From:
`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Petravick, Meredith; Parvis, Barbara; Cotta, David
`Trials
`FW: PGR2021-00015, -00016, -00017, -00018, -00020, -00021
`Tuesday, April 13, 2021 8:43:12 AM
`
`Panel, please see below.
`
`Thanks
`Eric
`
`From: Ritchie, Thomas W. <twritchie@jonesday.com>
`Sent: Tuesday, April 13, 2021 7:47 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Rich Coller <RCOLLER@sternekessler.com>; Jon Wright <JWRIGHT@sternekessler.com>; Richard
`M. Bemben <RBEMBEN@sternekessler.com>; Christian A. Camarce
`<CCAMARCE@sternekessler.com>; Lestin Kenton <LKENTON@sternekessler.com>; PTAB Account
`<PTAB@sternekessler.com>; Insogna, Anthony M. <aminsogna@jonesday.com>; Oblon, Michael A.
`<moblon@jonesday.com>; Stitt, Tracy A. <tastitt@JonesDay.com>; Swize, Jennifer L.
`<jswize@JonesDay.com>
`Subject: PGR2021-00015, -00016, -00017, -00018, -00020, -00021
`
`Re: Allergan, Inc. v. BTL Medical Technologies s.r.o,
` PGR2021-00015, -00016, -00017, -00018, -00020, -00021
`
`To the Board:
`
`Petitioners request leave to Reply to Patent Owner’s Preliminary Responses and Patent Owner’s
`Response to Petitioners’ Notice Ranking Petitions in the above matters. Petitioners seek to address
`Patent Owner’s responses regarding whether the Board should exercise its discretion to deny
`institution under 35 U.S.C. §§ 314(a), 325(d).
`
`As background and to further clarify this request, Petitioners filed 12 petitions on December 14,
`2020 in matters PGR2021-00015, -00016, -00017, -00018, -00020, -00021, -00022, -00023, -00024,
`-00025; IPR2021-00296, -00312. The Board authorized Patent Owner to file preliminary responses
`in stages with the first 6 due March 22, 2021, and Patent Owner has now filed responses in those 6
`proceedings (i.e., PGR2021-00015, -00016, -00017, -00018, -00020, -00021). The remaining 6 are
`not due until April 13, April 26, and April 28, 2021.
`
`In these first 6 proceedings, Petitioners seek to reply to Patent Owner’s application of the Fintiv
`factors and its citations to other PTAB Institution Decisions, several of which were issued after the
`filing date of the petitions. Good cause exists for this request as specific issues raised by Patent
`Owner were not reasonably foreseeable and could not have been addressed in the Petitions. Patent
`Owner asks that the PTAB deny institution based on a co-pending ITC investigation (337-TA-1219),
`but recently, the ITC ALJ indicated he is changing the hearing schedule, the ITC Complainant changed
`the claims it is asserting and indicated it will do so again, and the ITC issued an opinion in another
`
`

`

`investigation (337-TA-1228) that is relevant to the Fintiv factor analysis. Additionally, Patent Owner
`has taken positions during prosecution of related pending applications that are germane to policy
`considerations associated with Fintiv. Moreover, in support of the Patent Owner’s argument for
`Fintiv factor 6, the Patent Owner’s preliminary responses rely upon new extrinsic evidence, make
`arguments that are inconsistent with claim language, or raise evidentiary challenges that Petitioners
`have not had the opportunity to address. In the replies, Petitioner will explain why Patent Owner’s
`weightings of the Fintiv factors are incorrect. Similarly, the Patent Owner’s response to the Ranking
`Notice also relies on citations to other PTAB Institution Decisions that Petitioners believe to be
`distinguishable. Petitioners seek a reply to address the Patent Owner’s assertions that the petitions
`are duplicative or unnecessary.
`
`Petitioners request to file a single, omnibus reply by April 28, 2021, not to exceed 20 pages, that
`addresses the Fintiv factors as indicated above and the Responses to Notice Ranking Petitions for
`PGR2021-00015, -00016, -00017, -00018, -00020, -00021. Patent Owner can then submit a single,
`omnibus sur-reply by May 7, 2021, with the same page limit.
`
`The parties have conferred regarding this request and Patent Owner’s Response is included below.
`The only dispute between the parties is the number of pages available for an omnibus reply and sur-
`reply, whether all Fintiv factors or only some can be addressed, and whether the arguments in the
`Responses to Notice Ranking Petitions can be addressed. The parties are available for a conference
`call if the Board believes it to be necessary.
`
`PATENT OWNER’S RESPONSE
`
`Patent Owner agrees that additional Patent Owner Preliminary Responses briefing would benefit the
`Board, but only on Fintiv factors 2-4. These are the factors that have been impacted by recent
`developments in the parallel ITC proceeding involving the challenged patents.
`
`Patent Owner believes any additional briefing should be limited to addressing how the ITC
`developments that have occurred after Petitioner filed its Petitions affect factors 2-4. In particular,
`Patent Owner does not agree that additional and unconstrained pre-trial briefing on Fintiv factor 6
`would benefit the Board. Far from showing good cause, Petitioner’s articulated reasons for seeking
`additional briefing on factor 6 amount to routine disagreement on the strength and merits of the
`proposed grounds. If trial is instituted, Petitioner will have full opportunity to address Patent
`Owner’s substantive arguments to the extent that they are raised in the POR. It can also, at trial,
`make and respond to evidentiary challenges.
`
`Patent Owner believes that a single omnibus 8-page reply and a single omnibus 8-page sur-reply
`would be sufficient to relay the new facts and any new and relevant PTAB case law, and to explain
`how they impact the Fintiv/discretionary institution calculus. Patent Owner believes that 20-page
`briefs are excessive and a waste of the parties and the Board’s resources.
`
`Patent Owner agrees with Petitioner’s proposed briefing schedule.
`
`Patent Owner opposes additional briefing on Petitioner’s Notice Ranking Petitions because
`
`

`

`Petitioner has not shown good cause.
`
`
`* * *
`
`
`Regards,
`Tom
`
`Thomas W. Ritchie
`Partner
`JONES DAY® - One Firm Worldwide®
`77 West Wacker Drive
`Chicago, IL 60601-1692
`Office +1.312.269.4003
`Mobile +1.847.477.5615
`twritchie@jonesday.com
`
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