`Date Filed: October 28, 2014
`
`Filed On Behalf Of:
`
`Novartis AG and LTS Lohmann Therapie-Systeme AG
`
`By:
`
`Raymond R. Mandra
`ExelonPatchIPR@fchs.com
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NOVEN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`NOVARTIS AG AND LTS LOHMANN THERAPIE-SYSTEME AG,
`Patent Owners
`
`Inter Partes Review No. 2014-00550
`
`U.S. Patent 6,335,031
`
`PATENT OWNERS’ LIST OF PROPOSED MOTIONS
`
`
`
`Pursuant to the Decision Instituting Trial (Paper 10) and the Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14, 2012), Patent
`
`Owners Novartis AG and LTS Lohmann Therapie-Systeme AG (collectively,
`
`“Novartis”) submit the following list of proposed motions they may file during the
`
`trial. This list is provided without prejudice to Novartis’s right to seek
`
`authorization to file additional motions or to decide not to file the motions listed.
`
`1. Motion for Charlotte C. Jacobsen to appear pro hac vice.
`
`2. Motion to modify Due Date 1 as set forth in the October 14, 2014
`
`Scheduling Order (Paper 11), if necessary in view of the parties’ mutual
`
`agreement to modify Due Dates 1-3, discussed below, and any motion
`
`deemed necessary to timely obtain cross-examination testimony of
`
`Petitioner’s experts or exclude the testimony of Petitioner’s experts if they
`
`are not reasonably made available for deposition in the United States.
`
`3. Motion for discovery regarding attempts by Noven Pharmaceuticals Inc. and
`
`Hisamitsu Pharmaceutical Co., Inc. to design around the invention of U.S.
`
`Patent 6,335,031 (the “’031 Patent”). This discovery would be in the nature
`
`of requests for admissions, request for production of documents and any
`
`other appropriate means of discovery.
`
`1
`
`
`
`4. Novartis may seek authorization at a later date to file one or more motions
`
`requesting discovery related to factual issues that may be raised by Petitioner
`
`during this inter partes review proceeding.
`
`5. Novartis may seek authorization at a later date to file a Motion to Seal,
`
`containing a proposed protective order, in the event that Novartis determines
`
`that it intends to rely upon confidential information during this inter partes
`
`review proceeding. Any such motion may be accompanied by, as described
`
`at 77 Fed. Reg. 48631, (a) a request to return the confidential material
`
`should the motion to seal be denied as well as (b) a redacted version of the
`
`material accompanied with a contingent motion to rely on the material as
`
`redacted should the motion to seal be denied.
`
`Additionally, Novartis reserves its right to file motions that are automatically
`
`authorized by the Board, including a motion to exclude evidence and a motion for
`
`observation on cross-examination.
`
`At the initial scheduling conference, Novartis also wishes to discuss the
`
`following issue.
`
`1. The parties have mutually agreed on a no earlier than January 2, 2015 start
`
`date for the depositions of Petitioner’s declarants, and to the following
`
`modifications of Due Dates 1-3, as set forth in the October 14, 2014
`
`Scheduling Order:
`
`2
`
`
`
`a. DUE DATE 1: Change from December 23, 2014 to January 20, 2015.
`
`b. DUE DATE 2: Change from March 3, 2015 to March 31, 2015.
`
`c. DUE DATE 3: Eliminate Due Date 3. Novartis does not intend to
`
`request to file a motion to amend the challenged claims of the ’031
`
`Patent in this proceeding.
`
`Dated: October 28, 2014
`
`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
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing Patent Owner’s List of Proposed
`
`Motions was served on October 28, 2014 by causing it to be sent by email to
`
`counsel for Petitioner at the following email addresses:
`
`Steven J. Lee (slee@kenyon.com)
`
`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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