,925 (July 16, 2019),
`at 26–28 (citing 35 U.S.C. § 316(b)).
`
`3
`
`
`
`

`

`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`
`to the extent addressed in the written briefing, will not be considered for
`purposes of the Board deciding if institution is appropriate.
`
`It is
`ORDERED that Petitioner’s request to file a Reply to the Patent
`Owner’s Preliminary Response is granted as provided above;
`FURTHER ORDERED that Petitioner is authorized to file, on or
`before November 21, 2019, a Reply in IPR2019–01331, IPR2019–01332,
`and IPR2019–01333, and each of Petitioner’s Replies shall be limited to five
`(5) pages;
`FURTHER ORDERED that Patent Owner is authorized to file, on or
`before December 3, 2019, a Sur-Reply to Petitioner’s Reply in IPR2019–
`01331, IPR2019–01332, and IPR2019–01333, and any such Sur-Reply shall
`be limited to five (5) pages.
`
`
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`
`FOR PETITIONER:
`Jeff E. Schwartz
`Ryan N. Miller
`FOX ROTHSCHILD LLP
`jeschwartz@foxrothschild.com
`rmiller@foxrothschild.com
`ipdocket@foxrothschild.com
`
`
`FOR PATENT OWNER:
`Michael R. Fleming
`H. Annita Zhong
`Andrew E. Krause
`IRELL & MANELLA LLP
`mfleming@irell.com
`hzhong@irell.com
`akrause@irell.com
`
`
`
`5
`
`

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