From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Counsel:
`
`Trials <Trials@USPTO.GOV>
`Friday, March 18, 2016 3:50 PM
`Frank Calvosa
`Frese, Bradford C.; Nick Cerrito; Eric Stops; Evangeline Shih; John V. Biernacki; 'Matt
`Ruedy'; 'Steve Maddox'; pgallagher@duanemorris.com; Garellek, Jordana; Carlan, Janine;
`Berman, Richard; Lyndsey Przybylski
`RE: IPR2015-00545, -00546, -00547, -00548, -00551, and -00554
`
`The Board authorizes Petitioners to file a Motion pursuant to 37 CFR Section 42.5(c)(3), to excuse Petitioners’
`late filing of objections under 37 CFR Section 42.64(b)(1), by next Friday March 25th. Petitioners’ motion
`must make a showing of good cause to support their request and explain why “consideration on the merits
`would be in the interests of justice.” Petitioners’ motion and Patent Owner’s opposition are each limited to 7
`pages, and a reply is not authorized at this time. Patent Owner’s opposition will be due one week after
`Petitioners’ motion is filed.
`
`Petitioners should file their proposed Motion to Exclude today in accordance with the Scheduling Order,
`pending a decision on the motion outlined above.
`
`Sincerely,
`
`Eric Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Frank Calvosa [mailto:FrankCalvosa@quinnemanuel.com]
`Sent: Thursday, March 17, 2016 1:54 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Frese, Bradford C. <Bradford.Frese@arentfox.com>; Nick Cerrito <NickCerrito@quinnemanuel.com>; Eric Stops
`<EricStops@quinnemanuel.com>; Evangeline Shih <EvangelineShih@quinnemanuel.com>; John V. Biernacki
`<jvbiernacki@jonesday.com>; 'Matt Ruedy' <MRuedy@meiplaw.com>; 'Steve Maddox' <smaddox@meiplaw.com>;
`pgallagher@duanemorris.com; Garellek, Jordana <JGarellek@duanemorris.com>; janine.carlan@arentfox.com;
`richard.berman@arentfox.com; Lyndsey Przybylski <lyndseyprzybylski@quinnemanuel.com>
`Subject: RE: IPR2015-00545, -00546, -00547, -00548, -00551, and -00554
`
`Dear PTAB,
`
`I write on behalf of Patent Owner (“Jazz”) in response to Petitioners’ email. Under 37 C.F.R. 42.64(b)(1), Petitioners
`should have filed their objections in November 2015. Petitioners do not dispute that they failed to do so. Instead, they
`argue only that Jazz would not be prejudiced by Petitioners’ late filing. As an initial matter, prejudice is irrelevant under
`the rule. See Nintendo of Am. v. Motion Games LLC, IPR2014-00164, Paper 51 at 26-27 (finding Patent Owner’s untimely
`objections waived and refusing to allow an exception based on Patent Owner’s argument that Petitioner suffered no
`prejudice). Moreover, as discussed below, Petitioners are incorrect - Jazz would be substantially prejudiced.
`
`1
`
`PAR1060
`IPR of U.S. Patent No. 7,668,730
`Page 1 of 5
`
`

`
`Petitioners fail to inform the Board that Jazz timely emailed Petitioners ten business days after they served their
`objections and put Petitioners on notice that their objections were waived. Specifically, Jazz stated that it “reserves the
`right to argue that Petitioners have waived their objections” just in case this exact scenario arose. (See attached
`email.) Despite Jazz’s email, Petitioners waited another four months—from November 2015 until March 2016—to seek
`to correct their error. In planning their case, Jazz relied upon Petitioner’s failure to timely file their objections or to even
`timely attempt to cure their failure after Jazz put Petitioners on notice. Specifically, Jazz would have served additional
`supplemental evidence had Petitioners timely filed their objections. For example, Petitioners objected to several third-
`party depositions and declarations. Had Jazz thought that the rules would not be enforced, and that Petitioners would
`be able to belatedly file their objections, it would have sought to correct any alleged deficiencies in that evidence by
`seeking the Board’s authorization for subpoenas. Jazz also would have sought to serve other supplemental evidence in
`response to other of Petitioners’ objections. But Jazz relied on the rules and Petitioners’ failure to comply with them. If
`Petitioners are allowed to circumvent the rules now, Jazz will be severely prejudiced.
`
`Additionally, yesterday afternoon, Jazz contacted counsel for Petitioners, Bradford Frese, to determine what specific
`objections Petitioners sought to rely upon in a motion to exclude. The reason for Jazz’s request was to more specifically
`explain the prejudice to Jazz to the PTAB or otherwise potentially resolve this issue. Mr. Frese refused to provide any
`information in response to Jazz’s inquiry.
`
`Notably, Petitioners’ present request supports Jazz’s substantive arguments in these IPRs. Petitioners appear to be
`arguing that they were not aware of the change to 37 C.F.R. 42.64(b)(1) that required filing of objections. But that rule
`change was published in the Federal Register. See 80 Fed. Reg. 28561, 28563 (May 15, 2015). While lack of knowledge
`of the rule does not excuse Petitioners’ failure to timely file their objections, it does show that persons of skill in the art,
`even specifically interested persons—here Petitioners’ counsel in the IPRs—do not read the Federal Register for
`information regarding IPRs. This is the exact substantive point that Jazz made in its briefing. Specifically, a POSA in the
`above-referenced IPRs would not read the Federal Register and would not have been aware of the advisory committee
`materials. Petitioners’ actions speak louder than words.
`
`Accordingly, Jazz respectfully requests that the Board deny Petitioners’ request.
`
`Best Regards,
`
`Frank Calvosa
`Associate
`Quinn Emanuel Urquhart & Sullivan, LLP
`
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`212-849-7569 Direct
`212-849-7000 Main Office Number
`212-849-7100 FAX
`frankcalvosa@quinnemanuel.com
`www.quinnemanuel.com
`
`NOTICE: The information contained in this e-mail message is intended only for the personal and confidential use of the recipient(s) named above. This message
`may be an attorney-client communication and/or work product and as such is privileged and confidential. If the reader of this message is not the intended
`recipient or agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that any
`review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately
`by e-mail, and delete the original message.
`
`From: Trials [mailto:Trials@USPTO.GOV]
`Sent: Wednesday, March 16, 2016 2:40 PM
`To: Frese, Bradford C.
`Cc: Nick Cerrito; Eric Stops; Evangeline Shih; John V. Biernacki; 'Matt Ruedy'; 'Steve Maddox'; Gallagher, Patrick;
`Garellek, Jordana; Carlan, Janine; Berman, Richard
`Subject: RE: IPR2015-00545, -00546, -00547, -00548, -00551, and -00554
`2
`
`PAR1060
`IPR of U.S. Patent No. 7,668,730
`Page 2 of 5
`
`

`
`Counsel,
`
`The Board requests that Patent Owner send a brief email responding to Petitioner’s comments no later than 3
`p.m. tomorrow, Thursday March 17th.
`
`Sincerely,
`
`Eric Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Frese, Bradford C. [mailto:Bradford.Frese@arentfox.com]
`Sent: Wednesday, March 16, 2016 1:30 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Nick Cerrito <NickCerrito@quinnemanuel.com>; Eric Stops <EricStops@quinnemanuel.com>; Evangeline Shih
`<EvangelineShih@quinnemanuel.com>; John V. Biernacki <jvbiernacki@jonesday.com>; 'Matt Ruedy'
`<MRuedy@meiplaw.com>; 'Steve Maddox' <smaddox@meiplaw.com>; Gallagher, Patrick
`<PCGallagher@duanemorris.com>; Garellek, Jordana <JGarellek@duanemorris.com>; Carlan, Janine
`<Janine.Carlan@arentfox.com>; Berman, Richard <Richard.Berman@arentfox.com>
`Subject: IPR2015-00545, -00546, -00547, -00548, -00551, and -00554
`
`Dear PTAB:
`
`Petitioners recently discovered that although Petitioners’ objections were timely served on Patent Owner, in error,
`Petitioners did not file the objections to evidence Patent Owner Jazz Pharmaceuticals, Inc. submitted in connection with
`their Patent Owner Response. Petitioners now respectfully request the Board allow Petitioners to file the objections in
`order to make them of record in the proceeding.
`
`On November 13, 2015—within five business days of Jazz filing its Patent Owner Response—Petitioners served Jazz with
`objections to evidence Jazz filed with its patent owner response. Jazz served supplemental evidence on November 30,
`2015, to which Petitioners served objections on December 4, 2015. Though Petitioners’ evidence objections were timely
`served in compliance with the prior rule 37 C.F.R. §42.64(b), they were not filed with the Board at that time, in
`compliance with the new rule 37 C.F.R. §42.64(b). Petitioners discovered their error in connection with preparing a
`motion to exclude (due this Friday, March 18), which is why Petitioners seek to make the objections of record now.
`
`Patent Owner Jazz objects to this Request (shown in the e-mail below), on the sole grounds that filing now would be
`untimely. But Jazz was not, and cannot, be prejudiced by the late filing of the objections. First and foremost, the lack of
`filing was solely in error and without deceptive intent, as evidenced by the fact that the objections were served on Jazz
`in a timely fashion, and that Jazz availed itself of the opportunity to serve supplemental evidence in response to
`Petitioners’ objections. Second, Petitioners are merely seeking to file the same objections it served on Jazz, and not new
`or amended objections of which Jazz was not on notice under a prior iteration of the rule. Third, Jazz has not identified
`how it would be prejudiced by making those objections of record before the Board now. Fourth, Jazz has raised no issues
`with the Board since November to which Petitioners’ evidence objections, or Jazz’s supplemental evidence, are
`pertinent, meaning that there has been no need for the Board to consider Petitioners’ evidence objections.
`
`As such, Petitioners respectfully request that they be able to correct their error by filing their objections in the record
`now.
`
`Best regards,
`
`3
`
`PAR1060
`IPR of U.S. Patent No. 7,668,730
`Page 3 of 5
`
`

`
`Bradford Frese
`
`Bradford C. Frese
`Associate
`
`Arent Fox LLP | Attorneys at Law
`1717 K Street, NW
`Washington, DC 20006-5344
`202.857.6496 DIRECT | 202.857.6395 FAX
`bradford.frese@arentfox.com | www.arentfox.com
`
`From: Frank Calvosa [mailto:FrankCalvosa@quinnemanuel.com]
`Sent: Wednesday, March 16, 2016 11:23 AM
`To: Frese, Bradford C. <Bradford.Frese@arentfox.com>; Nick Cerrito <NickCerrito@quinnemanuel.com>; Eric Stops
`<EricStops@quinnemanuel.com>; Evangeline Shih <EvangelineShih@quinnemanuel.com>; John V. Biernacki
`<jvbiernacki@jonesday.com>
`Cc: 'Matt Ruedy' <MRuedy@meiplaw.com>; 'Steve Maddox' <smaddox@meiplaw.com>; Gallagher, Patrick
`<PCGallagher@duanemorris.com>; Garellek, Jordana <JGarellek@duanemorris.com>; XYREM <XYREM@arentfox.com>
`Subject: RE: IPR2015-00545, -00546, -00547, -00548, -00551, and -00554
`
`Bradford,
`
`Petitioners failed to comply with 37 C.F.R. § 42.64(b)(1) when they did not timely file their objections on November 13,
`2015 to the evidence submitted in the Patent Owner Responses. As such, Jazz objects to Petitioners’ attempt to do so
`now, more than four months after the fact.
`
`To the extent that Petitioners email the Board to seek leave to file their belated objections, please include this email
`opposing that request.
`
`Regards,
`
`Frank Calvosa
`Associate
`Quinn Emanuel Urquhart & Sullivan, LLP
`
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`212-849-7569 Direct
`212-849-7000 Main Office Number
`212-849-7100 FAX
`frankcalvosa@quinnemanuel.com
`www.quinnemanuel.com
`
`NOTICE: The information contained in this e-mail message is intended only for the personal and confidential use of the recipient(s) named above. This message
`may be an attorney-client communication and/or work product and as such is privileged and confidential. If the reader of this message is not the intended
`recipient or agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that any
`review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately
`by e-mail, and delete the original message.
`From: Frese, Bradford C. [mailto:Bradford.Frese@arentfox.com]
`Sent: Tuesday, March 15, 2016 8:54 AM
`To: Nick Cerrito <NickCerrito@quinnemanuel.com>; Eric Stops <EricStops@quinnemanuel.com>; Evangeline Shih
`<EvangelineShih@quinnemanuel.com>; Frank Calvosa <FrankCalvosa@quinnemanuel.com>; John V. Biernacki
`<jvbiernacki@jonesday.com>
`Cc: 'Matt Ruedy' <MRuedy@meiplaw.com>; 'Steve Maddox' <smaddox@meiplaw.com>; Gallagher, Patrick
`<PCGallagher@duanemorris.com>; Garellek, Jordana <JGarellek@duanemorris.com>; XYREM <XYREM@arentfox.com>
`Subject: IPR2015-00545, -00546, -00547, -00548, -00551, and -00554
`
`4
`
`PAR1060
`IPR of U.S. Patent No. 7,668,730
`Page 4 of 5
`
`

`
`Counsel:
`
`I write in regard to the Petitioners’ evidence objections that were served on Jazz on November 13, 2015. Though these
`objections were served, they were not filed with the Board at that time.
`
`Petitioners wish to rely on these objections in support of a motion to exclude. Please let us know, by no later than noon
`tomorrow, whether Jazz will object to Petitioners seeking leave to file these evidence objections before the Board and
`have them considered in connection with a motion to exclude.
`
`Best regards,
`Bradford
`
`Bradford C. Frese
`Associate
`
`Arent Fox LLP | Attorneys at Law
`1717 K Street, NW
`Washington, DC 20006-5344
`202.857.6496 DIRECT | 202.857.6395 FAX
`bradford.frese@arentfox.com | www.arentfox.com
`
`CONFIDENTIALITY NOTICE: This e-mail and any attachments are for the exclusive and confidential use of the intended recipient. If you received this in error,
`please do not read, distribute, or take action in reliance upon this message. Instead, please notify us immediately by return e-mail and promptly delete this
`message and its attachments from your computer system. We do not waive attorney-client or work product privilege by the transmission of this message.
`
`CONFIDENTIALITY NOTICE: This e-mail and any attachments are for the exclusive and confidential use of the intended recipient. If you received this in error,
`please do not read, distribute, or take action in reliance upon this message. Instead, please notify us immediately by return e-mail and promptly delete this
`message and its attachments from your computer system. We do not waive attorney-client or work product privilege by the transmission of this message.
`
`5
`
`PAR1060
`IPR of U.S. Patent No. 7,668,730
`Page 5 of 5