Strang, Jonathan (DC)
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Schwarz, Christina <cschwarz@fchs.com>
`Friday, December 09, 2016 5:44 PM
`Strang, Jonathan (DC); trials@uspto.gov
`MDelsignore@goodwinlaw.com; KZullow@goodwinlaw.com; Danek, Brenda (CH);
`JBoggs@merchantgould.com; DEvans@merchantgould.com;
`MFedowitz@merchantgould.com; Kallas,Nicholas; Mandra,Raymond; Zubick, Marc
`(CH); Brown, Daniel (NY); #ZortressAfinitorIPR
`RE: IPR2016-00084 - Request for teleconference
`
`Dear Judges Crumbley, Green and Pollock,
`
`Patent Owner disagrees that the approach proposed by Petitioners is sufficient to address the prejudice associated with
`their untimely arguments and violation of the rules. Patent Owner should be afforded a meaningful opportunity to
`explain to the Board why Petitioners’ arguments and evidence are new in a brief motion to strike, or, alternatively to
`substantively respond in a limited surreply. In re NuVasive, Inc., Nos. 2015-1672 & 2015-1673, 2016 WL 6608999, *5-6
`(Fed. Cir. Nov. 9, 2016). Petitioners’ proposal seeks to hide their flagrant violations of the rules and places an undue
`burden on the Board to ascertain Petitioners’ violations.
`
`Patent Owner is available for a conference call prior to 2 pm ET on Monday, the date and time requested by Petitioners.
`
`Very truly yours,
`
`
`Christina Schwarz
`Counsel for Patent Owner
`
`Christina Schwarz
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`T 212-218-2579
`F 212-218-2200
`cschwarz@fchs.com
`http://www.fitzpatrickcella.com
`Bio
`
`
`From: Jonathan.Strang@lw.com [mailto:Jonathan.Strang@lw.com]
`Sent: Friday, December 09, 2016 9:40 AM
`To: Schwarz, Christina; trials@uspto.gov
`Cc: MDelsignore@goodwinlaw.com; KZullow@goodwinlaw.com; brenda.danek@lw.com; JBoggs@merchantgould.com;
`DEvans@merchantgould.com; MFedowitz@merchantgould.com; Kallas,Nicholas; Mandra,Raymond; Marc.Zubick@lw.com;
`Daniel.Brown@lw.com; #ZortressAfinitorIPR
`Subject: RE: IPR2016-00084 - Request for teleconference
`
`Dear Judges Crumbley, Green, and Pollock ,
`
`Petitioners disagree with and oppose Patent Owner’s request. Also, Petitioners object to Patent Owner’s repeated strategy
`of requesting relief from the Board without seeking a meet and confer and, if the parties cannot come to an agreement on
`the issue, a time when all counsel are available for a call with the Board.
`
`1
`
`Ex. 1125-0001
`
`

`
`
`Petitioners further object to Patent Owner ignoring PTAB guidance and using the Trials email address for substantive
`communications with the Board. By doing so, Patent Owner has already granted itself more relief than is warranted. The
`Board regularly allows patent owners in this situation to file a “sequentially numbered, itemized list, containing no more
`information than citations to the paper/exhibit number…of the material the Patent Owner alleges exceeds the proper scope
`of the Reply,” and gives petitioners an opportunity to respond similarly. E.g., Google v. Intellectual Ventures II,
`IPR2014-00787 (Paper 29, June 4, 2015). Petitioners would have agreed to this, as it is fair to the parties.
`
`
`Patent Owner, however, has already impermissibly and without leave submitted citations, commentary on why it believes
`the material exceeded the scope of the Reply, and most egregiously, additional substantive argument on the merits.
`
`The Board cannot unring this bell. Accordingly, Petitioners request permission to file a three-bullet response addressing
`Patent Owner’s three bullet points. Patent Owner’s “mischaracterizations” and “misrepresentation” allegations are
`demonstrably false and can be disposed of at oral argument without going beyond the already filed briefs.
`
`Should the Board desire a conference call, Petitioners are available Monday before 2 p.m. ET.
`
`Very Respectfully,
`
`Jonathan Strang
`Counsel for Petitioner Par
`
`Keith Zullow
`Counsel for Petitioner Roxane
`
`Matthew Fedowitz
`Counsel for Petitioner Breckenridge
`
`
`
`From: Schwarz, Christina [mailto:cschwarz@fchs.com]
`Sent: Thursday, December 08, 2016 5:11 PM
`To: 'trials@uspto.gov'
`Cc: 'MDelsignore@goodwinlaw.com'; 'KZullow@goodwinlaw.com'; Danek, Brenda (CH); JBoggs@merchantgould.com;
`'DEvans@merchantgould.com'; MFedowitz@merchantgould.com; Kallas,Nicholas; Mandra,Raymond; Zubick, Marc (CH);
`Brown, Daniel (NY); Strang, Jonathan (DC); #ZortressAfinitorIPR
`Subject: IPR2016-00084 - Request for teleconference
`
`Dear Judges Crumbley, Green and Pollock ,
`
`
`On December 5th, Petitioners served their reply in IPR2016-00084 (Paper 46) along with 84 new exhibits and two expert
`declarations. The reply includes untimely and improper new arguments based on new evidence and theories that could
`and should have been raised in the petition. It would be highly prejudicial to permit Petitioners to introduce these new
`arguments, examples of which are provided below, at this late stage in the proceeding. Patent Owner requests a
`conference call to discuss filing a brief motion to strike, or alternatively, a limited surreply response.
`
`
`Patent Owner is available for a conference call on Monday December 12 or Tuesday December 13, or on an alternate
`day that is convenient for the Board and all parties.
`
`
`Petitioners' improper new arguments include, inter alia:
`• Reliance on a new reference (Ex. 1034) to support various aspects of their case (reply p. 6)
`• New arguments explaining why Yalkowsky (Ex. 1007) is applicable to rapamycin and everolimus, including a new
`identification of everolimus’ "flexible" side chain that is contradicted by Petitioners’ expert’s deposition
`testimony (reply pp. 12-14)
`
`2
`
`Ex. 1125-0002
`
`

`
`• A new theory that one of ordinary skill would have reasonably expected everolimus to have anti-tumor activity
`(reply pp. 17-18, n.6)
`
`
`In addition, Petitioners’ reply repeatedly mischaracterizes Patent Owner's response. Patent Owner requests permission
`to submit a paper identifying the numerous mischaracterizations and to address these misrepresentations at the oral
`hearing.
`
`
`Patent Owner appreciates the Board’s consideration of this request and looks forward to its response.
`
`
`Very truly yours,
`
`
`Christina Schwarz
`Counsel for Patent Owner
`
`
`Christina Schwarz
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`T 212-218-2579
`F 212-218-2200
`cschwarz@fchs.com
`http://www.fitzpatrickcella.com
`Bio
`
`
`
`
`
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`
`Latham & Watkins LLP
`
`3
`
`Ex. 1125-0003