`571-272-7822 Entered: September 24, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ETON PHARMACEUTICALS, INC.,
`Petitioner
`v.
`EXELA PHARMA SCIENCES, LLC,
`Patent Owner
`____________
`
`PGR2020-00064
`Patent US 10,478,453 B1
`____________
`
`
`
`Before ULRIKE W. JENKS, SUSAN L. C. MITCHELL and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. §§ 42.5; 42.208(c)
`
`
`
`
`
`
`
`
`PGR2020-00063
`Patent US 10,478,453 B1
`
`
`A conference call was held on September 21, 2020, between counsel
`for the respective parties and Judges Jenks, Mitchell, and Paulraj. The
`purpose of the call was to discuss Petitioner’s request to file a reply to Patent
`Owner’s preliminary response. In the conference call, we authorized
`Petitioner to file a 6-page reply due September 28, 2020 and Patent Owner
`may, if necessary, file a 6-page sur-reply due October 5, 2020.
`Under 37 C.F.R. § 42.208(c), Petitioner “may seek leave to file a
`reply to the preliminary response in accordance with §§ 42.23 and 42.24(c),”
`but “[a]ny such request must make a showing of good cause.” Here,
`Petitioner has shown good cause. On the facts in this case, we determine that
`the Board would benefit from additional briefing.
`In particular, Petitioner would like to address arguments presented in
`Patent Owner’s preliminary response citing certain alleged deficiencies in
`the petition. In addition, Petitioner asserts that Patent Owner’s argument in a
`related proceeding is inconsistent with arguments made during the
`prosecution leading to the patent at issue in the present proceeding. At this
`stage, we agree with Petitioner that additional briefing would clarify the
`record with respect to the assertions made in Patent Owner’s preliminary
`response, which would allow the Board to make an informed determination
`on the issues.
`For the reasons given, it is:
`ORDERED that Petitioner is authorized to submit a 6-page reply no
`later than September 28, 2020;
`FURTHER ORDERED that Patent Owner is authorized to submit a
`6-page sur-reply no later than October 5, 2020, responsive to Petitioner’s
`reply.
`
`2
`
`
`
`PGR2020-00063
`Patent US 10,478,453 B1
`
`PETITIONER:
`Ralph J. Gabric
`Eugene Goryunov
`Judy K. He
`Jeff Wolfson
`HAYNES AND BOONE LLP
`Email: ralph.gabric.ipr@haynesboone.com
`Email: eugene.goryunov.ipr@haynesboone.com
`Email: judy.he.ipr@haynesboone.com
`Email: jeff.wolfson.ipr@haynesboone.com
`
`PATENT OWNER:
`Dorothy P. Whelan
`Alana Mannige
`FISH & RICHARDSON P.C.
`whelan@fr.com
`mannige@fr.com
`
`3
`
`
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