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`Served on behalf of: Par Pharmaceutical, Inc. et al.
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`Entered: January 31, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PAR PHARMACEUTICAL, INC., BRECKENRIDGE PHARMACEUTICAL,
`INC., AND ROXANE LABORATORIES, INC.
`Petitioners
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`v.
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`
`
`NOVARTIS AG
`Patent Owner
`_______________________
`Case IPR2016-000841
`U.S. Patent No. 5,665,772
`_______________________
`
`Before LORA M. GREEN, CHRISTOPHER L. CRUMBLEY, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
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`
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`PETITIONERS’ OBJECTIONS TO
`PATENT OWNER’S DEMONSTRATIVES
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`1 Breckenridge Pharmaceutical, Inc. was joined as a party to this proceeding via a
`Motion for Joinder in IPR2016-01023; Roxane Laboratories, Inc. was joined as a
`party via a Motion for Joinder in IPR2016-01102.
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`IPR2016-00084
`U.S. Patent No. 5,665,772
`Pursuant to the Board’s January 17, 2017 Order, and after a meet and confer
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`held on January 30, 2017, Petitioners hereby file their objections to Patent Owner’s
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`demonstratives on the grounds set forth below.
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`I.
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`Slide 6
`A. New argument
`Petitioners object to this slide as presenting new argument regarding
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`enthalpy because it goes beyond Patent Owner’s argument at POR 25, the only
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`page mentioning enthalpy.
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`(PO Slide 6)
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`B. Reliance on improper observation
`Petitioners’ further object to Patent Owner’s reliance on Ex. 2222 at 113:19-
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`115:6 because it was cited only in an improper observation as explained in
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`Petitioners’ response to Patent Owner’s Observations 3-4 (impermissibly
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`characterizes testimony, and with similar observations, adds three pages of new
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`argument) (Paper 58).
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`(PO Slide 6).
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`1
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`IPR2016-00084
`U.S. Patent No. 5,665,772
`II. Slide 11
`A. New argument
`Petitioners object to the entire slide as presenting new argument regarding
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`enthalpy because it goes beyond Patent Owner’s argument at POR 25, the only
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`page mentioning enthalpy.
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`
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`(PO Slide 11)
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`B. Reliance on improper observation
`Petitioners further object to Patent Owner’s reliance on Ex. 2222 at 120:4-9
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`because it was cited only in an improper observation as explained in Petitioners’
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`response to Patent Owner’s Observations 5 (impermissibly characterizes
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`testimony, and with similar observations, adds three pages of new argument).
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`(PO Slide 11)
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`IPR2016-00084
`U.S. Patent No. 5,665,772
`III. Slide 12
`A. New Argument
`Petitioners object to this slide as presenting new argument regarding
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`enthalpy because it goes beyond Patent Owner’s argument at POR 25, the only
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`page mentioning enthalpy (also called delta H).
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`
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`(PO Slide 12)
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`B. New citation and improper observation
`Petitioners further object to Patent Owner’s reliance on Ex. 2222 at 121:22-
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`122:10 (quotation shown above, citation follows) because it was not specifically
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`identified in the motion for observations, but was at best included with an improper
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`observation explained in Petitioners’ response to Patent Owner’s Observations 4-5
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`(impermissibly characterizes testimony, and with similar observations, adds three
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`pages of new argument). Patent Owner’s Observations 4-5.
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`(PO Slide 12)
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`3
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`IPR2016-00084
`U.S. Patent No. 5,665,772
`IV. Slide 14
`A. New evidence and argument introduced after the Patent Owner’s
`Response
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`Petitioners object to this entire slide as presenting new evidence (Ex. 2219)
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`and new argument regarding that evidence that should have been included in the
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`Patent Owner’s Response.
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`
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`B. Reliance on improper observation
`Petitioners’ further object to Patent Owner’s reliance on Ex. 2222 at 133:7-
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`134:11 because it was cited only in an improper observation as explained in
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`Petitioners’ response to Patent Owner’s Observations 8 (impermissibly
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`characterizes testimony, adds new argument).
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`(PO Slide 14)
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`4
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`Respectfully submitted,
`
`/Daniel G. Brown/
`By:
`Daniel G. Brown (Reg. No. 54,005)
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`212-906-1200; 212-751-4864 (Fax)
`
`Counsel for Petitioner
`Par Pharmaceutical, Inc.
`
`/Matthew L. Fedowitz/
`By:
`Matthew L. Fedowitz
`(Reg. No. 61,386)
`Merchant & Gould P.C.
`1900 Duke Street, Ste. 600
`Alexandria, VA 22314
`703-684-2500; 703-684-2501 (Fax)
`
`Counsel for Petitioner
`Breckenridge Pharmaceutical, Inc.
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`/Keith A. Zullow/
`By:
`Keith A. Zullow (Reg. No. 37,975)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`212-813-8846; 646-558-4226 (Fax)
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`Counsel for Petitioner
`Roxane Laboratories, Inc.
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`IPR2016-00084
`U.S. Patent No. 5,665,772
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`Dated: January 31, 2017
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 31st day of January,
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`2017, a true and correct copy of the foregoing PETITIONERS’ OBJECTIONS
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`TO PATENT OWNER’S DEMONSTRATIVES was served by electronic mail
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`on Patent Owner’s lead and backup counsel at the following email address:
`
`Nicholas N. Kallas (Reg. No. 31,530)
`Peter J. Waibel (Reg. No. 43,228)
`Christina Schwarz (pro hac vice)
`Charlotte Jacobsen (pro hac vice)
`Susanne L. Flanders (pro hac vice)
`Jared L. Stringham (pro hac vice)
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104-3800
`ZortressAfinitorIPR@fchs.com
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`By: /Daniel G. Brown/
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`Daniel G. Brown (Reg. No. 54,005)
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`212-906-1200; 212-751-4864 (Fax)
`
`Counsel for Petitioner
`Par Pharmaceutical, Inc.
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