`Tel: 571-272-7822
`
`
`
`
`Paper: 69
`Entered: March 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`SLAYBACK PHARMA LLC,
`Petitioner,
`v.
`EYE THERAPIES, LLC,
`Patent Owner.
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`
`Before TINA E. HULSE, ROBERT A. POLLOCK, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`
`
`
`On February 27, 2023, oral argument was held in this proceeding. After the
`hearing, the panel has decided further briefing would be helpful on the following
`issues:
`
`1. Should the preamble of the claims, “A method for reducing eye
`redness,” be construed as limited to a “statement of the intentional
`purpose for which the method must be performed,” see Jansen v.
`Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003), and, if
`so, what impact does that construction have on inherent anticipation?
`2. What impact does the transitional phrase “consisting essentially of”
`have on the claims? Is there a temporal aspect to the term (e.g., for
`drugs that are administered before or after brimonidine, but not
`together)? Is there an intent aspect to the term (e.g., for drugs that
`are administered for a different purpose)?
`In addition to the claim construction issues above, the parties may address
`the impact of either or both of these issues on the substantive grounds of this
`proceeding. However, no additional evidence shall be permitted without prior
`authorization from the Board.
`
`ORDER
`
`Accordingly, it is
`ORDERED that the parties shall file simultaneous opening briefs on the
`issues set forth in this Order by no later than 5 p.m. ET on March 20, 2023;
`FURTHER ORDERED that the opening briefs shall be no longer than 15
`pages;
`FURTHER ORDERED that the parties may file simultaneous responsive
`briefs by no later than 5 p.m. ET on March 27, 2023;
`FURTHER ORDERED that the responsive briefs shall be no longer than 10
`
`
`
`1
`
`
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`pages; and
`FURTHER ORDERED that no additional evidence shall be permitted with
`any briefing without prior authorization from the Board.
`
`
`
`FOR PETITIONER:
`
`Linnea P. Cipriano
`Louis H. Weinstein
`Patrick G. Pollard
`WINDELS MARX LANE & MITTENDORF, LLP
`lcipriano@goodwinlaw.com
`lweinstein@windelsmarx.com
`ppollard@windelsmarx.com
`
`
`FOR PATENT OWNER:
`
`Bryan C. Diner
`Justin J. Hasford
`Caitlin E. O’Connell
`Christina Ji-Hye Yang
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`bryan.diner@finnegan.com
`justin.hasford@finnegan.com
`caitlin.o’connell@finnegan.com
`christina.yang@finnegan.com
`
`
`
`2
`
`
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