`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Vignone, Maria <Maria.Vignone@USPTO.GOV> on behalf of Trials
`<Trials@USPTO.GOV>
`Wednesday, December 9, 2015 2:30 PM
`Diner, Bryan; Trials
`Malik, Jitty; EXT- bryan.skelton@alston.com; Soderstrom, Lance; Dyellin@crowell.com;
`jlindsay@crowell.com; Hasford, Justin; Goldberg, Joshua; Ferrill, Elizabeth
`RE: Unopposed Second Request for Extension of Time to File Oppositions to Motion
`for Joinder (IPR2016-00089; IPR2016-00090; IPR2016-00091)
`
`Re:
`IPR2015‐00902 (IPR902)
`IPR2015‐00903 (IPR903)
`IPR2015‐01097 (IPR097)
`IPR2015‐01099 (IPR099)
`IPR2015‐01100 (IPR100)
`IPR2015‐01105 (IPR105)
`IPR2015‐01871 (IPR871)
`IPR2016‐00089 (IPR089)
`IPR2016‐00090 (IPR090)
`IPR2016‐00091 (IPR091)
`
`Counsel:
`
`Patent Owner’s (Senju’s) time for filing any opposition to InnoPharma’s motions for joinder in IPR809, IPR090, and
`IPR091 is extended from December 11, 2015, to December 18, 2015.
`
`The parties are requested to address the following matters during the telephone conference set for December 11, 2015,
`at 2 pm EST, pertaining to the alleged “agreed upon proposed schedule that would apply to all ten (10) IPRs” (“Proposed
`Global Schedule”). Email to Board from Mr. Bryan Diner (“Diner Email”) (transmitted December 4, 2015).
`
`1. IPR902 is not the subject of a motion for joinder. The panel shall not disturb the hearing date set in IPR902.
`
`2. IPR903 is the subject of a motion for joinder filed in IPR871. Should the petition and motion for joinder be granted in
`IPR871, the joined proceeding in IPR903 shall proceed on the schedule currently set in IPR903. See IPR871 (Paper 10)
`(reflecting agreement to conditions of joinder that will not increase the complexity of IPR903 to a degree warranting a
`change in the schedule set in IPR903).
`
`3. The parties should address the Proposed Global Schedule as it relates to the remaining seven (7) IPRs identified in the
`Diner Email, keeping in mind that the Board shall enter no schedule in any IPR before determining that the petition
`warrants institution.
`
`4. Regarding the motions for joinder that are pending in IPR089, IPR090, and IPR091, please address the following
`issues: a) To facilitate our consideration of the motions, will InnoPharma agree to proceed in IPR097, IPR100, and
`IPR105 based only upon the arguments and evidence advanced by Lupin in those earlier‐filed actions and accept a back‐
`seat, “understudy” role in the joined proceedings, without any right to separate or additional briefing or discovery, much
`as Lupin has agreed in connection with the motion for joinder pending in IPR871 (see Paper 10); b) In the event that the
`petitions and joinder motions are granted, will Lupin permit InnoPharma to rely upon its declarant(s) in the joined
`proceedings.; and (c) in this scenario, would Senju oppose joinder.
`
`1
`
`SENJU EXHIBIT 2004
`INNOPHARMA v SENJU
`IPR2016-00091
`
`PAGE 1 OF 2
`
`
`
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571‐272‐4645
`
`
`
`From: Diner, Bryan [mailto:bryan.diner@finnegan.com]
`Sent: Tuesday, December 08, 2015 8:29 AM
`To: Trials
`Cc: Malik, Jitty; EXT- bryan.skelton@alston.com; Soderstrom, Lance; Dyellin@crowell.com; jlindsay@crowell.com; Diner,
`Bryan; Hasford, Justin; Goldberg, Joshua; Ferrill, Elizabeth
`Subject: Unopposed Second Request for Extension of Time to File Oppositions to Motion for Joinder (IPR2016-00089;
`IPR2016-00090; IPR2016-00091)
`
`Subject: Unopposed Second Request for Extension of Time to File Oppositions to Motion for Joinder (IPR2016‐00089;
`IPR2016‐00090; IPR2016‐00091)
`
`
`
`Your Honors:
`
`
`Patent Owner Senju’s Oppositions to InnoPharma’s Motions for Joinder in IPR2016‐00089, IPR2016‐00090, and IPR2016‐
`00091 are currently due on Friday, December 11, 2015. The Board and the parties also are scheduled to discuss the
`global coordinated schedule in the above‐mentioned IPRs, among others, on December 11, 2015. Should the Board
`eventually adopt the parties’ proposed global coordinated schedule, then Senju would not need to file these
`Oppositions.
`
`In view of the scheduled call with the Board, Patent Owner Senju requests a further extension of time to file its
`Oppositions until Friday, December 18 or until two business days after the Board rules on the parties’ global
`coordination proposal. Petitioner InnoPharma does not oppose this request.
`
`
`Respectfully,
`Bryan Diner, Reg. No. 32,409
`Lead Counsel for Patent Owner
`
`
`Bryan C. Diner
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4116 | fax: 202.408.4400 | bryan.diner@finnegan.com | www.finnegan.com
`
`
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`
`
`
`2
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`PAGE 2 OF 2