Paper No. __
`Filed: March 18, 2016
`
`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 B2
`_____________________
`
`PETITIONERS PAR PHARMACEUTICAL, INC.’S AND
`AMNEAL PHARMACEUTICALS LLC’s
`REQUEST FOR ORAL ARGUMENT
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Case IPR2015-01818 has been joined with this proceeding.
`
`
`Filed: March 18, 2016
`
`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 B2
`_____________________
`
`PETITIONERS PAR PHARMACEUTICAL, INC.’S AND
`AMNEAL PHARMACEUTICALS LLC’s
`REQUEST FOR ORAL ARGUMENT
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Case IPR2015-01818 has been joined with this proceeding.
`
`
`
`IPR2015-00554
`Patent No. 7,668,730
`Petitioners’ Request for Oral Argument
`
`Pursuant to 37 C.F.R. § 42.70(a) and the Scheduling Order entered on July
`
`28, 2015, Petitioners Par Pharmaceutical, Inc. and Amneal Pharmaceuticals LLC
`
`respectfully request oral argument on April 19, 2016. Petitioners propose that the
`
`Board conduct a consolidated proceeding in Inter Partes Review Nos. IPR2015-
`
`00545, -00546, -00547, -00548, -00551, and -00554, as well as any matters joined
`
`therewith, as these cases all are scheduled for hearing on the same date, relate to
`
`the same patent family, and the challenge is on identical art (with the exception of
`
`two of the claims in IPR2015-00551, which are instituted on a separate ground that
`
`includes the identical art with an additional reference).
`
`For these proceedings, Petitioners respectfully request a total of ninety (90)
`
`minutes to present its arguments, including time to be reserved for rebuttal, and
`
`proposes that Patent Owner have a total of ninety (90) minutes to present its
`
`responsive arguments.
`
`The parties will exchange demonstrative exhibits five (5) business days in
`
`advance of the oral hearing in accordance with 37 C.F.R. § 42.70(b). The parties
`
`have agreed to exchange one set of demonstratives addressing issues in all six of
`
`IPR2015-00545, -00546, -00547, -00548, -00551, and -00554 (and any joined
`
`proceedings) per side, and that any references to exhibits and papers will be made
`
`to the exhibits and papers filed in IPR2015-00548 for issues common across all
`
`
`
`IPR2015-00554
`Patent No. 7,668,730
`Petitioners’ Request for Oral Argument
`
`IPRs, except that references to other proceedings’ pleadings and exhibits may be
`
`made only when necessary to address issues specific to those proceedings.
`
`Without waiving any issue not specifically listed below, Petitioners identify
`
`the following issues to be argued at the April 19, 2016 hearing:
`
`1) Whether the Advisory Committee Art (“ACA”) was publicly available
`
`more than one year before December 17, 2002;
`
`2)
`
`The construction of the following claim terms:
`
`a. “generating with the computer processor periodic reports via the
`
`exclusive computer database to evaluate potential diversion
`
`patterns,”
`
`b. “the prescription requests [for GHB] containing information
`
`identifying patients,” and
`
`c. “the prescription requests [for GHB] containing information
`
`identifying . . . various credentials of the any and all [medical
`
`doctors/authorized prescribers].”
`
`3)
`
`The obviousness of claims 1–11 of U.S. Patent No. 7,668,730 over the
`
`ACA, including, but not limited to:
`
`a. Whether the ACA disclosed, taught, or suggested the claimed
`
`prescription requests;
`
`2
`
`
`
`IPR2015-00554
`Patent No. 7,668,730
`Petitioners’ Request for Oral Argument
`
`b. Whether the ACA disclosed, taught, or suggested the claimed
`
`periodic reports;
`
`c. Whether a POSA would have been motivated to confirm “with a
`
`patient that educational material has been received and/or read
`
`prior to shipping the company’s prescription drug” rather than
`
`after shipping/providing the prescription drug.
`
`4)
`
`Arguments and evidence presented in any motions to exclude
`
`evidence or response thereto.
`
`5)
`
`Any other issues that the Board deems necessary to issue a final
`
`written decision.
`
`Petitioners
`
`request
`
`the use of
`
`audio/visual
`
`equipment
`
`to display
`
`demonstrative exhibits, including the use of a computer, projector, and screen. In
`
`accordance with Trial Practice Guide, 77 Fed. Reg. at 48768, Petitioners will work
`
`to discuss this request with the Board Trial Division.
`
`3
`
`
`
`IPR201 5-00554
`Patent No. 7,668,730
`Petitioners' Request for Oral Argument
`
`Date: March 18, 2016 (cid:9)
`
`Respectfully submitted,
`
`'
`
`A (-1-
`lan-----
`Jan ne A. (cid:9)
`Registration No. 42,387
`ARENT Fox LLP
`1717 K Street, NW
`Washington, DC 20006
`202.857.6000
`Attorney for Petitioner
`Par Pharmaceutical, Inc. and Amneal
`Pharmaceuticals LLC
`
`4
`
`
`
`IPR2015-00554
`Patent No. 7,668,730
`Certificate of Service
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned “Petitioners Par
`
`Pharmaceutical, Inc.’s and Amneal Pharmaceuticals LLC’s Request for Oral
`
`Argument,” was served in its entirety on March 18, 2016, upon the following
`
`parties via e-mail:
`
`John V. Biernacki
`jvbiernacki@jonesday.com
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, OH 44114
`
`F. Dominic Cerrito
`nickcerrito@quinnemanuel.com
`Eric C. Stops
`ericstops@quinnemanuel.com
`Evangeline Shih
`evangelineshih@quinnemanuel.com
`Frank Calvosa
`frankcalvosa@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue
`22nd Floor
`New York, NY 10010
`Counsel for Patent Owner Jazz Pharmaceuticals, Inc.
`
`Jordana Garallek
`Patrick C. Gallagher
`JGarallek@duanemorris.com
`PCGallagher@duanemorris.com
`DUANE MORRIS LLP
`DUANE MORRIS LLP
`1540 Broadway
`190 South LaSalle Street, Suite 3700
`New York, NY 10036-4086
`Chicago, IL 60603-3433
`Counsel for Petitioner Wockhardt Bio AG
`
`
`
`IPR2015-00554
`Patent No. 7,668,730
`Certificate of Service
`
`Respectfully Submitted,
`
`Bradford C. Frese
`Registration No. 69,772
`Attorney for Petitioner Par Pharmaceutical,
`Inc.
`
`Date: March 18, 2016
`ARENT FOX LLP
`1717 K Street, NW
`Washington, DC 20006
`202.857.6000
`
`2
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