`Date Filed: October 28, 2014
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`Filed On Behalf Of:
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`Novartis AG and LTS Lohmann Therapie-Systeme AG
`
`By:
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`Raymond R. Mandra
`ExelonPatchIPR@fchs.com
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NOVEN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
`
`Inter Partes Review No. 2014-00549
`
`U.S. Patent 6,316,023
`
`PATENT OWNERS’ LIST OF PROPOSED MOTIONS
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`
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`Pursuant to the Decision Instituting Trial (Paper 10) and the Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14, 2012), Patent
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`Owners Novartis AG and LTS Lohmann Therapie-Systeme AG (collectively,
`
`“Novartis”) submit the following list of proposed motions they may file during the
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`trial. This list is provided without prejudice to Novartis’s right to seek
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`authorization to file additional motions or to decide not to file the motions listed.
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`1. Motion for Charlotte C. Jacobsen to appear pro hac vice.
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`2. Motion to modify Due Date 1 as set forth in the October 14, 2014
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`Scheduling Order (Paper 11), if necessary in view of the parties’ mutual
`
`agreement to modify Due Dates 1-3, discussed below, and any motion
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`deemed necessary to timely obtain cross-examination testimony of
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`Petitioner’s experts or exclude the testimony of Petitioner’s experts if they
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`are not reasonably made available for deposition in the United States.
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`3. Motion for discovery regarding attempts by Noven Pharmaceuticals Inc. and
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`Hisamitsu Pharmaceutical Co., Inc. to design around the invention of U.S.
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`Patent 6,316,023 (the “’023 Patent”). This discovery would be in the nature
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`of requests for admissions, request for production of documents and any
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`other appropriate means of discovery.
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`1
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`4. Novartis may seek authorization at a later date to file one or more motions
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`requesting discovery related to factual issues that may be raised by Petitioner
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`during this inter partes review proceeding.
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`5. Novartis may seek authorization at a later date to file a Motion to Seal,
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`containing a proposed protective order, in the event that Novartis determines
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`that it intends to rely upon confidential information during this inter partes
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`review proceeding. Any such motion may be accompanied by, as described
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`at 77 Fed. Reg. 48631, (a) a request to return the confidential material
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`should the motion to seal be denied as well as (b) a redacted version of the
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`material accompanied with a contingent motion to rely on the material as
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`redacted should the motion to seal be denied.
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`Additionally, Novartis reserves its right to file motions that are automatically
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`authorized by the Board, including a motion to exclude evidence and a motion for
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`observation on cross-examination.
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`At the initial scheduling conference, Novartis also wishes to discuss the
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`following issue.
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`1. The parties have mutually agreed on a no earlier than January 2, 2015 start
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`date for the depositions of Petitioner’s declarants, and to the following
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`modifications of Due Dates 1-3, as set forth in the October 14, 2014
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`Scheduling Order:
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`2
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`
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`a. DUE DATE 1: Change from December 23, 2014 to January 20, 2015.
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`b. DUE DATE 2: Change from March 3, 2015 to March 31, 2015.
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`c. DUE DATE 3: Eliminate Due Date 3. Novartis does not intend to
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`request to file a motion to amend the challenged claims of the ’023
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`Patent in this proceeding.
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`Dated: October 28, 2014
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`Respectfully submitted,
`
`/Raymond R. Mandra/
`Raymond R. Mandra
`Registration No. 34,382
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the Patent Owner’s List of Proposed Motions was
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`served on October 28, 2014 by causing it to be sent by email to counsel for
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`Petitioner at the following email addresses:
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`Steven J. Lee (slee@kenyon.com)
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`Michael K. Levy (mlevy@kenyon.com)
`
`Dated: October 28, 2014
`
`/Raymond R. Mandra/
`Raymond R. Mandra
`Registration No. 34,382
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`4
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