`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`NOVEN PHARMACEUTICALS, INC.,
`Petitioner
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`v.
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`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
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`___________________
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`Inter Partes Review No.: IPR2014-00549
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`U.S. Patent No. 6,316,023
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`PETITIONER’S MOTION TO CORRECT PETITION AND EXHIBITS
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`Petitioner Noven Pharmaceuticals, Inc. respectfully moves the Board to
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`correct certain clerical and typographic errors in its petition for inter partes review
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`(Paper 1), Exhibits 1010, 1011, 1018, 1020, and 1021 as set forth below.
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`On October 28, 2014, Patent Owners Novartis AG and LTS Lohmann
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`Therapie-Systeme AG (“Patent Owners”) served objections pursuant to 37 C.F.R.
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`§ 42.64(b)(1) to all of Petitioner’s exhibits except the challenged patent and its file
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`wrapper. Patent Owners’ objections included (i) general evidentiary objections
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`and (ii) specific objections due to the clerical and typographical errors addressed
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`herein. During the initial conference call with the Board, held on October 30,
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`2014, Petitioner sought guidance from the Board regarding responding to the
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`objections. The Board counseled that Petitioner may respond to Patent Owners’
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`objections by serving supplemental evidence and if the parties agree that the
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`supplemental evidence cures the alleged defect in the evidence, the parties were
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`directed to seek authorization to file a motion to correct the relevant exhibit(s) or
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`paper(s). Paper 14 at 4. On November 12, 2014, Pursuant to 37 C.F.R. §
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`42.64(b)(2), Petitioner provided a list of corrections to address Patent Owners’
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`specific objections and reserved the right to respond to Patent Owners’ general
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`objections should they file a motion to exclude under C.F.R. § 42.64(c). Patent
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`owners agreed that the proposed amendments corrected the clerical and
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`typographical errors in a communication dated November 19, 2014, and stated that
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`they will not oppose a motion to correct the clerical and typographical errors in an
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`email dated December 9, 2014. Petitioner sought permission to file this unopposed
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`motion, which was granted in an email from the Board on December 10. Petitioner
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`has provided this motion and the corrected petition and exhibits to Patent Owners,
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`and Patent Owners have stated that they do not oppose this motion. Patent
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`Owners, however, maintain all objections that are not specifically addressed below
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`in this motion.
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`By this motion, Petitioner seeks to correct the following clerical and
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`typographical errors:
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`Petition for Inter Partes Review of U.S. Patent 6,316,023 (Paper 1)
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`To address, in part, Patent Owners’ objections, Petitioner requests
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`permission to correct its Petition for Inter Partes Review of U.S. Patent 6, 316,023
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`with the following corrections to the List of Exhibits (Paper 1 at v-vi):
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`(1)
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`The list of exhibits on page v incorrectly refers to Ex. 1017 as “Ho-
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`Leung Fung, Chapter 7 – Chemical Kinetics and Drug Stability in MODERN
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`PHARMACEUTICS (G.S. Banker and C.T. Rhodes, eds.), Marcel Dekker, NY
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`(1978), pp. 227-62.” The correct citation is “Ho-Leung Fung, Chapter 7 –
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`Chemical Kinetics and Drug Stability in MODERN PHARMACEUTICS (G.S.
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`Banker and C.T. Rhodes, eds.), Marcel Dekker, NY (1979), pp. 227-62.”
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`(2)
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`The list of exhibits on page v incorrectly refers to Ex. 1018 as “Carey
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`& Sundberg, ADVANCED ORGANIC CHEMISTRY, 2nd ed. Part A: Structure
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`and Mechanism, Plenum Press, New York, 1984, pp. 652.” The correct citation is
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`“Carey & Sundberg, ADVANCED ORGANIC CHEMISTRY, Part A: Structure
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`and Mechanism, 3rd Edition (Plenum Press, NY), pp. 651-727 (1990).”
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`(3)
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`The list of exhibits on page vi incorrectly refers to Ex. 1022 as
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`“Linnell, R.H., The Oxidation of Nicotine. I. Kinetics of the Liquid Phase Reaction
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`Near Room Temperature. Tobacco Science, Vol. 4, pp. 89–90 (1960).” The
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`correct citation is “Linnell, R.H., The Oxidation of Nicotine. I. Kinetics of the
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`Liquid Phase Reaction Near Room Temperature. Tobacco Science, Vol. 4, pp. 89–
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`91 (1960).”
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`Exhibit 1010
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`To correct the following clerical error in paragraph 26 of Exhibit 1010
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`(Declaration of Agis Kydonieus, Ph.D), Petitioner provides Corrected Exhibit
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`1010, which now includes a Supplemental Declaration of Agis Kydonieus, Ph.D.
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`dated November 11, 2014, appended to the original Exhibit 1010, identifying the
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`following correction:
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`Page 15, paragraph 26: change “(Ex. 1012 at 1; Ex. 1014 at 3.)” to “(Ex.
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`1012 at 1; Ex. 1013 at 3.)”
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`See Corrected Ex. 1010 at 43-44.
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`Exhibit 1011
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`To correct the following typographical and clerical errors in paragraphs 9,
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`14, 31, and 48 of Exhibit 1011 (Declaration of Christian Schöneich, Ph.D.),
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`Petitioner provides Corrected Exhibit 1011, which now includes a Supplemental
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`Declaration of Christian Schöneich, Ph.D. dated November 11, 2014, appended to
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`the original Exhibit 1011, identifying the following corrections:
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`(1) On pages 4 (paragraph 9) and 13-14 (paragraph 31), Ex. 1018 is
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`incorrectly referred to as “Carey & Sundberg, ADVANCED ORGANIC
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`CHEMISTRY, 2nd ed. Part A: Structure and Mechanism, Plenum Press, New
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`York, 1984, pp. 652.” The correct language is “Carey & Sundberg, Advanced
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`Organic Chemistry, Part A: Structure and Mechanism, 3rd Edition (Plenum Press,
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`NY), pp. 651-727 (1990).”
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`(2) On pages 4-5 (paragraph 9) and 19 (paragraph 48), Ex. 1022 is
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`incorrectly referred to as “Linnell, R.H., The Oxidation of Nicotine. I. Kinetics of
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`the Liquid Phase Reaction Near Room Temperature. Tobacco Science, Vol. 4, pp.
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`89–90 (1960).” The correct language is “Linnell, R.H., The Oxidation of Nicotine.
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`I. Kinetics of the Liquid Phase Reaction Near Room Temperature. Tobacco
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`Science, Vol. 4, pp. 89–91 (1960).”
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`(3) On pages 4 (paragraph 9) and 8 (paragraph 14), Ex. 1017 is
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`incorrectly referred to as “Ho-Leung Fung, Chapter 7 – Chemical Kinetics and
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`Drug Stability in MODERN PHARMACEUTICS (G.S. Banker and C.T. Rhodes,
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`eds.), Marcel Dekker, NY (1978), pp. 227-62.” The correct language is “Ho-
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`Leung Fung, Chapter 7 – Chemical Kinetics and Drug Stability in MODERN
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`PHARMACEUTICS (G.S. Banker and C.T. Rhodes, eds.), Marcel Dekker, NY
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`(1979), pp. 227-62.”
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`See Corrected Ex. 1011 at 35-37.
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`Exhibit 1018
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`Patent Owners objected to Exhibit 1018, inter alia, because certain pages
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`have underlined text. While the text is not obscured, Petitioner provides a clean
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`replacement copy of Exhibit 1018 to address Patent Owners’ objection.
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`Exhibit 1020 and 1021
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`To address, in part, Patent Owner’s objections to Exhibits 1020 and 1021,
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`Petitioner is providing a replacement Exhibit 1020, which contains the correct
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`cover page, and a replacement Exhibit 1021 that has the cover pages for that 1954
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`journal article.
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`The above-listed corrections address clerical and typographical errors, and
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`do not affect the opinions and arguments set forth in the petition or expert
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`declarations.
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`Dated: December 31, 2014
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`Respectfully submitted,
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` /Steven J. Lee/
`Steven J. Lee (Reg. No. 31,272)
`Michael K. Levy (Reg. No. 40,699)
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
`Fax: 212-425-5288
`Counsel for Petitioner Noven
`Pharmaceuticals, Inc.
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`CERTIFICATE OF SERVICE
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`I certify that, on this 31st day of December, 2014, the foregoing Petitioner’s
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`Motion to Correct was served electronically on the Patent Owner using the
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`following address:
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`ExelonPatchIPR@fchs.com
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` /Michael K. Levy/
` Michael K. Levy
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