IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`
`EXHIBIT 3001
`
`
`
`From: Malik, Jitty [mailto:Jitty.Malik@alston.com]
`Sent: Thursday, April 14, 2016 12:20 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Diner, Bryan (bryan.diner@finnegan.com)
`<bryan.diner@finnegan.com>; Hasford, Justin
`(Justin.Hasford@finnegan.com) <Justin.Hasford@finnegan.com>; Ferrill,
`Elizabeth <Elizabeth.Ferrill@finnegan.com>;
`Joshua.goldberg@finnegan.com; jLindsay@Crowell.com;
`dyellin@crowell.com; Mukerjee, Deepro <Deepro.Mukerjee@alston.com>;
`Soderstrom, Lance <Lance.Soderstrom@alston.com>; Abe, James
`<James.Abe@alston.com>; Janusz, Joe<Joe.Janusz@alston.com>
`
`
`
`Subject: IPR2015-00902,-00903, -01087, 01099, 01100, 01105
`
`
`
`Dear PTAB:
`
`On April 13, 2016, Patent Owner filed EX2277 in both IPR2015-00902
`(IPR902) and IPR2015-00903 (IPR903). EX2277 is the transcript (over a
`thousand pages) from the recently concluded bench trial involving the
`validity of U.S. Patent No. 8,129,431, on which inter partes review has been
`instituted in the IPR903 action currently pending before the Board. Of
`particular note, the trial did not address the validity of U.S. Patent No.
`8,669,290, on which inter partes review has been instituted in the IPR902
`action. Petitioner objects to Patent Owner’s filing of EX2277 for a number
`of reasons, including the direct violation of 37 C.F.R. § 42.123, requiring
`authorization to file a motion seeking leave to submit supplemental
`information. Petitioner did not and does not consent to the filing of EX2277
`as supplemental information.
`
`Petitioner submits that EX2277 is improper in that it introduces evidence
`that is not of record in either the IPR902 or IPR903 actions. The trial
`transcript of the district court litigation includes the testimony of witnesses
`that have offered no declarations in these actions, and therefore reflects a
`different evidentiary record. For example, the trial transcript includes the
`
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`1
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`

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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`testimony of Drs. Heathcock, Lawrence, and Cykiert, none of whom
`testified or submitted declarations in the InnoPharma IPR actions currently
`pending before the Board. Moreover, Petitioner’s expert in these actions, Dr.
`Laskar did not offer testimony in the district court litigation.
`
`Petitioner believes this is another example of counsel for Patent Owner
`acting in contravention of the Board’s rules and Orders. Respectfully, these
`continued actions continue to prejudice Petitioner’s interests in these actions.
`In addition, and following the Board’s denial of Patent Owner’s request to
`file a sur-reply, Patent Owner’s counsel improperly read into the record
`certain portions of an expert reply report of its expert Dr. Davies from the
`district court litigation, as well as the district court deposition testimony of
`other experts -- all in an apparent attempt to introduce sur-reply arguments
`where they were otherwise prohibited. (See, e.g., Petitioner’s Motion to
`Exclude , Paper 62 in IPR902 at 5-10). Further, in related IPR actions
`(IPR2015-01087, 01099, 01100, 01105), counsel for Patent Owner had its
`own expert read into the record during redirect examination portions of his
`reply report served in the related district court action. (Id. at n. 4). Patent
`Owner also recently submitted untimely supplemental evidence without
`seeking authorization of the Board. (Id. at 10-12).
`
`As a result of these actions, and with the oral hearing scheduled to
`commence less than a week from now, Petitioner respectfully requests a
`brief conference with the Board to discuss these inappropriate actions. The
`disregard of the Board’s rules and Orders by counsel for Patent Owner at
`this late stage of these actions has impeded Petitioner’s ability to fairly and
`properly prepare for the oral hearing in these actions. Accordingly,
`Petitioner kindly requests a conference with the Board on Friday, April 15,
`2016, or at the convenience of the Board’s schedule.
`
`Respectfully,
`Jitendra Malik
`Lead Counsel for InnoPharma
`
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