`Tel: 571-272-7822
`
`
`
`Paper 9
`Entered: March 23, 2022
`
`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)
`IPR2022-00146 (Patent 9,259,425 B2)1
`____________
`
`
`Before JOHN G. NEW, TINA E. HULSE, and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses issues that are common to both cases. We therefore
`exercise our discretion and issue a single order that has been entered in each
`case. The parties may use this style caption when filing a single paper in
`multiple proceedings, provided that such caption includes a footnote
`attesting that “the identical paper is filed in each proceeding identified in the
`caption.”
`
`
`
`IPR2022-00142 (Patent 8,293,742 B2)
`IPR2022-00146 (Patent 9,259,425 B2)
`
`
`A conference call was held on March 22, 2022, among counsel for
`Petitioner, counsel for Patent Owner, and Judges New, Hulse, and Pollock.
`On March 15, 2022, Petitioner sent an email correspondence to the Board
`requesting authorization to file a Reply in both proceedings to address the Fintiv
`and 35 U.S.C. § 325(d) arguments made in Patent Owner’s Preliminary Response.
`See Ex. 3001. Patent Owner responded to Petitioner’s email, stating Patent Owner
`believed a Reply was not necessary, but that it would not oppose Petitioner’s
`request provided, among other things, the Reply was limited to addressing the
`Fintiv factors alone and that it be given an opportunity to file a Sur-reply. See id.
`During the call, Petitioner asserted that good cause exists for a Reply to
`respond to the Fintiv issues, because the Reply would address its Sotera-type
`stipulation filed after the Preliminary Response. Petitioner further asserted that it
`could not have foreseen Patent Owner’s complex arguments with respect to
`§ 325(d), and would like an opportunity to respond.
`Patent Owner states that it would agree to a Sur-reply with respect to the
`Fintiv issues, provided Petitioner did not use the Reply to address the substantive
`arguments on the merits (and that Patent Owner would be authorized to file a Sur-
`reply of the same length). Patent Owner did not agree, however, to a Sur-reply on
`the § 325(d) issues, because those issues were foreseeable and the Board is
`equipped to evaluate those issues without further briefing.
`Having considered the parties’ respective arguments, we find good cause
`exists for Petitioner to file a Reply and Patent Owner to file a Sur-reply on both the
`Fintiv and § 325(d) issues. The Sotera-type stipulation was filed in the district
`court case after the Preliminary Response was filed and is pertinent to Patent
`Owner’s Fintiv argument. And the panel may find the parties’ discussion of the
`
` 2
`
`
`
`
`
`
`
`IPR2022-00142 (Patent 8,293,742 B2)
`IPR2022-00146 (Patent 9,259,425 B2)
`
`§ 325(d) issues helpful, particularly in light of the dispositive nature of the issue
`presented.
`As such, we find good cause exists to grant Petitioner’s request for
`authorization to file a brief Reply to Patent Owner’s Preliminary Response.
`Petitioner’s Reply shall be no longer than seven pages and may address both the
`Fintiv and § 325(d) arguments made in the Preliminary Response. Patent Owner is
`also authorized to file a Sur-reply to the Reply of the same length. No further
`testimony or evidence shall be permitted in either paper (with the exception of the
`Sotera stipulation).
`Accordingly, it is
`ORDERED that Petitioner’s request for authorization to file a Reply to
`Patent Owner’s Preliminary Response in each proceeding is granted;
`FURTHER ORDERED that Petitioner may file a Reply no longer than seven
`pages by no later than Tuesday, March 29, 2022; and
`FURTHER ORDERED that Patent Owner may file a Sur-reply no longer
`than seven pages by no later than one calendar week after Petitioner files its Reply.
`
`
`
`
`
`
`
`
`
`
` 3
`
`
`
`
`
`
`
`
`
`IPR2022-00142 (Patent 8,293,742 B2)
`IPR2022-00146 (Patent 9,259,425 B2)
`
`PETITIONER:
`
`Louis Weinstein
`lweinstein@winddelsmarx.com
`
`Patrick Pollard
`ppollard@windelsmarx.com
`
`
`PATENT OWNER:
`
`Bryan Diner
`Bryan.diner@finnegan.com
`
`Justin Hasford
`Justin.hasford@finnegan.com
`
`Caitlin O’Connell
`Caitlin.o’connell@finnegan.com
`
`
`
` 4
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
