`571-272-7822
`
`
`
`
`
`
`
`Paper 15
`Date: November 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Petitioner,
`
`
`v.
`
`
`PLEXXIKON INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00069
`Patent 9,844,539 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`PGR2018-00069
`Patent 9,844,539 B2
`
`In an email sent to the Board on November 12, 2018, counsel for
`Petitioner requested a conference call seeking authorization to file a reply to
`Patent Owner’s Preliminary Response (Paper 12, “Prelim. Resp.”) to address
`certain arguments made by Patent Owner. A conference call was held
`between counsel for the parties and the Board on November 16, 2018 to
`discuss Petitioner’s request.
`During the conference call, Petitioner argued that good cause exists to
`file the requested reply to address Patent Owner’s “new” argument that the
`written description requirement is satisfied by the disclosure of a “core
`structure” consisting of “a sulfonamide with its nitrogen adjacent to the
`fluorine in a fluorinated phenyl,” and a “uniform overall shape and size” of
`the claimed chemical compound, which are allegedly the “key features” of
`the claimed compounds. Patent Owner argued that briefing at the
`preliminary stage of a post-grant review is typically limited to a petition and
`patent owner preliminary response and that Petitioner is not entitled to a
`reply simply to respond to the merits of the Patent Owner’s Preliminary
`Response.
`Petitioner may seek authorization to file a reply to the preliminary
`response, but “must make a showing of good cause.” 37 C.F.R. § 42.108(c)
`(revised April 1, 2016). In consideration of the arguments advanced during
`the teleconference by both parties, we determine that good cause for
`authorization to file the requested reply has not been shown. There is no
`indication that the record lacks sufficient information hindering the panel’s
`ability to scrutinize Patent Owner’s contentions related to written description
`when determining whether the information presented in the petition would
`
`
`
`2
`
`
`
`PGR2018-00069
`Patent 9,844,539 B2
`
`demonstrate that it is more likely than not that at least 1 of the claims
`challenged in the petition is unpatentable. 35 U.S.C. § 324(a).
`Accordingly, it is hereby:
`ORDERED that Petitioner’s request to file a reply to Patent Owner’s
`Preliminary Response is denied.
`
`
`
`PETITIONER:
`
`Robert Underwood
`McDermott, Will & Emery LLP
`runderwood@mwe.com
`
`
`PATENT OWNER:
`
`Elizabeth Weiswasser
`Derek Walter
`Brian Chang
`Weil, Gotshal & Manges LLP
`elizabeth.weiswasser@weil.com
`derek.walter@weil.com
`brian.chang@weil.com
`
`
`
`3
`
`
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