Granting Leave to File Reply to Patent Owner Preliminary Response IPR2014-00360


Takeaway: Additional briefing may be allowed to address alleged factual inaccuracies in a patent owner’s preliminary response.

In its Order, the Board granted Petitioner’s request to file a reply to Patent Owner’s Preliminary Response to address an alleged time bar under 35 U.S.C. § 315(b).

Patent Owner, in its Preliminary Response, asserted that Petitioner was barred under § 315(b) because it was served with a complaint alleging infringement of the ’216 patent more than one year before the petition was filed.  In particular, Patent Owner alleged that Petitioner was “served” with a relevant complaint on January 9, 2013 “when Patent Owner served a motion for leave to file a second amended complaint (Ex. 2004) that included, as an exhibit, a copy of the second amended complaint, which Patent Owner filed with the district court on January 17, 2013.”

Petitioner requested additional briefing, arguing that Patent Owner’s Preliminary Response contained factual inaccuracies relevant to the time bar.

The Board granted Petitioner’s request, authorizing the filing of a five page reply to address when Petitioner was “served with a complaint” alleging infringement of the ’216 patent. The Board also authorized Patent Owner to file a five page sur-reply addressing issues raised in Petitioner’s reply.

The Board directed the parties’ attention to Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 20 (PTAB Jan. 30, 2013), regarding the meaning of “served” in the context of § 315(b).  In addition, the Board instructed the parties to submit evidence, and not testimony, with their briefs.

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., IPR2014-00360
Paper 9: Order on Conduct of the Proceeding

Dated: May 8, 2014

Patent 8,329,216 B2
Before: Toni R. Scheiner, Francisco C. Prats, and Jacqueline Wright Bonilla
Written by: Bonilla
Related Proceeding: IPR2014-00361