throbber
Trials@uspto.gov
`571.272.7822
`
` Paper No. 33
`
` Filed: October 31, 2018
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`Petitioner,
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`Case PGR2018-00001
`Patent 9,539,268 B2
`____________
`
`Before TONI R. SCHEINER, GRACE KARAFFA OBERMANN, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Request for Authorization to File a Sur-Reply
`37 C.F.R. §§ 42.5(a), 42.24(c)(1)
`
`
`
`
`
`
`
`

`

`PGR2018-00001
`Patent 9,539,268 B2
`
`
`
`
`
`
` A
`
` teleconference was held on October 30, 2018, to discuss Patent
`
`Owner’s request for authorization to file a sur-reply in this proceeding. The
`
`teleconference was attended by Patent Owner’s counsel (Messrs. R. Parrish
`
`Freeman and Brent A. Johnson), Petitioner’s counsel (Messrs. Bruce C.
`
`Haas and Daniel J. Minion), and the panel of judges currently assigned to the
`
`case (Judges Scheiner, Obermann, and Snedden). Neither party retained a
`
`court reporter. Judge Obermann explained, with no objection from either
`
`party, that this Order shall constitute the record of the call.
`
`The Board recently issued guidance in the form of a “Trial Practice
`
`Guide Update,” dated August 2018 (“Practice Guide Update”). See 83 Fed.
`
`Reg. 38,989 (Aug. 13, 2018) (notifying the public of the updated “Practice
`
`Guide” and its accessibility through the USPTO website:
`
`https://go.usa.gov/xU7GP). Patent Owner pointed out that, pursuant to that
`
`guidance, sur-replies presently are afforded as a matter of course in our
`
`administrative proceedings. See id. at 14. Given that aspect of current
`
`Board practice, Patent Owner requested, and Petitioner did not oppose, an
`
`opportunity to file a sur-reply in place of observations in this proceeding.
`
`Accordingly, during the teleconference, we granted Patent Owner’s
`
`unopposed request to file a sur-reply that conforms to the word limit
`
`applicable to reply briefs; namely, the 5,600 word count. See 37 C.F.R.
`
`42.24(c)(1) (applicable word count).
`
`A question arose, however, surrounding a document that Patent
`
`Owner previously sought to introduce, without success, during the
`
`deposition of Dr. William Wargin taken in this action on or about
`
`2
`
`

`

`PGR2018-00001
`Patent 9,539,268 B2
`
`
`October 25, 2018. See Paper 32 (Notice of Deposition, setting date for
`
`Dr. Wargin’s deposition as October 25, 2018). Based on the parties’
`
`characterizations of that document during the teleconference, we refer to it
`
`herein as “the pK Values Excel Spreadsheet.” Petitioner objected to any
`
`intention on Patent Owner’s part to submit with its sur-reply any new
`
`evidence, including the pK Values Excel Spreadsheet.
`
`Upon questioning, Patent Owner acknowledged that Dr. Wargin relied
`
`on the pK Values Excel Spreadsheet in preparing his declaration (Ex. 2017),
`
`which was filed in support of Patent Owner’s Response (Paper 22) on
`
`August 1, 2018. We questioned why Patent Owner should be allowed to
`
`submit the pK Values Excel Spreadsheet with the sur-reply, given that the
`
`document was available for filing with Patent Owner’s Response. We
`
`further observed that the Practice Guide Update discourages the filing of
`
`evidence in support of a responsive brief, where the evidence could, or
`
`properly should, have been presented earlier in the proceeding. See Practice
`
`Guide Update, 14 (a “[p]etitioner may not submit new evidence or argument
`
`in reply that it could have presented earlier”). Toward the end of this
`
`discussion, Patent Owner’s counsel stated, “This is not a hill I want to die
`
`on” and, thereafter, agreed that the pK Values Excel Spreadsheet would not
`
`be filed as an exhibit in support of the sur-reply.
`
`The parties further agreed to stipulate to the terms of an Amended
`
`Scheduling Order that will accommodate the filing of the sur-reply and
`
`remove (from Due Dates 4 and 5) the filings pertaining to observations,
`
`without any changes to Due Dates 6 and 7. See Paper 18 (Scheduling
`
`Order). The Amended Scheduling Order shall be filed jointly by the parties
`
`at their earliest convenience. The parties were invited to contact the Board
`
`3
`
`

`

`PGR2018-00001
`Patent 9,539,268 B2
`
`
`to request another telephone conference, in the event they are unable to
`
`agree upon the terms of an Amended Scheduling Order.
`
`
`
`
`
`ORDER
`
`It is
`
`ORDERED that Patent Owner’s request for authorization to file a sur-
`
`reply is granted;
`
`FURTHER ORDERED that the sur-reply shall comply with the 5,600
`
`word count limit applicable to reply briefs;
`
`FURTHER ORDERED that the sur-reply shall not be accompanied by
`
`new evidence, including the pK Values Excel Spreadsheet discussed herein;
`
`FUTHER ORDERED that the parties shall stipulate to the terms of an
`
`Amended Scheduling Order that accommodates the filing of the sur-reply
`
`and removes (from Due Dates 4 and 5) the filings pertaining to observations,
`
`without any changes to Due Dates 6 and 7;
`
`FURTHER ORDERED that the Amended Scheduling Order shall be
`
`filed jointly by the parties at their earliest convenience; and
`
`FURTHER ORDERED that the parties should contact the Board to
`
`request another telephone conference, in the event they are unable to agree
`
`upon the terms of an Amended Scheduling Order.
`
`.
`
`
`
`
`
`
`
`
`
`4
`
`

`

`PGR2018-00001
`Patent 9,539,268 B2
`
`
`
`For PETITIONER:
`
`Bruce Haas
`grunenthalpgr@fchs.com
`
`Stephen Yam
`syam@fchs.com
`
`
`For PATENT OWNER:
`
`Brent Johnson
`bjohnson@mabr.com
`
`Parrish Freeman
`pfreeman@mabr.com
`
`
`
`
`
`
`5
`
`

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