UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`J KYLE BASS and ERICH SPANGENBERG,
`
`
`
`Petitioners
`
`
`
`v.
`
`
`
`FRESENIUS KABI USA, LLC
`
`
`
`Patent Owner
`
`
`
`Case No. IPR2016-00254
`U.S. Patent No. 8,476,010
`
`
`
`UPDATED PATENT OWNER’S EXHIBIT
`
`
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`
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`J KYLE BASS and ERICH SPANGENBERG,
`
`
`
`Petitioners
`
`
`
`v.
`
`
`
`FRESENIUS KABI USA, LLC
`
`
`
`Patent Owner
`
`
`
`Case No. IPR2016-00254
`U.S. Patent No. 8,476,010
`
`
`
`UPDATED PATENT OWNER’S EXHIBIT
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.63(e), Patent Owner submits the following
`
`
`
`exhibit list.
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
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`2005
`
`2006
`
`2007
`
`2008
`
`Description
`Routes of Administration and Dosage Forms:
`Pharmacology Introduction, MERCK VETERINARY MANUAL
`(March 7, 2016), available at:
`http://www.merckvetmanual.com/mvm/pharmacology/phar
`macology_introduction/routes_of_administration_and_dosa
`ge_forms.htm
`
`George H. Hopkins, Elastomeric Closures for
`Pharmaceutical Packaging, T.J., Vol. 54, No. 1, 138-143
`(1965)
`
`Steven L. Shafer, et al., Intravenous Anesthesia: Techniques
`and New Drugs (1990)
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Information Disclosure Statement dated Nov.
`10, 2011 (including International Search Report and Written
`Opinion of the International Search Authority concerning
`PCT/US2004/020923)
`
`David F. Capes, et al., The Effect on Syringe Performance of
`Fluid Storage and Repeated Use: Implications for Syringe
`Pumps, PDA J. Pharm. Sci. and Tech. 1996, 50, 40-50
`(1996)
`
`D. Lomax, Propofol Injection Pain, Anaesthesia and
`Intensive Care, Vol. 22, No. 4 (Aug. 4, 1994)
`
`Eric L. Cermin, et al., Any Propofol Compatibility Study
`Must Include an Emulsion Stability Analysis, Anesth.
`Analg., 91, 1306-13 (2000)
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Examiner-Initialed Copy of Information
`Disclosure Statement (considered July 20, 2006)
`
`
`
`1
`
`
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Information Disclosure Statement (including EP
`390,244 A1)
`
`U.S. Patent No. 6,576,245
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Office Action dated Aug. 23, 2006
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Reply to Office Action dated Nov. 16, 2006
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Office Action dated Mar. 22, 2010
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Response to Office Action dated Dec. 16, 2010
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Office Action dated Nov. 29, 2011
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Reasons for Pre-Appeal Brief Request for
`Review dated Mar. 29, 2012
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Notice of Panel Decision from Pre-Appeal Brief
`Review dated Apr. 20, 2012
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Applicant-Initiated Interview Summary dated
`Nov. 16, 2012
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Notice of Allowability dated Apr. 30, 2013
`
`Joseph Walker, et al., New Hedge Fund Strategy: Dispute
`the Patent, Short the Stock, WALL STREET JOURNAL, Apr. 7,
`2015, available at: www.wsj.com/articles/hedge-fund-
`manager-kyle-bass-challenges-jazz-pharmaceuticals-patent-
`1428417408
`
`
`
`2
`
`
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`
`
`Zachary Silbersher, Why Are Bass and Spangenberg Filing
`IPR Petitions By Themselves?, Markman Advisors, Nov. 30,
`2015, available at:
`http://www.markmanadvisors.com/blog/2015/11/30/why-
`are-bass-and-spangenberg-filing-ipr-petitions-by-
`themselves/
`
`Lisa Schuchman, The Saga Continues: Kyle Bass and
`Partner File Personal, ‘Altruistic’ Challenges to Drug
`Patents, CORPORATE COUNSEL, Dec. 1, 2015, available at:
`http://www.corpcounsel.com/id=1202743748187/The-Saga-
`Continues-Kyle-Bass-and-Partner-File-Personal-Altruistic-
`Challenges-to-Drug-Patents
`
`Michael Loney, Kyle Bass’s Success at the PTAB – An
`Update, MANAGING INTELLECTUAL PROPERTY, Dec. 22,
`2015, available at:
`http://www.managingip.com/Blog/3516275/Kyle-Basss-
`success-rate-at-the-PTAB-an-update.html
`
`U.S. Patent No. 5,163,919
`
`Diazepam, IARC Monograph, Vol. 66
`
`Max T. Baker, et al., Propofol – The Challenges of
`Formulation, Anesthesiology, Vol. 103, No. 4 (Oct. 2005)
`
`Intentionally Left Blank
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Office Action dated Jul. 6, 2009
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Office Action dated Jan. 28, 2011
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Reply to Office Action dated Nov. 5, 2009
`
`Excerpt from file history of U.S. Pat. App. Serial. No.
`10/616,709, Response to Office Action dated Jul. 28, 2011
`
`
`
`3
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`
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`2032
`
`2033
`
`2034
`
`Declaration of Samuel E. Sherry in Support of Patent
`Owner’s Motion for Pro Hac Vice Admission of Samuel E.
`Sherry Under 37 C.F.R. § 42.10(c)
`
`Declaration of Daryl L. Wiesen in Support of Patent
`Owner’s Motion for Pro Hac Vice Admission of Daryl L.
`Wiesen Under 37 C.F.R. § 42.10(c)
`
`Declaration of John T. Bennett in Support of Patent Owner’s
`Motion for Pro Hac Vice Admission of John T. Bennett
`Under 37 C.F.R. § 42.10(c)
`
`
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`4
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing document captioned
`
`UPDATED LIST OF PATENT OWNER’S EXHIBITS was served electronically
`
`via e-mail on this 4th day of August, 2016, as follows:
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Christopher Casieri
`McNeely, Hare & War LLP
`chris@miplaw.com
`
`
`
`
`
`
` /Eleanor M. Yost/
`
`5
`
`
`Dated: August 4, 2016
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