Paper No. __
`Filed: March 18, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`PAR PHARMACEUTICAL, INC., WOCKHARDT BIO AG, and
`AMNEAL PHARMACEUTICALS LLC,
`
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`
`Patent Owner
`
`________________
`
`Case IPR2015-005541
`Patent 7,668,730
`________________
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`PURSUANT TO 37 C.F.R. § 42.70
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`1 Case IPR2015-01818 has been joined with this proceeding.
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`Filed: March 18, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`PAR PHARMACEUTICAL, INC., WOCKHARDT BIO AG, and
`AMNEAL PHARMACEUTICALS LLC,
`
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`
`Patent Owner
`
`________________
`
`Case IPR2015-005541
`Patent 7,668,730
`________________
`
`
`
`
`
`
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`
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`PURSUANT TO 37 C.F.R. § 42.70
`
`
`1 Case IPR2015-01818 has been joined with this proceeding.
`
`
`
`
`
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`
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`Patent Owner Request for Oral Argument Case IPR2015-00554
`Patent 7,668,730
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`Patent Owner, Jazz Pharmaceuticals, Inc. hereby requests that oral argument
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`be held before the Patent Trial and Appeal Board (the “Board”) pursuant to
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`37 C.F.R. § 42.70 and the Board’s July 28, 2015 Scheduling Order (Paper 20). As
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`set forth in its Order, the Board has currently scheduled the oral hearing for
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`April 19, 2016. This request encompasses each of the issues addressed in
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`Petitioners’ Petition (as applicable after institution) and Reply, Patent Owner’s
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`Response, and all exhibits thereto, including declarations and depositions. The
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`specific issues Patent Owner wishes to address are set forth below, without waiver
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`or prejudice.
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`ISSUES TO BE ARGUED
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`1. Whether Petitioners have met their burden of proving that the ACA
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`Materials (Exs. 1003-1006) qualify as prior art.
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`2.
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`Claim construction – The proper construction of the following terms:
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`a.
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`b.
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`“generating with the computer processor periodic reports via
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`the exclusive computer database to evaluate potential diversion
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`patterns”;
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`“the prescription requests [for GHB] containing information
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`identifying patients”; and
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`Patent Owner Request for Oral Argument Case IPR2015-00554
`Patent 7,668,730
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`c.
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`“the prescription requests [for GHB] containing information
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`identifying . . . various credentials of the any and all [medical
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`doctors/authorized prescribers]”.
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`3. Whether Petitioners’ Reply contains improper reply evidence and
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`arguments.
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`4. Whether Petitioners have met their burden of proving the challenged
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`claims of U.S. Patent No. 7,668,730 (Ex. 1001) unpatentable as
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`obvious over the ACA Materials (Exs. 1003-1006).
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`Jazz’s and Petitioners’ Motion(s) to Exclude Evidence, if any.
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`Responses to any issues raised by Petitioners in their Request for Oral
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`Argument or at the oral hearing.
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`Any other issues that the Board deems necessary for issuing a final
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`5.
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`6.
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`7.
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`written decision.
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`Patent Owner respectfully requests that the Board provide audio-visual
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`equipment to display demonstrative exhibits, including a projector and screen.
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`Finally, Jazz notes that the patent-at-issue in this IPR is related to patents
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`currently being review in IPR2015-00545, -546, -547, -548, and -551. As these
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`proceedings have certain overlapping issues, Jazz respectfully requests a combined
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`hearing for all six proceedings, with 90 minutes of oral argument time per side in
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`the combined oral hearing. The Board has already scheduled April 19, 2016 as the
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`2
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`Patent Owner Request for Oral Argument Case IPR2015-00554
`Patent 7,668,730
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`hearing date for all six IPRs. Further, as the parties agreed, and subject to the
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`Board’s approval, Jazz respectfully requests that it be able to prepare and file one
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`set of demonstratives for all six proceedings. The parties propose that the
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`demonstratives cite: (1) IPR2015-00548’s pleadings and exhibits for issues
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`common across all six IPRs; and (2) the other proceedings’ pleadings and exhibits
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`only when necessary to address issues specific to those proceedings.
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`
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`Date: March 18, 2016
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` Respectfully submitted,
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`By: /F. Dominic Cerrito (Reg. No. 38,100)/
` F. Dominic Cerrito (Reg. No. 38,100)
` Eric C. Stops (Reg. No. 51,163)
` Evangeline Shih (Reg. No. 50,170)
` Frank C. Calvosa (Reg. No. 69,064)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`General Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`ericstops@quinnmemanuel.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`
`John V. Biernacki
`Reg. No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`General Tel: (216) 586-3939
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`
`
`
`3
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`
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`Patent Owner Request for Oral Argument Case IPR2015-00554
`Patent 7,668,730
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`Direct Tel: (216) 586-7747
`Fax: (216) 579-0212
`jvbiernacki@jonesday.com
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`Attorneys for Jazz Pharmaceuticals, Inc.
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`4
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
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`PAR PHARMACEUTICAL, INC., WOCKHARDT BIO AG, and
`AMNEAL PHARMACEUTICALS LLC,
`
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`
`Patent Owner
`
`________________
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`Case IPR2015-005542
`Patent 7,668,730
`________________
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`CERTIFICATE OF SERVICE
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`2 Case IPR2015-01818 has been joined with this proceeding.
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that PATENT
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`OWNER’S REQUEST FOR ORAL ARGUMENT PURSUANT TO 37 C.F.R.
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`§ 42.70 was served on March 18, 2016 by filing this document through the Patent
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`Review Processing System, as well as e-mailing a copy to
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`bradford.frese@arentfox.com, richard.berman@arentfox.com,
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`janine.carlan@arentfox.com, and PCGallagher@duanemorris.com.
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` Respectfully submitted,
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`By: /F. Dominic Cerrito (Reg. No. 38,100)/
` F. Dominic Cerrito (Reg. No. 38,100)
` QUINN EMANUEL URQUHART &
` SULLIVAN, LLP
` 51 Madison Avenue, 22nd Floor
` New York, NY 10010
` General Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`
`Lead Counsel for
`Jazz Pharmaceuticals, Inc.
`
`
`
`
`Date: March 18, 2016
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