`_______________
`
`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 IPR2016-002041
`Patent RE38,551 E
`_______________
`
`PETITIONER RESPONSE TO
`PATENT OWNER’S IDENTIFICATION OF
`PETITIONERS’ ARGUMENTS AND EVIDENCE REGARDING SCOPE
`AND FORM OF PETITIONER REPLY
`
`
`
`
`
`
`
`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245
`have been joined with this proceeding.
`
`
`
`
`
`I.
`
`PATENT OWNER ARGUMENT JUSTIFYING CITATION TO LEGALL
`
`See Resp. 51-58, 53 (citing Ex.2036 ¶¶305-309); Ex. 2036 ¶¶305
`
`(disagreeing “with Dr. Wang’s conclusion [Ex.1002 ¶132] . . . that R,S BAMP is
`
`the ‘closest prior art’”); Ex.1002 ¶132 (“the closest prior art is racemic lacosamide,
`
`as disclosed in LeGall”); Ex.2036 ¶307-09; Resp. 47, 51-58. Resp. 41 (“Eli Lilly
`
`was well aware of … Petitioner’s so-called ‘racemic lacosamide’ having a
`
`methoxymethyl moiety at the α-carbon, but showed no interest in either compound.
`
`See Ex.2068; Ex.2036 ¶¶272, 293.”). See Resp. 52 (arguing that “a POSA would
`
`have had no reason to expect” lacosamide to exhibit particular properties,
`
`including “high potency”); Ex.1050, at 158, 159, 208-216 (same); Resp. 54
`
`(“skepticism”).
`
`II.
`
`PATENT OWNER ARGUMENT JUSTIFYING CITATION TO ’301 PATENT
`
`Resp. 28-29 (arguing a POSA “would not have changed the methoxyamino
`
`to a methoxymethyl as Petitioner proposes”); id. at 36 (“a POSA would not have
`
`reasonably expected success in substituting methoxyamino with methoxymethyl”);
`
`Pet. 46-47 (“methoxymethyl is specifically claimed at the α-carbon position in the
`
`’301 patent”); id. at 19-21; Resp. 52-54 (unexpected results, citing Exs. 2036 and
`
`2038); Resp. 58-60 (commercial success and identifying ‘301 patent as blocking
`
`patent); Resp. 59 (characterizing size of genus of ‘301 patent).
`
`
`
`1
`
`
`
`
`
`III. PATENT OWNER ARGUMENT JUSTIFYING RELIANCE ON KEPPRA
`E.g., Resp. 57 (asserting that certain properties “were not exhibited by any
`
`other single prior art AED”) (citing Ex.2038 ¶¶70–76, 96-99); Resp. 6-8, 51-58
`
`(secondary considerations) (citing Exs.2036 and 2038); Ex.1048, at 235-239.
`
`IV. PETITIONER COMPLIED WITH RULES REGARDING WORD COUNT
`Patent Owner complains about the citation form “Ex.##” but cites no PTAB
`
`rule. Petitioner’s citation format conforms with the analogous Federal Circuit rule.
`
`See Fed. Cir. R. 28 (f) (requiring appendix citations to be “as short as possible
`
`consistent with clarity and must follow the numbering format specified in Federal
`
`Circuit Rule 30(b)(4)(E), e.g., ‘Appx134,’ ‘Appx3-17’ or ‘SAppx1185’”).
`
`Patent Owner itself changed its citation format (from “¶ #” to “¶#”) to
`
`eliminate spaces in its Patent Owner Response. Compare Patent Owner
`
`Preliminary Response at 3, 12, 20, 25, 43, 46, 49, 55, with Patent Owner Response
`
`at passim (over 100 instances of no space between “¶” and number).
`
`Patent Owner cites to images, but Petitioner “may rely on the word count of
`
`the word-processing system used to prepare the paper.” 37 C.F.R. § 42.24(d).
`
`Petitioner was 70 words under the limit. See Reply, Certificate of Word Count
`
`(“5,530 words”). Patent Owner’s own image would, if deconstructed, cause the
`
`Response to exceed its word limit. See Resp. 11. Further, the images do not add
`
`text to the brief but merely act as citations to portions of exhibits in the record.
`
`
`
`2
`
`
`
`
`
`Dated: December 9, 2016
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`/Matthew J. Dowd/
`Matthew J. Dowd
`Reg. No. 47,534
`Dowd PLLC
`1717 Pennsylvania Avenue, NW
`Suite 1025
`Washington, DC 20006
`Phone: (202) 573-3853
`mjdowd@dowdpllc.com
`
`William G. Jenks
`Reg. No. 48,818
`Jenks IP Law
`1050 17th ST NW
`Suite 800
`Washington, D.C. 20036
`Phone: (202) 412-7964
`wjenks@jenksiplaw.com
`
`Counsel for Petitioner
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 9th day of December 2016, the foregoing
`
`PETITIONER RESPONSE TO
`PATENT OWNER’S IDENTIFICATION OF
`PETITIONERS’ ARGUMENTS AND EVIDENCE REGARDING SCOPE
`AND FORM OF PETITIONER REPLY
`
`
`
`was served by electronic mail on the following counsel of record for Patent Owner:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Andrea G. Reister (areister@cov.com)
`Jennifer L. Robbins (jrobbins@cov.com)
`Enrique D. Longton (elongton@cov.com)
`Covington & Burling LLP
`One CityCenter
`850 Tenth Street NW
`Washington, DC 20001
`(202) 662-6000
`
`Dated: December 9, 2016
`
`
`
`By:
`
`
`/Matthew J. Dowd/
`Matthew J. Dowd
`Reg. No. 47,534
`Dowd PLLC
`1717 Pennsylvania Ave, NW
`Suite 1025
`Washington, DC 20006
`Phone: (202) 573-3853
`mjdowd@dowdpllc.com
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
