IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARGENTUM PHARMACEUTICALS LLC, MYLAN PHARMACEUTICALS
`INC., BRECKENRIDGE PHARMACEUTICAL, INC., AND ALEMBIC
`PHARMACEUTICALS, LTD.,
`Petitioners,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2016-002041
`Patent No. RE 38,551
`
`PATENT OWNER’S OBJECTIONS TO
`PETITIONERS’ DEMONSTRATIVES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245 have been
`
`joined with this proceeding.
`
` DC: 6329080-2
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARGENTUM PHARMACEUTICALS LLC, MYLAN PHARMACEUTICALS
`INC., BRECKENRIDGE PHARMACEUTICAL, INC., AND ALEMBIC
`PHARMACEUTICALS, LTD.,
`Petitioners,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2016-002041
`Patent No. RE 38,551
`
`PATENT OWNER’S OBJECTIONS TO
`PETITIONERS’ DEMONSTRATIVES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245 have been
`
`joined with this proceeding.
`
` DC: 6329080-2
`
`
`
`
`
`
`
`IPR2016-00204
`
`Pursuant to the Board’s Order – Request for Oral Argument (Paper 79),
`
`Patent Owner conferred with Petitioners, and hereby provides a listing of
`
`remaining objections to Petitioners’ demonstratives.
`
`The arguments regarding levetiracetam in Slide 4, Slide 5, Slide 59, Slide
`
`60 and Slides 66-76 were not present in the petition (Paper 2), and are outside the
`
`scope of a proper reply. See Patent Owner’s Identification of Petitioners’
`
`Arguments and Evidence Outside the Scope of a Proper Reply and Improper
`
`Techniques that Circumvent Word Count (Paper 57) p. 2.
`
`The arguments in Slide 23, Slide 24, Slide 46, and Slide 81 rely on the
`
`LeGall thesis (Ex. 1008), which the Board has already determined is not prior art
`
`(Paper 19 p. 12). See Paper 57 p. 1. In addition, the timeline on Slide 33
`
`mischaracterizes the record evidence by presenting the LeGall thesis (Ex. 1008) as
`
`prior art.
`
`The citation in the first bullet on Slide 18 mischaracterizes the cited
`
`evidence. Page 21 of Ex. 1013 (Silverman) states in full: “It is, actually, quite
`
`surprising that bioisosterism should be such a successful approach to lead
`
`modification.” (emphasis added).
`
`The argument and evidence in Slide 22 are included in non-instituted
`
`Ground 2A of the petition (Paper 2 pp. 37-38), but are not included, or referred to,
`
`1
`
`
`
`
`
`
`
`IPR2016-00204
`
`in the instituted Grounds 3A and 3B of the petition (Paper 2 pp. 44-48), or included
`
`in the reply (Paper 52).
`
`The argument in the second bullet on Slide 26 is not made on cited pages 16
`
`or 54 of the petition, cited pages 41-42 relate to non-instituted Ground 2A and are
`
`not referred to in the instituted Grounds 3A and 3B (Paper 2 pp. 44-48), and this
`
`argument is not included in the reply (Paper 52).
`
`The second bullet on Slide 29 mischaracterizes the cited evidence. In ¶ 277
`
`of his declaration (Ex. 2036), Dr. Roush testified as follows: “While the N-O bond
`
`is often viewed as labile, it was not known that it was, in fact, labile in Compound
`
`3l.”
`
`The argument in the third bullet on Slide 37 is unsupported by the cited
`
`evidence, and it is not present in the petition (Paper 2) or the reply (Paper 52).
`
`The argument in the title of Slide 43 mischaracterizes Patent Owner’s
`
`position. Page 27 of the Patent Owner Response (Paper 35) states as follows: “In
`
`his 1994 publication, his second-to-last publication before the 1996 priority date,
`
`Dr. Kohn attributed this good activity to the presence of a ‘basic C(α)-amino
`
`substituent,’ or a nitrogen atom capable of accepting a hydrogen bond. Ex. 2055
`
`at 691; Ex. 2036 ¶¶251-252.” (emphasis added).
`
`The evidence in Slide 44 is included in non-instituted Ground 2A of the
`
`petition (Paper 2 pp. 37-38), but is not included, or referred to, in the instituted
`
`2
`
`
`
`IPR2016—00204
`
`Grounds 3A and 3B of the petition (Paper 2 pp. 44-48), or included in the reply
`
`(Paper 52).
`
`The argument in the second bullet of Slide 45 directed to liver toxicity is not
`
`present in the petition (Paper 2) or the reply (Paper 52).
`
`The cited Patent Owner evidence (Ex. 2038, llil 26, 53) does not support the
`
`argument in the third bullet on Slide 48.
`
`The argument in Slide 54 is not present in the petition (Paper 2) or the reply
`
`(Paper 52).
`
`The argument and evidence in Slide 77 are not supported by the cited
`
`evidence or present in the petition (Paper 2) or reply (Paper 52).
`
`Date: January 19, 2017
`
`Respectfully submitted,
`
`f
`
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`
`
`
`Andrea G. Reister 3,
`Registration No:: 36,253
`Jennifer L. Robbins
`
`Registration No.: 61,163
`
`Enrique D. Longton
`
`Registration No.: 47,304
`
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`
`(202) 662-6000
`
`Attorneys for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6,
`
`I hereby certify that on this 19th day of
`
`January 2017,
`
`the
`
`foregoing Patent Owne1"s Objections
`
`to Petitioners’
`
`Demonstratives was served by electronic mail, by agreement of the parties, on the
`
`following counsel of record for petitioner.
`
`PETITIONER (IPR2016—00204)
`Matthew J. Dowd (mjdowd@dowdpl1c.com)
`DOWD PLLC
`
`William G. Jenks (wjenks@jenksiplaw.com)
`JENKS IP LAW
`
`PETITIONER (IPR2016—01101)
`Steven W. Parmelee (sparmelee@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`Jad A. Mills (jmills@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`PETITIONER (IPR2016—01242)
`Matthew L. Fedowitz (mfedowitz@merchantgould.co1n)
`Daniel R. Evans (devans@merchantgou1d.com)
`MERCHANT & GOULD P.C.
`
`PETITIONER (IPR2016—01245)
`Gary J . Speier (gspeier@carlsoncaspers.com)
`Jeffer Ali (ja1i@carlsoncaspers.com)
`CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN, P.A.
`
`Date: January 19, 2017
`
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`
`
`Andreavéj Reister,
`Reg. No.: 36,253
`
`O
`
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`
`
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