`
`Paper: 17
`Entered: May 1, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KVK-TECH, INC.
`FLAT LINE CAPITAL, LLC,
`Petitioner,
`
`v.
`
`SILVERGATE PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case PGR2017-00039
`Patent 9,463,183
`
`____________
`
`Before GRACE KARAFFA OBERMANN, RAMA G. ELLURU,
`and MICHELLE N. ANKENBRAND,
`
`Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`PGR2017-00039
`Patent 9,463,183
`
`
`On July 10, 2017, Petitioner filed a Petition (Paper 1) requesting a
`post grant review of claims 1–13 of U.S. Patent No. 9,463,183 (“the ’183
`patent”). The Petition asserted three grounds of unpatentability against
`claims 1–13 of the ’183 patent: (1) lack of enablement under 35 U.S.C.
`§ 112; (2) lack of written description support under 35 U.S.C. § 112; and (3)
`obviousness under 35 U.S.C. § 103. Paper 1, 4.
`On February 6, 2018, we entered a decision instituting a post grant
`review of all challenged claims (that is, claims 1–13) but limited the
`proceeding to the ground based on obviousness under 35 U.S.C. § 103.
`Paper 8, 20. We specifically declined to institute review based on the two
`grounds of unpatentability asserted under 35 U.S.C. § 112 after determining
`that the Petition and evidence cited therein did not demonstrate that it was
`more likely than not that Petitioner would prevail in showing that the
`challenged claims were unpatentable on those grounds. Id. at 8–15.
`On April 16, 2018, the parties filed a Joint Motion for Adverse
`Judgment against Petitioner based on abandonment of the contest under
`37 C.F.R. § 42.73(b)(4). Paper 16 (“Motion”). On April 24, 2018, the
`Supreme Court held that a final written decision1 under 35 U.S.C. § 318(a)
`must decide the patentability of all claims challenged in the petition. SAS
`Inst., Inc. v. Iancu, No. 16-969, 2018 WL 1914661, at *10 (U.S. Apr. 24,
`2018). We modify our institution decision (Paper 8) to institute on all of the
`challenged claims and all of the grounds presented in the Petition (Paper 1).
`On April 30, 2018, a telephone conference was held among counsel
`for the parties and Judges Obermann, Elluru, and Ankenbrand. During the
`
`1 An adverse judgment entered under 37 C.F.R. § 42.73(b)(4) constitutes a
`final written decision under 35 U.S.C. § 318(a).
`
`2
`
`
`
`PGR2017-00039
`Patent 9,463,183
`
`call, counsel for Petitioner agreed to notify counsel for Patent Owner, by
`May 5, 2018, whether Petitioner will consent to the filing of a Revised Joint
`Motion for Adverse Judgment that is directed to all claims and all grounds
`presented in the Petition. Counsel for the parties agreed to file, and the
`Board authorized, a Revised Joint Motion for Adverse Judgment, due
`May 7, 2018, in the event Petitioner provides its consent.
`As an alternative, the Board authorized the parties to file, by May 7,
`2018, a Joint Motion to Limit the Petition by removing the two grounds
`asserted under 35 U.S.C. § 112 against claims 1–13. See, e.g., Apotex Inc.,
`v. OSI Pharms., Inc., Case IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19)
`(granting, after institution, a joint motion to limit the petition by removing a
`patent claim that was included for trial in the institution decision). Any Joint
`Motion to Limit the Petition shall indicate whether the parties continue to
`consent to entry of adverse judgment as advanced in the Motion filed
`April 16, 2018.
`In the event that the parties are unable to reach an agreement to file a
`Revised Joint Motion for Adverse Judgment or a Joint Motion to Limit the
`Petition as authorized in this Order, the parties shall confer to determine
`whether any schedule changes are needed and contact the Board by May 7,
`2018, to request a telephone conference to discuss those changes.
`
`It is
`ORDERED that we modify our institution decision, which we issued
`pursuant to 35 U.S.C. § 314(a), to include review of all challenged claims
`and all grounds presented in the Petition;
`FURTHER ORDERED that we authorize the parties to file a Revised
`Joint Motion for Adverse Judgment by May 7, 2018;
`
`3
`
`
`
`PGR2017-00039
`Patent 9,463,183
`
`
`FURTHER ORDERED that we authorize the parties to file, as an
`alternative, a Joint Motion to Limit the Petition by May 7, 2018;
`FURTHER ORDERED that any Joint Motion to Limit the Petition
`filed pursuant to this Order shall indicate whether the parties continue to
`consent to entry of adverse judgment as advanced in the Motion filed
`April 16, 2018; and
`FURTHER ORDERED that, in the event that the parties are unable to
`reach an agreement to file a Revised Joint Motion for Adverse Judgment or a
`Joint Motion to Limit the Petition in accordance with this Order, the parties
`shall confer to determine whether schedule changes are needed and contact
`the Board by May 7, 2018, to request a telephone conference to discuss
`those changes.
`
`PETITIONER:
`Zachary Silbersher
`Gaston Kroub
`Kroub, Silbersher & Kolmykov PLLC
`zsilbersher@kskiplaw.com
`gkroub@kskiplaw.com
`
`PATENT OWNER:
`Jeffrey Guise
`Richard Torczon
`Wendy Devine
`Clark Lin
`Wilson Sonsini Goodrich & Rosati PC
`jguise@wsgr.com
`rtorczon@wsgr.com
`wdevine@wsgr.com
`clin@wsgr.com
`
`4
`
`
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