`571.272.7822
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` Paper No. 33
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` Filed: October 31, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GRÜNENTHAL GMBH,
`Petitioner,
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`v.
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`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`Case PGR2018-00001
`Patent 9,539,268 B2
`____________
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`Before TONI R. SCHEINER, GRACE KARAFFA OBERMANN, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
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`OBERMANN, Administrative Patent Judge.
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`ORDER
`Granting Patent Owner’s Request for Authorization to File a Sur-Reply
`37 C.F.R. §§ 42.5(a), 42.24(c)(1)
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`PGR2018-00001
`Patent 9,539,268 B2
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` A
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` teleconference was held on October 30, 2018, to discuss Patent
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`Owner’s request for authorization to file a sur-reply in this proceeding. The
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`teleconference was attended by Patent Owner’s counsel (Messrs. R. Parrish
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`Freeman and Brent A. Johnson), Petitioner’s counsel (Messrs. Bruce C.
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`Haas and Daniel J. Minion), and the panel of judges currently assigned to the
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`case (Judges Scheiner, Obermann, and Snedden). Neither party retained a
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`court reporter. Judge Obermann explained, with no objection from either
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`party, that this Order shall constitute the record of the call.
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`The Board recently issued guidance in the form of a “Trial Practice
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`Guide Update,” dated August 2018 (“Practice Guide Update”). See 83 Fed.
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`Reg. 38,989 (Aug. 13, 2018) (notifying the public of the updated “Practice
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`Guide” and its accessibility through the USPTO website:
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`https://go.usa.gov/xU7GP). Patent Owner pointed out that, pursuant to that
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`guidance, sur-replies presently are afforded as a matter of course in our
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`administrative proceedings. See id. at 14. Given that aspect of current
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`Board practice, Patent Owner requested, and Petitioner did not oppose, an
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`opportunity to file a sur-reply in place of observations in this proceeding.
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`Accordingly, during the teleconference, we granted Patent Owner’s
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`unopposed request to file a sur-reply that conforms to the word limit
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`applicable to reply briefs; namely, the 5,600 word count. See 37 C.F.R.
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`42.24(c)(1) (applicable word count).
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`A question arose, however, surrounding a document that Patent
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`Owner previously sought to introduce, without success, during the
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`deposition of Dr. William Wargin taken in this action on or about
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`2
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`PGR2018-00001
`Patent 9,539,268 B2
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`October 25, 2018. See Paper 32 (Notice of Deposition, setting date for
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`Dr. Wargin’s deposition as October 25, 2018). Based on the parties’
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`characterizations of that document during the teleconference, we refer to it
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`herein as “the pK Values Excel Spreadsheet.” Petitioner objected to any
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`intention on Patent Owner’s part to submit with its sur-reply any new
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`evidence, including the pK Values Excel Spreadsheet.
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`Upon questioning, Patent Owner acknowledged that Dr. Wargin relied
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`on the pK Values Excel Spreadsheet in preparing his declaration (Ex. 2017),
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`which was filed in support of Patent Owner’s Response (Paper 22) on
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`August 1, 2018. We questioned why Patent Owner should be allowed to
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`submit the pK Values Excel Spreadsheet with the sur-reply, given that the
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`document was available for filing with Patent Owner’s Response. We
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`further observed that the Practice Guide Update discourages the filing of
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`evidence in support of a responsive brief, where the evidence could, or
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`properly should, have been presented earlier in the proceeding. See Practice
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`Guide Update, 14 (a “[p]etitioner may not submit new evidence or argument
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`in reply that it could have presented earlier”). Toward the end of this
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`discussion, Patent Owner’s counsel stated, “This is not a hill I want to die
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`on” and, thereafter, agreed that the pK Values Excel Spreadsheet would not
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`be filed as an exhibit in support of the sur-reply.
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`The parties further agreed to stipulate to the terms of an Amended
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`Scheduling Order that will accommodate the filing of the sur-reply and
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`remove (from Due Dates 4 and 5) the filings pertaining to observations,
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`without any changes to Due Dates 6 and 7. See Paper 18 (Scheduling
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`Order). The Amended Scheduling Order shall be filed jointly by the parties
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`at their earliest convenience. The parties were invited to contact the Board
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`3
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`PGR2018-00001
`Patent 9,539,268 B2
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`to request another telephone conference, in the event they are unable to
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`agree upon the terms of an Amended Scheduling Order.
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`ORDER
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`It is
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`ORDERED that Patent Owner’s request for authorization to file a sur-
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`reply is granted;
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`FURTHER ORDERED that the sur-reply shall comply with the 5,600
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`word count limit applicable to reply briefs;
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`FURTHER ORDERED that the sur-reply shall not be accompanied by
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`new evidence, including the pK Values Excel Spreadsheet discussed herein;
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`FUTHER ORDERED that the parties shall stipulate to the terms of an
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`Amended Scheduling Order that accommodates the filing of the sur-reply
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`and removes (from Due Dates 4 and 5) the filings pertaining to observations,
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`without any changes to Due Dates 6 and 7;
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`FURTHER ORDERED that the Amended Scheduling Order shall be
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`filed jointly by the parties at their earliest convenience; and
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`FURTHER ORDERED that the parties should contact the Board to
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`request another telephone conference, in the event they are unable to agree
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`upon the terms of an Amended Scheduling Order.
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`4
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`PGR2018-00001
`Patent 9,539,268 B2
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`For PETITIONER:
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`Bruce Haas
`grunenthalpgr@fchs.com
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`Stephen Yam
`syam@fchs.com
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`For PATENT OWNER:
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`Brent Johnson
`bjohnson@mabr.com
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`Parrish Freeman
`pfreeman@mabr.com
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`5
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