From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Vignone, Maria <Maria.Vignone@USPTO.GOV> on behalf of Trials
`<Trials@USPTO.GOV>
`Monday, March 21, 2016 3:52 PM
`Malik, Jitty; Trials
`Diner, Bryan; Hasford, Justin; Skelton, Bryan; Abe, James; Janusz, Joe;
`dyellin@crowell.com; jlindsay@crowell.com; slentz@crowell.com; Ferrill, Elizabeth;
`Fujiwara, Chiaki; Lebeis, Jessica; Mukerjee, Deepro; Goldberg, Joshua; Rapalino, Emily L.
`(ERapalino@goodwinprocter.com)
`RE: IPR2015-00902 and -00903 (Request for Sur-Reply)
`
`Counsel: The Board will determine whether, under 37 C.F.R. § 42.23(b), Petitioner’s Reply briefs, and related evidence,
`are outside the scope of a proper reply and evidence, when the panel reviews the record and prepares any final written
`decision in connection with these proceedings. If there are improper arguments or evidence, or both, presented with
`the Reply briefs, the panel may exclude such argument and related evidence. Patent Owner’s request to file a sur-reply
`in each proceeding to address allegedly new arguments presented in the Reply briefs is denied.
`
`Further, to the extent that either party wishes to request an oral hearing (currently set, if requested, for April 19, 2016
`(Due Date 7)), such request must be filed within five (5) business days of this email.
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`703-756-1288
`
`From: Malik, Jitty [mailto:Jitty.Malik@alston.com]
`Sent: Monday, March 21, 2016 11:20 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Diner, Bryan <bryan.diner@finnegan.com>; Hasford, Justin <Justin.Hasford@finnegan.com>; Skelton, Bryan
`<Bryan.Skelton@alston.com>; Abe, James <James.Abe@alston.com>; Janusz, Joe <Joe.Janusz@alston.com>;
`dyellin@crowell.com; jlindsay@crowell.com; slentz@crowell.com; Ferrill, Elizabeth <Elizabeth.Ferrill@finnegan.com>;
`Fujiwara, Chiaki <Chiaki.Fujiwara@finnegan.com>; Lebeis, Jessica <Jessica.Lebeis@finnegan.com>; Mukerjee, Deepro
`<Deepro.Mukerjee@alston.com>; Goldberg, Joshua <Joshua.Goldberg@finnegan.com>; Rapalino, Emily L.
`(ERapalino@goodwinprocter.com) <ERapalino@goodwinprocter.com>
`Subject: RE: IPR2015-00902 and -00903 (Request for Sur-Reply)
`
`Dear PTAB,
`
`Petitioner does not agree with Patent Owner’s characterizations that the arguments were outside the scope of Patent’s
`Owner’s Response. Rather Petitioner’s expert, Dr. Laskar (who was Petitioner’s original declarant when Petitioner filed
`its petition) was responding directly to certain arguments made by Patent Owner in its Response and by its
`experts. That being said, Petitioner InnoPharma (along with joined Petitioner Lupin) are available for a conference call
`to discuss this matter tomorrow afternoon.
`
`Regards,
`
`1
`
`

`
`Jitty Malik
`Lead Counsel for Petitioner.
`
`_____________________________________________
`JITENDRA “JITTY” MALIK PH.D. | PARTNER | ALSTON + BIRD LLP
`4721 Emperor Boulevard, Suite 400
`Durham, North Carolina 27703-8580
`Direct: (919) 862-2210; Fax: (919) 862-2260
`jitty.malik@alston.com | www.alston.com
`Atlanta | Charlotte | Dallas | Research Triangle | New York | Los Angeles | Palo Alto | Washington, DC
`
`From: Goldberg, Joshua [mailto:Joshua.Goldberg@finnegan.com]
`Sent: Monday, March 21, 2016 11:07 AM
`To: trials@uspto.gov
`Cc: Diner, Bryan; Hasford, Justin; Malik, Jitty; Skelton, Bryan; Abe, James; Janusz, Joe; dyellin@crowell.com;
`jlindsay@crowell.com; slentz@crowell.com; Ferrill, Elizabeth; Fujiwara, Chiaki; Lebeis, Jessica
`Subject: IPR2015-00902 and -00903 (Request for Sur-Reply)
`
`Dear PTAB,
`
`Petitioner included new exhibits, including a new declaration, raising arguments outside the scope of the Petition and
`Patent’s Owner’s Response with each of its replies filed on March 18, 2016. To protect Patent Owner’s rights, as
`recently recognized by the Federal Circuit in Dell v. Accelleron, Patent Owner requests a sur-reply in each proceeding to
`address the new arguments in the replies that are based on these exhibits. Petitioner opposes this request. Petitioner
`and Patent Owner are available for a conference call to discuss this matter tomorrow afternoon.
`
`Best regards,
`Joshua L. Goldberg
`Reg. No. 59,369
`Backup Counsel for Patent Owner
`
`Joshua L. Goldberg
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.6092 | fax 202.408.4400 | joshua.goldberg@finnegan.com
`www.finnegan.com | Bio | LinkedIn | PTAB Guidebook
`
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`your mailbox. Thank you.
`
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