`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARGENTUM PHARMACEUTICALS LLC, MYLAN PHARMACEUTICALS
`INC., BRECKENRIDGE PHARMACEUTICAL, INC., AND ALEMBIC
`PHARMACEUTICALS, LTD.,
`
`Petitioners,
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPRZO16-002041
`
`Patent No. RE 38,551
`
`PATENT OWNER’S NOTICE OF OFFICE ACTION
`
`IN CO-PENDING EX PARTE REEXAMINATION
`
`1 Case IPR2016—O1101, Case IPR2016—01242, and Case IPR2016—01245 have been
`
`joined with this proceeding.
`
`DC: 62932524
`
`
`
`IPR2016-00204
`
`Further to the Board’s Decision Denying Petitioner’s Motion to Consolidate
`
`(Paper 42), Patent Owner
`
`files herewith an Office Action in Ex Parte
`
`Reexamination dated December 5, 2016 that issued in co-pending reexamination
`
`Control No. 90/013,709 (EX. 2192). The office action makes the following claim
`
`rejections. Rejections (1) and (2) are the same as instituted Grounds 3A and 3B.
`
`(1) Claims 1-9 ofthe ’551 Patent are rejected under 35 U.S.C. § 103(a) over
`
`Kohn 1991 and Silvermang
`
`(2) Claims 10-13 of the ’551 Patent are rejected under 35 U.S.C. § 103(a)
`
`over Kohn 1991, Silverman, and U.S. Patent No. 5,378,729;
`
`(3) Claims 1-9 are rejected on the ground of nonstatutory double patenting
`
`as unpatentable over claim 45 of U.S. Patent No. 5,654, 301 in View of Kohn 1991
`
`and the ‘729 patent;
`
`(4) Claim 10 is rejected on the ground of nonstatutory double patenting as
`
`unpatentable over claim 46 of U.S. Patent No. 5,654, 301 in View of Kohn 1991
`
`and the ‘729 patent; and
`
`(5) Claims 11-—13 are rejected on the ground of nonstatutory double patenting
`
`as unpatentable over claim 47 of U.S. Patent No. 5,654, 301 in View of Kohn 1991
`
`and the ‘729 patent.
`
`
`
`
`Date: December 7 2016
`
`Respectfully submitted,
`
`IPR2016-00204
`
`
`
`Andrea G. Reistei
`Registration No.: 36,253
`Jennifer L. Robbins
`
`Registration No.2 61,163
`
`Enrique D. Longton
`
`Registration No.: 47,304
`
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`
`Washington, DC 20001
`
`(202) 662-6000
`
`Attorney for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant
`
`to 37 C.F.R. § 42.6,
`
`I hereby certify that on this 7th day of
`
`December 2016, the foregoing Patent Owner’s Notice of Office Action in Co-
`
`Pending Ex Parte Reexamination was served by electronic mail, by agreement of
`
`the parties, on the following counsel of record for Petitioners.
`
`PETITIONER (IPR2016—00204)
`Matthew J . Dowd (mjdowd@dowdpllc.com)
`DOWD PLLC
`
`William G. Jenks (wjenks@jenksiplaw.com)
`JENKS IP LAW
`
`PETITIONER (IPRZO16-01101)
`Steven W. Parmelee (sparmelee@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`Jad A. Mills (jmills@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`PETITIONER (IPR2016-Ol242)
`Matthew L. Fedowitz (mfedowitz@merchantgould.com)
`Daniel R. Evans (devans@merChantgould.com)
`MERCHANT & GOULD P.C.
`
`PETITIONER (IPR20l6—Ol245)
`Gary J . Speier (gspeier@carlsoncaspers.com)
`Jeffer Ali (jali@carlsoncaspers.com)
`CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCI/I/UMN, P.A.
`s’
`
`
`i'.....»::i2‘./2? ‘C7
`Andrea G. Rye/igster, Esq.
`Reg. No.: 36,253
`
`Date: December 7, 2016
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