`Sent:
`To:
`Cc:
`Subject:
`
`Malik, Jitty <Jitty.Malik@alston.com>
`Friday, February 5, 2016 10:32 AM
`Trials
`Dyellin@crowell.com; Ferrill, Elizabeth
`RE: Motion for Joinder (IPR2016-00089; IPR2016-00090; IPR2016-00091)
`
`Ms. Vignone,
`
`Thank you for the confirmation, a small typographic error was brought to my attention in the first paragraph in my email
`below. In reference to IPR2015‐01099 (highlighted below), I meant to refer to IPR2015‐01097. The second paragraph
`correctly lists IPR2015‐01097.
`
`Thanks,
`
`Jitty Malik
`
`
`
`From: Vignone, Maria [mailto:Maria.Vignone@USPTO.GOV] On Behalf Of Trials
`Sent: Thursday, February 4, 2016 10:09 AM
`To: Malik, Jitty; Trials
`Cc: Skelton, Bryan; Soderstrom, Lance; Dyellin@crowell.com; jlindsay@crowell.com; Hasford, Justin; Goldberg, Joshua;
`Ferrill, Elizabeth; Mukerjee, Deepro; Diner, Bryan
`Subject: RE: Motion for Joinder (IPR2016‐00089; IPR2016‐00090; IPR2016‐00091)
`
`Counsel: This confirms receipt of your email of February 4th, relating to agreements made between InnoPharma and
`Lupin in connection with the above IPRs. No conference call is required at this time.
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`703‐756‐1288
`
`
`
`From: Malik, Jitty [mailto:Jitty.Malik@alston.com]
`Sent: Thursday, February 04, 2016 7:34 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Skelton, Bryan <Bryan.Skelton@alston.com>; Soderstrom, Lance <Lance.Soderstrom@alston.com>;
`Dyellin@crowell.com; jlindsay@crowell.com; Hasford, Justin <Justin.Hasford@finnegan.com>; Goldberg, Joshua
`<Joshua.Goldberg@finnegan.com>; Ferrill, Elizabeth <Elizabeth.Ferrill@finnegan.com>; Mukerjee, Deepro
`<Deepro.Mukerjee@alston.com>; Diner, Bryan <bryan.diner@finnegan.com>
`Subject: Motion for Joinder (IPR2016‐00089; IPR2016‐00090; IPR2016‐00091)
`
`Dear PTAB:
`
`1
`
`SENJU EXHIBIT 2007
`INNOPHARMA v SENJU
`IPR2016-00091
`
`PAGE 1 OF 4
`
`
`
` I
`
` am counsel for Petitioners InnoPharma et al. in IPR2016‐00089, IPR2016‐00090, and IPR2016‐00091. In connection
`with those IPRs, InnoPharma has filed motions to join IPR2015‐01099, IPR2015‐01100 and IPR2015‐01105, filed by
`Lupin. Following the conference with the Board (see email correspondence below), the parties have continued to
`discuss issues related to joinder.
`
`In connection with those continuing discussions, and in the interests of facilitating joinder, InnoPharma will agree to
`proceed in IPR2015‐01097, IPR2015‐01100, and IPR2015‐01105 based only upon the arguments and evidence advanced
`by Lupin in its earlier‐filed actions and accept a back‐seat, “understudy” role in those joined proceedings, without any
`right to separate or additional briefing or discovery, unless authorized by the Board upon a request to address an issue
`that is unique to InnoPharma. Only if Lupin drops out of the proceedings for any reason, will InnoPharma cease its
`understudy role. The conditions are the same as to what Lupin agreed to in connection with its corresponding motion
`for joinder to join InnoPharma’s IPR (IPR2015‐00903), which the Board granted. See, e.g., IPR2015‐0187 (Paper
`13). Moreover, InnoPharma has contacted Lupin, and Lupin has agreed to permit InnoPharma to rely upon its declarant
`(Dr. Lawrence) in the joined proceedings.
`
`InnoPharma is available to have a conference with the Board should the Board have any other questions or concerns.
`
`Counsel for Patent Owner and Lupin have been copied on this email.
`
`Respectively,
`
`Jitty Malik
`Lead Counsel for Petitioner InnoPharma et al.
`
`
`
`_____________________________________________
`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: Vignone, Maria [mailto:Maria.Vignone@USPTO.GOV] On Behalf Of Trials
`Sent: Wednesday, December 9, 2015 2:30 PM
`To: Diner, Bryan; Trials
`Cc: Malik, Jitty; Skelton, Bryan; Soderstrom, Lance; Dyellin@crowell.com; jlindsay@crowell.com; Hasford, Justin;
`Goldberg, Joshua; Ferrill, Elizabeth
`Subject: 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)
`
`2
`
`PAGE 2 OF 4
`
`
`
`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.
`
`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; Hansford, 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)
`
`3
`
`PAGE 3 OF 4
`
`
`
`
`
`
`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
`
`
`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
`your mailbox. Thank you.
`
`
`
`
`
`NOTICE: This e‐mail message and all attachments may contain legally privileged and confidential information
`intended solely for the use of the addressee. If you are not the intended recipient, you are hereby notified
`that you may not read, copy, distribute or otherwise use this message or its attachments. If you have received
`this message in error, please notify the sender by email and delete all copies of the message immediately.
`
`4
`
`PAGE 4 OF 4