`Sent:
`To:
`Cc:
`
`Subject:
`
`Ferrill, Elizabeth
`Tuesday, February 2, 2016 3:21 PM
`Malik, Jitty
`EXT- bryan.skelton@alston.com; Soderstrom, Lance; Abe, James; Dyellin@crowell.com;
`JLindsay@crowell.com; Diner, Bryan; Hasford, Justin; Goldberg, Joshua; EXT-
`deepro.mukerjee@alston.com
`RE: Follow-up on Dec 11 Call with Board (IPR2016-00089, -00090, and -00091)
`
`Jitty,
`
`Thank you for your email. At this point, we feel that our previous emails have sufficiently articulated our position on this
`issue and under what circumstances Senju will need to preserve its positions by filing its Opposition and Preliminary
`Response next Tuesday. As to what Senju will do after it files its Opposition and Preliminary Response, that depends on
`what happens after that date as events unfold, and Senju cannot commit to anything further at this point.
`
`On the other hand, we are not completely clear on what InnoPharma’s proposal will be to the Board on this issue. While
`you have characterized this as “Senju’s proposal,” it remains InnoPharma’s burden to explain to the Board why joinder is
`appropriate. If you would like any additional commitments from Senju, please outline your client’s proposal in writing
`so that we may clearly understand it and consult with our client about any additional agreements.
`
` I
`
` trust this is what you were calling me about, but if you have something else you would like to discuss, please let us
`know.
`
`Best regards,
`Beth
`
`Elizabeth D. Ferrill
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4445 | fax: 202.408.4400 | elizabeth.ferrill@finnegan.com | www.finnegan.com
`
`
`
`
`
`From: Malik, Jitty [mailto:Jitty.Malik@alston.com]
`Sent: Monday, February 1, 2016 1:51 PM
`To: Ferrill, Elizabeth
`Cc: EXT- bryan.skelton@alston.com; Soderstrom, Lance; Abe, James; Dyellin@crowell.com; JLindsay@crowell.com;
`Diner, Bryan; Hasford, Justin; Goldberg, Joshua; EXT- deepro.mukerjee@alston.com
`Subject: RE: Follow-up on Dec 11 Call with Board (IPR2016-00089, -00090, and -00091)
`
`Beth,
`
`Following up on our conversation, if InnoPharma agrees to Senju’s proposal as outlined below (and Lupin consents to
`InnoPharma using Dr. Lawrence), Senju will not change its position. Specifically, if we notify the Board that InnoPharma
`is amenable to Senju’s proposal and the Board resolves this situation before February 9 showing that it is in favor of the
`
`1
`
`SENJU EXHIBIT 2006
`INNOPHARMA v SENJU
`IPR2016-00090
`
`PAGE 1 OF 6
`
`
`
`proposal, then Senju will not alter course, in that it will not file any Oppositions to Joinder or Patent Owner Preliminary
`Responses in IPR2016‐00089, ‐00090, and ‐00091, and will notify the Board accordingly during any call.
`
`If the parties have contacted the Board before February 9th, but the Board is unable to convene by that time to indicate
`its approval of the parties’ agreement, then you informed me that Senju will file its Oppositions to Joinder and/or Patent
`Owner Preliminary Responses in IPR2016‐00089, ‐00090, and ‐00091. If, however, the Board subsequently convenes
`and approves of the parties’ arrangements, then Senju agrees to withdraw its Oppositions to Joinder and any Patent
`Owner Preliminary Responses it might have filed, and notify the Board accordingly.
`
`If I am incorrect in my understanding in any way, please notify us immediately so that we can have a full and correct
`understanding of Senju’s proposal before our discussions with our client.
`
`Thanks,
`
`Jitty
`
`_____________________________________________
`JITENDRA “JITTY” MALIK PH.D. | PARTNER | ALSTON + BIRD LLP
`4721 Emperor Boulevard, Suite 400
`Durham, North Carolina 27703‐8580
`Direct: (919) 862‐2210; Fax: (919) 862‐2260
`jitty.malik@alston.com | www.alston.com
`Atlanta | Charlotte | Dallas | Research Triangle | New York | Los Angeles | Palo Alto | Washington, DC
`
`
`
`
`
`From: Ferrill, Elizabeth [mailto:Elizabeth.Ferrill@finnegan.com]
`Sent: Tuesday, January 26, 2016 12:04 PM
`To: Malik, Jitty
`Cc: Skelton, Bryan; Soderstrom, Lance; Abe, James; Dyellin@crowell.com; JLindsay@crowell.com; Diner, Bryan; Hasford,
`Justin; Goldberg, Joshua; Mukerjee, Deepro
`Subject: RE: Follow‐up on Dec 11 Call with Board (IPR2016‐00089, ‐00090, and ‐00091)
`
`Jitty,
`
`
`Thank you for your email. It remains Senju’s position that there is not adequate time before the Senju Patent Owner
`response due date in the Lupin IPRs for InnoPharma to file substitute petitions dropping Grounds 2 and 3 from the
`above‐mentioned IPRs and realign the Laskar declaration accordingly; for the Board to institute on Ground 1 and join the
`IPRs; for Senju to depose Dr. Laskar, as an additional expert; and for Senju to respond to Dr. Laskar’s arguments in its
`Patent Owner Responses.
`
`
`Accordingly, as we stated in our January 13th email below and in our call last week, we think that the only way that
`InnoPharma could join the existing proceedings IPR2015‐01097, ‐01105, and ‐01100, between Lupin and Senju, without
`prejudice to Senju, Lupin, or the Board, is for InnoPharma to take a secondary role to Lupin in those proceedings without
`any right to separate briefing or discovery, by agreeing to drop its current petitions in IPR2016‐00089, ‐00090, and ‐
`00091 and its reliance on Dr. Laskar and join the ongoing, existing proceedings as a co‐petitioner with Lupin. As we
`discussed last Thursday, you plan to discuss this with your client and, if appropriate, seek consent from Lupin to join
`their existing proceedings. Once you have approval from your client and consent from Lupin, we suggest a follow‐up
`discussion to determine whether this arrangement can work without unduly prejudicing Senju, given the passage in time
`and the closeness of Due Date 1. Afterward, we could consider whether, following the Board’s advice from December
`11, to email the Board to set up a call to discuss the particulars of InnoPharma joining the Lupin IPRs.
`2
`
`PAGE 2 OF 6
`
`
`
`
`If this issue were fully resolved by February 9, then Senju could agree not to file its Opposition to Joinder and to waive its
`Patent Owner Preliminary Response in IPR2016‐00089, ‐00090, and ‐00091. If, however, it becomes apparent that the
`issue cannot be resolved by February 9, then Senju will move forward with filing its Opposition to Joinder and a Patent
`Owner Preliminary Response in IPR2016‐00089, ‐00090, and ‐00091 on February 9.
`
`
`Please let us know if you have any questions. We look forward to hearing from you.
`
`
`Best regards,
`Beth
`
`
`Elizabeth D. Ferrill
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4445 | fax: 202.408.4400 | elizabeth.ferrill@finnegan.com | www.finnegan.com
`
`
`
`
`
`
`
`
`From: Malik, Jitty [mailto:Jitty.Malik@alston.com]
`Sent: Monday, January 25, 2016 5:19 PM
`To: Ferrill, Elizabeth
`Cc: EXT- bryan.skelton@alston.com; Soderstrom, Lance; Abe, James; Dyellin@crowell.com; JLindsay@crowell.com;
`Diner, Bryan; Hasford, Justin; Goldberg, Joshua; EXT- deepro.mukerjee@alston.com
`Subject: RE: Follow-up on Dec 11 Call with Board (IPR2016-00089, -00090, and -00091)
`
`
`Beth,,
`
`I wanted to follow up on the conversation we had last week about providing Senju’s full proposal in writing, including
`the preliminary response issue we discussed. ( I talked to Bryan about it briefly on Friday too.) Are you able to provide it
`tomorrow? Please feel free to contact me if you have any questions.
`
`
`Thanks,
`
`Jitty
`
`
`
`
`_____________________________________________
`JITENDRA “JITTY” MALIK PH.D. | PARTNER | ALSTON + BIRD LLP
`4721 Emperor Boulevard, Suite 400
`Durham, North Carolina 27703‐8580
`Direct: (919) 862‐2210; Fax: (919) 862‐2260
`jitty.malik@alston.com | www.alston.com
`Atlanta | Charlotte | Dallas | Research Triangle | New York | Los Angeles | Palo Alto | Washington, DC
`
`
`
`
`
`
`3
`
`PAGE 3 OF 6
`
`
`
`From: Ferrill, Elizabeth [mailto:Elizabeth.Ferrill@finnegan.com]
`Sent: Wednesday, January 13, 2016 10:39 AM
`To: Malik, Jitty
`Cc: Skelton, Bryan; Soderstrom, Lance; Abe, James; Dyellin@crowell.com; JLindsay@crowell.com; Diner, Bryan; Hasford,
`Justin; Goldberg, Joshua; Mukerjee, Deepro
`Subject: RE: Follow‐up on Dec 11 Call with Board (IPR2016‐00089, ‐00090, and ‐00091)
`
`Jitty,
`
`
`Thank you for your response. More than a month has passed since our call with the Board and Senju’s Patent Owner
`Responses in the Lupin IPRs to which the above‐mentioned InnoPharma IPRs would be joined are due on February 8, in
`just over three weeks. As a result, Senju now thinks that there is not adequate time before February 8 for InnoPharma
`to file its substitute petition dropping Grounds 2 and 3 and realign the Laskar declaration accordingly, for the Board to
`institute on Ground 1 and join the IPRs, for Senju to depose Dr. Laskar, as an additional expert, and for Senju to respond
`to Dr. Laskar’s arguments in its Patent Owner Responses. Further, because the Board has indicated that the June
`hearing date will not be moved, we do not think that there is any additional space in the schedule to extend the
`February 8 due date for Patent Owner Responses without negatively affecting the other due dates.
`
`
`Accordingly, we think that the only way that joinder is possible now, without prejudice to Senju, Lupin, or the Board, is
`for InnoPharma agree to no longer rely on Dr. Laskar (in addition to dropping Grounds 2 and 3) and for InnoPharma to
`take a secondary role to Lupin, if the Board joins the proceedings. In effect, InnoPharma would need to join the existing
`proceedings IPR2015‐01097, ‐01105, and ‐01100 between Senju and Lupin.
`
`
`We are free this week to discuss if you would like.
`
`
`Best,
`Beth
`
`
`Elizabeth D. Ferrill
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4445 | fax: 202.408.4400 | elizabeth.ferrill@finnegan.com | www.finnegan.com
`
`
`
`
`
`
`
`
`From: Malik, Jitty [mailto:Jitty.Malik@alston.com]
`Sent: Wednesday, January 13, 2016 8:23 AM
`To: Ferrill, Elizabeth
`Cc: EXT- bryan.skelton@alston.com; Soderstrom, Lance; Abe, James; Dyellin@crowell.com; JLindsay@crowell.com;
`Diner, Bryan; Hasford, Justin; Goldberg, Joshua; EXT- deepro.mukerjee@alston.com
`Subject: RE: Follow-up on Dec 11 Call with Board (IPR2016-00089, -00090, and -00091)
`
`
`Beth,
`
`
`Following up on your email, InnoPharma is prepared to drop Grounds 2 and 3 in IPR2016‐00089, ‐00090, and ‐00091
`based on its understanding that neither Senju nor Lupin will file any oppositions to InnoPharma’s motion for joinder or
`oppose InnoPharma’s use of Dr. Laskar, and that Senju will not be filing any Preliminary Responses to InnoPharma’s
`petitions in IPR2016‐00089, ‐00090, and ‐00091. I suggest we schedule a call amongst ourselves to discuss any other
`details (e.g., additional pages for responses) and then we approach the Board.
`4
`
`PAGE 4 OF 6
`
`
`
`
`
`Thanks,
`
`Jitty
`
`
`From: Ferrill, Elizabeth [mailto:Elizabeth.Ferrill@finnegan.com]
`Sent: Tuesday, December 29, 2015 11:19 AM
`To: Malik, Jitty
`Cc: Skelton, Bryan; Soderstrom, Lance; Abe, James; Dyellin@crowell.com; JLindsay@crowell.com; Diner, Bryan; Hasford,
`Justin; Goldberg, Joshua
`Subject: Follow‐up on Dec 11 Call with Board (IPR2016‐00089, ‐00090, and ‐00091)
`
`
`Hi Jitty,
`
`
`Further to our call with the Board on December 11, please let us know if InnoPharma has made a decision regarding the
`status of Grounds 2 and 3 in IPR2016‐00089, ‐00090, and ‐00091. Given the fast‐approaching deadline of Feb 1 for the
`Patent Owner’s Response in IPR2015‐01099, ‐01097, ‐01105, ‐01100, we think that it makes sense to discuss this issue
`amongst the parties this week, if possible, and then ask the Board for a call next week to propose a plan.
`
`
`We are available to discuss this week.
`
`
`Best regards,
`
`
`Beth
`
`
`Elizabeth D. Ferrill
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4445 | fax: 202.408.4400 | elizabeth.ferrill@finnegan.com | www.finnegan.com
`
`
`
`
`
`
`
`
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential, proprietary, or otherwise
`exempt from disclosure under applicable law. If you believe you have received this message in error, please advise the sender by return e-mail and delete it from
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`
`
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`
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`5
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`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential, proprietary, or otherwise
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