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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UMICORE AG & CO. KG,
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`Petitioner,
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`v.
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`BASF CORPORATION
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`Patent Owner.
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`IPR2015-01124
`U.S. Patent 8,404,203
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`Pursuant to 37 C.F.R. § 42.70 and the Board’s Order dated October 29, 2015
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`(Paper 9), Patent Owner BASF Corporation (“Patent Owner”) respectfully submits
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`this Request for Oral Argument. The Board has currently scheduled the oral
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`hearing in IPR2015-01121, -01123, -01124, and -01125 for July 28, 2016. Patent
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`Owner believes that all four IPRs can be addressed in a single hearing. Patent
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`Owner specifies the following issues to be argued:
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` IPR2015-01121
`o Whether Petitioner has met its burden in proving that claims 1-8
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`and 30 of the 662 Patent are unpatentable as obvious over the
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`combination of Zones and Maeshima;
`o Whether Petitioner has met its burden in proving that claims 12-24
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`and 32-50 of the 662 Patent are unpatentable as obvious over the
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`combination of Zones, Maeshima, and Patchett.
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` IPR2015-01123
`o Whether Petitioner has met its burden in proving that claims 1, 14,
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`15, 17-22, 26 and 27 of the 203 Patent are unpatentable as obvious
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`over the combination of Zones and Maeshima;
`o Whether Petitioner has met its burden in proving that claims 2-13,
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`16, 23-25, and 28-31 of the 203 Patent are unpatentable as obvious
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`over the combination of Zones, Maeshima, and Patchett.
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`IPR2015-01124
`U.S. Patent No. 8,404,203
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` IPR2015-01124
`o Whether Petitioner has met its burden in proving that claims 1, 14,
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`15, 19, 20, 26 and 27 of the 203 Patent are unpatentable as obvious
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`over the combination of Maeshima and Breck;
`o Whether Petitioner has met its burden in proving that claims 2-13,
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`16, 23-25, and 28-31 of the 203 Patent are unpatentable as obvious
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`over the combination of Maeshima, Breck and Patchett.
`o Whether Petitioner has met its burden in proving that claims 1, 14,
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`15, 19, 20, 26 and 27 of the 203 Patent are unpatentable as obvious
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`over the combination of Maeshima and Dedecek;
`o Whether Petitioner has met its burden in proving that claims 2-13,
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`16, 23-25, and 28-31 of the 203 Patent are unpatentable as obvious
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`over the combination of Maeshima, Dedecek and Patchett.
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` IPR2015-01125
`o Whether Petitioner has met its burden in proving that claims 1, 2,
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`5, 6 and 30 of the 662 Patent are unpatentable as obvious over the
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`combination of Maeshima and Breck;
`o Whether Petitioner has met its burden in proving that claims 12-24
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`and 32-38 of the 662 Patent are unpatentable as obvious over the
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`combination of Maeshima, Breck and Patchett.
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`2
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`IPR2015-01124
`U.S. Patent No. 8,404,203
`o Whether Petitioner has met its burden in proving that claims 1, 2,
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`5, 6 and 30 of the 662 Patent are unpatentable as obvious over the
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`combination of Maeshima and Dedecek;
`o Whether Petitioner has met its burden in proving that claims 12-24
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`and 32-38 of the 662 Patent are unpatentable as obvious over the
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`combination of Maeshima, Dedecek and Patchett.
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` Any issues identified in Petitioner’s Request for Oral Argument;
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` Any issues raised in Motions to Exclude or Motions for Observations on
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`Cross Examination; and
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` Any other issues the Board deems necessary for issuing a final written
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`decision.
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`Patent Owner also requests permission to use a computer, projector and
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`screen to display possible demonstratives and exhibits.
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`Dated: June 20, 2016
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`Respectfully submitted,
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`/Anish R. Desai/
`Brian E. Ferguson (Reg. No. 36,801)
`Anish R. Desai (Reg. No. 73,760)
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7000
`E: anish.desai@weil.com
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`3
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on June 20, 2016, the foregoing
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT was served via
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`electronic mail, upon the following:
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`Elizabeth Gardner
`Richard L. DeLucia
`K. Patrick Herman
`A. Anthony Pfeffer
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019-6142
`egardner@orrick.com
`rdelucia@orrick.com
`pherman@orrick.com
`apfeffer@orrick.com
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`/Timothy J. Andersen/ i
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`timothy.andersen@weil.com
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