`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`E. I. DU PONT DE NEMOURS AND COMPANY and
`ARCHER-DANIELS-MIDLAND COMPANY,
`Petitioners,
`
`v.
`
`FURANIX TECHNOLOGIES B.V.,
`Patent Owner
`_________________________
`
`Case IPR2015-01838
`Patent 8,865,921
`_________________________
`
`PATENT OWNER’S LIST OF PROPOSED MOTIONS
`
`
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`In preparation for the initial conference call scheduled for April 14, 2016,
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`and pursuant to section II.E of the Office Patent Trial Practice Guide (77 Fed. Reg.
`
`48756, 48765-66), Patent Owner submits the following list of possible
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`issues/motions for trial. Patent Owner understands that routine discovery, motions
`
`for observations, motions to exclude evidence, and other motions provided for in
`
`the Scheduling Order do not require prior authorization from the Board, and
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`therefore may not list such motions here. Patent Owner reserves its right to seek
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`authorization to file additional motions as circumstances arise and as authorized by
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`the Board, or to decide not to file the motions listed below.
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`1.
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`Patent Owner’s expect to file a Motion to Amend pursuant to 37
`
`C.F.R. § 42.121. Patent Owner understands that a first Motion to Amend does not
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`require prior authorization from the Board, but Patent Owner is required to confer
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`with the Board prior to filing such a motion (37 CFR § 42.121(a)).
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`2.
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`Motion to modify DUE DATE 1, as set forth in the March 9, 2016
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`Scheduling Order (Paper 11), in view of the parties’ mutual agreement to move
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`DUE DATE 1 from May 31, 2016 to June 3, 2016.
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`3.
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`Patent Owner may seek entry of a protective order pursuant to 37
`
`C.F.R. § 42.54 in the event that it intends to rely upon confidential information, or
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`confidential information is produced, during this inter partes review proceeding.
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`1
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`4.
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`Patent Owner may file a motion for discovery pursuant to 37 C.F.R. §
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`42.51 regarding (i) Petitioners’ efforts to develop methods for the preparation of
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`2,5-furan dicarboxylic acid by methods of the invention claimed in U.S. 8,865,921;
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`and (ii) secondary considerations relating to methods of the invention claimed in
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`U.S. 8,865,921. This discovery would be in the nature of requests for admissions,
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`request for production of documents, depositions, and any other appropriate means
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`of discovery.
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`Dated: April 12, 2016
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`Respectfully submitted,
`
`/ Paul M. Richter /
`Paul M. Richter
`Reg. No. 36,254
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
`Fax: 212-425-5288
`
`Counsel for Patent Owner Furanix
`Technologies B.V.
`
`2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing “PATENT OWNER’S
`
`LIST OF PROPOSED MOTIONS” was served via email as follows:
`
`Jonathan W. S. England
`Reg. No. 71,223
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Tel (202) 420-2747
`Fax (202) 420-2201
`jwengland@blankrome.com
`
`Michael S. Marcus
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Tel (202) 420-3702
`Fax (202) 420-2201
`mmarcus@blankrome.com
`
`Dipu A. Doshi
`Reg. No. 60,373
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Tel (202) 420-2604
`Fax (202) 420-2201
`ddoshi@blankrome.com
`
`Dated: April 12, 2016
`
`/ Paul M. Richter /
`Paul M. Richter
`
`Counsel for Patent Owner Furanix
`Technologies B.V.
`
`3