From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Vignone, Maria [Maria.Vignone@USPTO.GOV] on behalf of Trials [Trials@USPTO.GOV]
`Thursday, August 20, 2015 10:50 AM
`Frank Calvosa; Trials
`Nick Cerrito; Evangeline Shih; John V. Biernacki; Lyndsey Przybylski; Burgy, Aziz; Frese,
`Bradford C.; Matt Ruedy; Steve Maddox
`RE: IPR2015-00545, -546, -547, -548, -551, and -554 -- Request for Teleconference
`
`Counsel,
`
`
`Patent Owner is authorized to file a motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2)
`addressing all of the Garmin factors. The motion shall not exceed five pages and shall be filed no later than
`Noon Tuesday, August 25th. Petitioner may file an opposition to the motion that shall not exceed five pages.
`Any opposition shall be filed no later than Friday August 28th. Patent Owner is not authorized to file a reply.
`
`
`Thank you,
`
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571-272-4645
`
`
`
`
`
`From: Frank Calvosa [mailto:FrankCalvosa@quinnemanuel.com]
`Sent: Wednesday, August 19, 2015 3:26 PM
`To: Trials
`Cc: Nick Cerrito; Evangeline Shih; John V. Biernacki; Lyndsey Przybylski; Burgy, Aziz; Frese, Bradford C.; Matt Ruedy;
`Steve Maddox
`Subject: IPR2015-00545, -546, -547, -548, -551, and -554 -- Request for Teleconference
`
`
`Dear PTAB:
`
`We write on behalf of Patent Owner, Jazz Pharmaceuticals, Inc. (“Jazz”), regarding IPR2015-00545, -546, -547, -548, -
`551, and -554. The Board issued decisions instituting these IPRs on July 28 and 29. Pursuant to the Scheduling Orders
`issued with those decisions (see, e.g., IPR2015-00545, Paper 26 at 2), we write to respectfully request a teleconference
`to discuss an issue that has arisen between the parties.
`
`
`Specifically, we write to request a teleconference to discuss Jazz’s request for authorization to file a motion for
`additional discovery from Petitioners. The additional discovery requested is a narrow set of specifically-identified
`documents that are useful to Jazz’s allegation that Petitioners failed to name all real partes-in-interest (“RPI”). Jazz has
`asked Petitioners to produce the requested documents, but Petitioners have taken the position that Jazz is not entitled
`to the discovery. Jazz disagrees. It explained to Petitioners that its requests are proper both under the Garmin factors
`and despite the Board’s decision against Jazz’s RPI argument in the Decisions on Institution. That correspondence is
`attached.
`
`
`As such, we respectfully request the Board’s intervention. The parties are available to discuss this issue with the Board
`tomorrow, August 20, or Friday, August 21. Counsel for Petitioners is copied on this email.
`
`
`Best Regards,
`
`1
`
`Page 1 of 2
`
`JAZZ EXHIBIT 2038
`Amneal Pharms. et al. (Petitioners) v. Jazz Pharms., Inc. (Patent Owner)
`Case IPR2015-00554
`
`

`
`
`
`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
`
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`
`2
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`Page 2 of 2