Order Regarding Proposed Challenge to Scope of Reply IPR2013-00368, 371, 372


Takeaway: The Board may decline to rule on the propriety of Petitioner’s Reply until it issues its final written decision, at which point the Board may ignore the entirety of the Reply if any part of it exceeds its proper scope.

In its Order, the Board addressed multiple issues: it denied Patent Owner’s request to file a paper summarizing the allegedly improper scope Petitioner’s Reply; it granted Petitioner’s unopposed request to file Exhibit 1025 for the two out of three cases (IPR2013-00368 and IPR2013-00371) associated with the instant proceeding in which that exhibit had not yet been filed; and it authorized the parties to stipulate to extended deadlines for Due Dates 4 and 5.

The discussion in the Order primarily focused on Patent Owner’s request to file a challenge to Petitioner’s Reply on the grounds that it exceeded the proper scope of a reply.  Patent Owner argued that the Reply raised new issues and belatedly introduced new evidence.  In support, Patent Owner alleged that Exhibit 1068, introduced by Petitioner in its Reply, is a prior art reference that was known to Petitioner when it filed the petitions for the present cases.  Consequently, Patent Owner argued that Petitioner’s Reply exceeded its proper scope by introducing Exhibit 1068 for the first time.  Petitioner countered that Exhibit 1068 is within the proper scope of reply because it was using this exhibit to impeach the testimony of Patent Owner’s witness.

Patent Owner further requested that the Board rule on the propriety of Petitioner’s Reply immediately, rather than waiting until the final written decision to make its determination.  In response, Petitioner contended that the majority of the Board’s panels have deferred the question of reply scope to the final written decision, and that there was no reason to deviate from that practice in this proceeding.

The Board declined to rule on the scope of Petitioner’s Reply until its final written decision.  It cautioned Petitioner that, should the Board ultimately decide that the Reply exceeded its proper scope, the Board would ignore the Reply altogether in its final written decision, without distinguishing between proper and improper portions.

The Board also authorized the parties to stipulate to delayed deadlines for Due Dates 4 and 5 to accommodate the parties’ difficulty in reaching an agreement regarding deposition scheduling.  Finally, the Board took note of a dismissal in copending litigation Galderma Laboratories Inc. v. Amneal Pharmaceuticals LLC, et al., No. 1-11-cv-01106 (D.Del.).

Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc., IPR2013-00368; IPR2013-00371; IPR2013-00372
Paper 62: Order on Conduct of the Proceeding
Dated: June 5, 2014
Patent 8,206,740; 8,394,405; 8,394,406
Before: Lora M. Green, Scott E. Kamholz, and Georgianna W. Braden
Written By: Kamholz
Related Proceedings: Galderma Laboratories Inc. v. Amneal Pharmaceuticals, LLC, et al.,  No. 1-11-cv-01106 (D.Del.)