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`Filed on behalf of:
`Mylan Pharmaceuticals Inc.
`Joseph M. Reisman
`Jay R. Deshmukh
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (949) 760-9502
`Ph.: (949) 760-0404
`E-mail: BoxMylan@knobbe.com
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`By:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN 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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`Case No. IPR2015-00265
`Patent 6,316,023
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`PETITIONER’S MOTION TO CORRECT EXHIBITS
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`IPR2015-00265
`Mylan v. Novartis
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`Petitioner Mylan Pharmaceuticals Inc. (“Mylan”) respectfully moves the
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`Board for leave to submit corrected Exhibits 1010, 1011, 1018, 1020, and 1021,
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`and a Corrected Exhibit List, as set forth below.
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`BACKGROUND
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`Pending before the Board are Mylan’s Petition for Inter Partes Review
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`(Paper 1), and Motion for Joinder (Paper 3), both filed on November 13, 2014.
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`Mylan requested to join IPR2014-00549, an IPR filed by Noven Pharmaceuticals,
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`Inc. (“Noven”) on April 2, 2014, and instituted by the Board on October 14, 2014.
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`Mylan’s Petition challenges the same claims of U.S. Patent No. 6,316,023, and is
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`based on the same grounds, and the same combinations of prior art considered by
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`the Board in instituting trial in the Noven IPR. Patent Owners waived their
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`Preliminary Response in IPR2014-00549 on February 18, 2015.
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`On December 31, 2014, Noven filed a Petitioner’s Motion to Correct
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`Petition and Exhibits (IPR2014-00549, Paper 21), to correct clerical and
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`typographical errors in the Petition and the exhibits. Noven’s motion states that it
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`obtained authorization from the Board to file its motion and that Patent Owners did
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`not oppose the motion. (IPR2014-00549, Paper 21 at 2-3.)
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`Mylan requests leave to submit the same corrected exhibits submitted by
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`Noven: Exhibits 1010, 1011, 1018, 1020, and 1021. In Noven’s motion, it also
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`requested authorization to correct errors in the Exhibit List of the Petition; Noven
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`1
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`IPR2015-00265
`Mylan v. Novartis
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`never submitted a corrected Petition nor did Noven submit a corrected Exhibit List.
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`Later, on January 20, 2015, Noven submitted an Exhibit List reflecting the
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`requested corrections in a filing unrelated to its motion. Thus, Mylan also submits
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`herewith a Corrected Exhibit List, rather than submitting the entire Petition.
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`Mylan has provided the corrected exhibits and the Corrected Exhibit List to
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`Patent Owners, and in a communication dated February 19, 2015, Patent Owners
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`stated that they do not oppose a motion to correct the errors. Mylan sought Board
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`authorization to file this unopposed motion, which was granted in an email from
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`the Board on February 20, 2015.
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`CORRECTED DOCUMENTS
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`By this Motion, Mylan seeks to correct the following clerical and
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`typographical errors:
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`Exhibit List
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`In IPR2014-00549, Noven requested permission to correct errors in the
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`Exhibit List of its Petition. Mylan seeks to correct these same errors and does so
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`by submitting a corrected Exhibit List as a separately filed paper. The following
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`corrections have been made in Mylan’s Corrected Exhibit List:
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`(1) The Petition Exhibit List (page vi) 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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`2
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`IPR2015-00265
`Mylan v. Novartis
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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) The Petition Exhibit List (page vi) incorrectly refers to Ex. 1018 as
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`“Carey & Sundberg, ADVANCED ORGANIC CHEMISTRY, 2nd ed. Part A:
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`Structure and Mechanism, Plenum Press, New York, 1984, pp. 652.” The correct
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`citation is “Carey & Sundberg, ADVANCED ORGANIC CHEMISTRY, Part A:
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`Structure and Mechanism, 3rd Edition (Plenum Press, NY), pp. 651-727 (1990).”
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`(3) The Petition Exhibit List (page vii) 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 correct
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`citation is “Linnell, R.H., The Oxidation of Nicotine. I. Kinetics of the Liquid
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`Phase Reaction Near Room Temperature. Tobacco Science, Vol. 4, pp. 89–91
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`(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), Mylan provides Corrected Exhibit 1010,
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`which now includes a Supplemental Declaration of Agis Kydonieus, Ph.D. dated
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`November 11, 2014, appended to the original Exhibit 1010, identifying the
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`following correction:
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`IPR2015-00265
`Mylan v. Novartis
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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.), Mylan
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`provides Corrected Exhibit 1011, which now includes a Supplemental Declaration
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`of Christian Schöneich, Ph.D. dated November 11, 2014, appended to the original
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`Exhibit 1011, identifying the following corrections:
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`(1)
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` On pages 4 (paragraph 9) and 13-14 (paragraph 31), Ex. 1018 is
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`incorrectly referred
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`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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`4
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`IPR2015-00265
`Mylan v. Novartis
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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-Leung
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`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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`Certain pages of Exhibit 1018 have underlined text. While the text is not
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`obscured, Mylan provides a clean replacement copy of Exhibit 1018.
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`Exhibit 1020 and 1021
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`Mylan 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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`5
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`IPR2015-00265
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`Mylan V. Novartis
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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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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`Dated: Fag- 30: 705
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`Byzg 22M 5% IéV
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`oseph M. Reisman
`Reg. No. 43,878
`Customer No. 20,995
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`Attorneys for Petitioner
`MYLAN PHARMACEUTICALS INC.
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`(949) 760—0404
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`IPR2015—00265
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`Mylan V. Novartis
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`CERTIFICATE OF SERVICE
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`I hereby certify that
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`a
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`true
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`and correct
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`copy of
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`the
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`foregoing
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`PETITIONER’S MOTION TO CORRECT EXHIBITS is being served on
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`February 20, 2015, Via email pursuant to 37 CPR. § 42.6(e) per agreement of the
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`parties, to counsel for Novartis AG and LTS Lohmann Therapie—Systeme AG at
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`the address below:
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`ExelonPatchIPR@fchs.com
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`Raymond R. Mandra
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
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`New York, NY 10104
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`Dated:
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`I565 20: 7015/
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`19825735
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`% gzflfl/xf
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`. seph M. Reisman, Reg. No. 43,878
`Attorney for Petitioner
`Mylan Pharmaceuticals Inc.
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