Page 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`-----------------------------------------------
`Re: Transcript of telephone conference in the
`matter of
`TEVA PHARMACEUTICALS USA, INC.,
` Petitioner,
` v.
`MONOSOL RX LLC
`Patent Owner
`IPR2016-00281 and IPR2016-00282
`and
`INDIVIOR
`Patent Owner
`IPR2016-00280
` February 17, 2016
` 1:02 p.m.
`Panel:
`IPR2016-00280
`APJ Bonilla
`APJ Schneider
`APJ Yang
`IPR2016-00281 AND IPR2016-00282
`APJ Franklin
`APJ Hulse
`APJ Paulraj
`PETITIONER:
`Elizabeth Holland, Esq.
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`eholland@goodwinprocter.com
`
`12
`
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`TEVA EXHIBIT 1040
`TEVA PHARMACEUTICALS USA, INC. V. MONOSOL RX, LLC
`IPR2016-00281
`
`

`
`Page 2
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`Page 4
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`1 TELEPHONE CONFERENCE
`2 Yost.
`3 JUDGE FRANKLIN: Thank you. And
`4 patent owner of MonoSol?
`5 MR. SCOLA: This is Daniel Scola
`6 for MonoSol on the 281 and 282, as
`7 well as Michael Chakansky.
`8 JUDGE FRANKLIN: Mr. Scola, did
`9 you agree to have this combined
`10 conference call?
`11 MR. SCOLA: Yes, we did.
`12 JUDGE FRANKLIN: Patent Owner,
`13 you'll have to help me with the name
`14 here.
`15 MS. REISTER: Indivior.
`16 JUDGE FRANKLIN: Thank you.
`17 MS. REISTER: This is Andrea
`18 Reister from Covington on behalf of
`19 Indivior with Rick Longton, also from
`20 Covington, and we also consent to have
`21 the joint call.
`22 JUDGE FRANKLIN: Thank you. Do I
`23 understand that we have a court
`24 reporter on the line?
`25 MS. HOLLAND: Yes.
`
`1 TELEPHONE CONFERENCE
`2 Eleanor M. Yost, Esq.
`Goodwin Procter, LLP
`3 901 New York Avenue N.W.
`Washington, D.C. 20001
`4 eyost@goodwinprocter.com
`
`56
`
`MONOSOL PATENT OWNER:
`7 Daniel Scola, Esq.
`Michael Chakansky, Esq.
`8 Hoffmann & Baron, LLP
`6900 Jericho Turnpike
`9 Syosset, NY 11791
`dscola@hbiplaw.com
`10 mchakansky@hbiplaw.com
`11
`12 INDIVIOR PATENT OWNER:
`13 Andrea Reister, Esq.
`Rick Longton, Esq.
`14 Covington & Burling, LLP
`One CityCenter
`15 850 Tenth Street, NW
`Washington, DC 20001-4956
`16 areister@cov.com
`elongton@cov.com
`
`17
`18
`19
`20
`21
`22
`23
`24
`25
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`Page 3
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`Page 5
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`1 TELEPHONE CONFERENCE
`2 JUDGE FRANKLIN: Good afternoon
`3 this is Judge Franklin and this is a
`4 conference call for IPR2016-00280,
`5 00281 and 00282 and I have on the call
`6 with me the judges on the panels for
`7 these cases. For the 280 case we have
`8 Judges Schneider, Bonilla and Yang and
`9 for the 281 and 282 cases we have
`10 Judges Franklin, Hulse and Paulraj.
`11 Before we begin I want to check
`12 with counsel for each party to
`13 determine whether you agree to have
`14 this consolidated and combined
`15 conference call for the 280 case along
`16 with the 281 and 282 cases. Let's
`17 begin with Petitioner.
`18 MS. HOLLAND: Good afternoon,
`19 Your Honor. This is Elizabeth Holland
`20 of Goodwin Procter for Petitioner and
`21 yes, we've consented to have this
`22 joint call.
`23 JUDGE FRANKLIN: Who is with you
`24 on the call?
`25 MS. HOLLAND: With me is Eleanor
`
`1 TELEPHONE CONFERENCE
`2 JUDGE FRANKLIN: Who has arranged
`3 for the court reporter?
`4 MS. HOLLAND: The Petitioner has
`5 arranged for the court reporter.
`6 JUDGE FRANKLIN: Then we'll ask
`7 you to then file in each case a copy
`8 of the transcript by the court
`9 reporter as soon as it's available.
`10 MS. HOLLAND: We will do that,
`11 Your Honor.
`12 JUDGE FRANKLIN: So this
`13 conference call was prompted by
`14 Petitioner's request to have the
`15 filing accorded and the 281 and 282
`16 cases changed from changed December 4,
`17 2015 to December 3, 2015. So let's
`18 begin with Petitioner addressing that
`19 issue briefly.
`20 MS. HOLLAND: Yes, Your Honor.
`21 There are actually three IPRs that
`22 were intended to all be filed on
`23 December 3rd: 280, 281 and 282. When
`24 the documents were being uploaded
`25 those dates we experienced unusual
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`2 (Pages 2 - 5)
`
`212-490-3430
`
`TEVA EXHIBIT 1040
`TEVA PHARMACEUTICALS USA, INC. V. MONOSOL RX, LLC
`IPR2016-00281
`
`

`
`1 TELEPHONE CONFERENCE
`2 delays in the PRPS system. The system
`3 was freezing. It just took a really
`4 long time, much longer than we've
`5 experienced in the past to get
`6 everything uploaded. Notwithstanding
`7 all those difficulties, we are able to
`8 get the petitions and exhibits all
`9 uploaded on December 3rd. However,
`10 with respect to the 281 and 282 cases,
`11 we also experienced difficulties with
`12 getting the payment accepted on the
`13 PRPS system. We got several messages
`14 saying that the system couldn't
`15 process the payment and either "try
`16 again" or "try a new method of
`17 payment." By the time we sorted
`18 through those difficulties with the
`19 payment it was for the '541 patent,
`20 either right before or right after the
`21 stroke of midnight and then for the
`22 '150 was a couple of minutes later, I
`23 think it was 12:09. So everything was
`24 ready to go on the third. It was all
`25 uploaded on the third. It was simply
`
`1 TELEPHONE CONFERENCE
`2 a matter of not being able to get the
`3 payment processed due to maybe a
`4 combination of different things that
`5 were happening on the system but once
`6 the payments were processed we
`7 submitted everything.
`8 JUDGE FRANKLIN: Counselor, let
`9 me stop you there because in the
`10 e-mail from Ms. Yost there is an
`11 indication in the subject line that
`12 there were technical difficulties.
`13 And in the body of the e-mail I think
`14 there is some assertion that there was
`15 a crash in the system. Is it your
`16 position that the difficulties you
`17 experienced uploading the petitions or
`18 making payment were due to system
`19 errors or simply insufficient funds
`20 being applied?
`21 MS. HOLLAND: I guess let me
`22 start with whether or not there were
`23 system errors. What I can tell you,
`24 Your Honor, is that we experienced a
`25 lot of delays with the system so the
`
`Page 6
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`Page 8
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`1 TELEPHONE CONFERENCE
`2 system crashed, froze, we had to
`3 reboot. Can I tell you for sure that
`4 it was the PRPS system and not a
`5 combination of that and our system? I
`6 don't know. I mean, we tried to
`7 troubleshoot it best we could that
`8 night. We tried many different
`9 things; logging out, logging in again.
`10 And as I said, we were able to
`11 accomplish all the uploading of the
`12 petition and exhibits on December 3rd.
`13 With respect to the payments, what we
`14 received that night when we were
`15 trying different methods of payment
`16 was simply an error that didn't
`17 indicate there were insufficient funds
`18 it's just that we can't process, try
`19 again or try a new method of payment.
`20 JUDGE FRANKLIN: Let me stop you
`21 again. I'm going to ask you two
`22 questions: The first one being, when
`23 did you begin trying to upload the
`24 petitions on purpose? Apparently it
`25 was after hours because we did not
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`Page 7
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`Page 9
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`1 TELEPHONE CONFERENCE
`2 receive a call immediately. And the
`3 second question would be: Did you
`4 save or keep or make any screen shots
`5 indicating error messages to support
`6 your position?
`7 MS. HOLLAND: So the first
`8 petition, which was 280, we began
`9 uploading at 9:45. Based on past
`10 experience, we had expected that
`11 process to upload, the petition and
`12 exhibits, to take around 20 minutes or
`13 so. It ended up taking about an hour
`14 and a half, or maybe a little less
`15 than that.
`16 With respect to the error
`17 messages, I'm not sure that there were
`18 error messages, per se. It was more
`19 that the system was freezing, crashing
`20 on us. I'll actually let Ms. Yost
`21 address that because she was the
`22 person actually hands-on so maybe she
`23 can provide a little more level of
`24 detail, if that's what you are looking
`25 for.
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`3 (Pages 6 - 9)
`
`212-490-3430
`
`TEVA EXHIBIT 1040
`TEVA PHARMACEUTICALS USA, INC. V. MONOSOL RX, LLC
`IPR2016-00281
`
`

`
`Page 10
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`Page 12
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`1 TELEPHONE CONFERENCE
`2 MS. YOST: Good afternoon, Your
`3 Honor. With respect to the document
`4 uploading errors, what we experienced
`5 were when documents went to be
`6 uploaded what we usually see is a
`7 small circle that then as the document
`8 is being uploaded and then the
`9 document is made available on the
`10 system. In our experience that
`11 evening the little circle would go for
`12 quite a while and then stop. And what
`13 that would necessitate would be a hard
`14 exit out of the system. In other
`15 words, we couldn't click anywhere else
`16 in Internet Explorer and so we had to
`17 force close the browser. When we
`18 reopened the browser we were presented
`19 with a screen that had what looked to
`20 me like a padlock on it which I
`21 understood later to mean that we had
`22 to unlock the process that was ongoing
`23 at the time, reenter the uploading
`24 process and then start again. This
`25 happened several times over the course
`
`1 TELEPHONE CONFERENCE
`2 JUDGE FRANKLIN: So the issue
`3 really comes to the payment, the
`4 timing of the payment?
`5 MS. HOLLAND: Yes, that's
`6 correct, Your Honor. And as I said,
`7 we do have e-mails showing that
`8 payment was attempted on both of the
`9 petitions at issue, 281 and 282, prior
`10 to midnight. Those were, as I said
`11 earlier, rejected and we weren't given
`12 any message in terms of why they had
`13 been rejected so we kept trying
`14 different methods payment. And as I
`15 said, for the 281 petition it's
`16 possible that it was actually a couple
`17 of seconds before midnight. The
`18 message that we got that the payment
`19 had been accepted was exactly at
`20 midnight. For the '150 it was a
`21 couple minutes later, 12:09.
`22 JUDGE FRANKLIN: Is there
`23 anything else that you would like to
`24 add regarding your position?
`25 MS. HOLLAND: I just wanted to
`
`Page 11
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`Page 13
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`1 TELEPHONE CONFERENCE
`2 of --
`3 JUDGE FRANKLIN: But the system
`4 did not crash, right? Are you
`5 suggesting that there was a crash in
`6 the system?
`7 MS. YOST: No, the system
`8 wouldn't allow us to do anything --
`9 JUDGE FRANKLIN: To navigate
`10 between pages?
`11 MS. YOST: We couldn't do
`12 anything. Couldn't actually even
`13 change windows on Internet Explorer.
`14 The only thing we could do, that it
`15 would permit us to do, would be a
`16 CONTROL-ALT-DELETE close, a force
`17 close of the entire browser.
`18 JUDGE FRANKLIN: And that was at
`19 the time you were trying to upload the
`20 petitions?
`21 MS. YOST: Correct.
`22 JUDGE FRANKLIN: But all the
`23 petitions were apparently uploaded
`24 prior to midnight?
`25 MS. HOLLAND: Correct.
`
`1 TELEPHONE CONFERENCE
`2 make clear, Your Honor, that as soon
`3 as we discovered that we had been
`4 given this December 4th date, we
`5 immediately wrote an e-mail to the
`6 Board, as I said earlier, as we
`7 discussed earlier, we didn't delay
`8 anything at all. We tried to get this
`9 resolved as soon as possible. We were
`10 told that we would need to wait for
`11 the Panel before we could do anything
`12 about it.
`13 JUDGE FRANKLIN: And --
`14 MS. HOLLAND: I'm sorry, I
`15 apologize, so that's with respect to
`16 the filing. With respect to the
`17 service, we had, again as I said,
`18 intended to file and serve on
`19 December 3rd. Based on a combination
`20 of issues that had to do with trying
`21 to troubleshoot problems with the PRPS
`22 system as well as getting the printing
`23 of all the exhibits and the petitions
`24 done before midnight, it actually
`25 spilled over and we worked diligently
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`4 (Pages 10 - 13)
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`212-490-3430
`
`TEVA EXHIBIT 1040
`TEVA PHARMACEUTICALS USA, INC. V. MONOSOL RX, LLC
`IPR2016-00281
`
`

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`Page 14
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`Page 16
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`1 TELEPHONE CONFERENCE
`2 to get everything printed but it did
`3 not make it to the Fed Ex office until
`4 3 a.m. on December 4th. The
`5 certificates of service actually state
`6 December 3rd because when Ms. Yost was
`7 preparing them it was our intention
`8 and expectation that they would be
`9 served on December 3rd. As it
`10 happens, the clerical staff that was
`11 tasked with getting these things in
`12 the boxes and over to Fed Ex didn't
`13 accomplish that until about 3 a.m. on
`14 the 4th.
`15 JUDGE FRANKLIN: Thank you.
`16 MS. HOLLAND: We did -- I'm
`17 sorry, one more thing on that. In the
`18 afternoon, when we started the process
`19 of the printing of everything, one of
`20 the methods that we tried to
`21 troubleshoot that night about the
`22 difficulties with the freezing, et
`23 cetera, the PRPS system, was to stop
`24 the printing for a period of time to
`25 see if that maybe could alleviate the
`
`1 TELEPHONE CONFERENCE
`2 would be but we were taking them at
`3 their word that there were some things
`4 missing from the boxes.
`5 JUDGE FRANKLIN: What I envision
`6 you doing is speaking more about these
`7 technical difficulties that you are
`8 asserting you experienced and caused
`9 the delay in the filing of the 281 and
`10 282 cases. So we will let Patent
`11 Owner first address their issue with
`12 regard to the certificate of service.
`13 So if you don't have more relating to
`14 the delay of the uploading and filing
`15 of the 281 and 282, I'll ask Patent
`16 Owner MonoSol to respond to what
`17 you've stated there.
`18 MR. SCOLA: Your Honor, this is
`19 Dan Scola. Our position is that we
`20 would oppose any attempt by Petitioner
`21 to change the filing dates of the '514
`22 and the '150 patents, that's the 281
`23 and the 282.
`24 We have two main points to make
`25 and one of them is the late service,
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`Page 15
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`1 TELEPHONE CONFERENCE
`2 problems with uploading the documents
`3 so that caused a delay that was a
`4 factor in it spilling over to 3 a.m.
`5 instead of prior to midnight.
`6 One additional point on the
`7 service, and again this only applies
`8 to 281 and 282 IPRs, we had instructed
`9 the clerical staff to load the boxes
`10 that were going to go out for service
`11 and bring them to Fed Ex and we
`12 assumed that that had been done. We
`13 were informed by Patent Owner on
`14 December 23rd, in the evening, that in
`15 fact they had noticed that there were
`16 some documents missing from the boxes.
`17 Again, this is not something we could
`18 have corrected earlier because we
`19 simply didn't know there was anything
`20 missing from the boxes until we were
`21 alerted to that fact. As soon as we
`22 were alerted by Patent Owner, we
`23 served the documents that they said
`24 had been missing from the boxes. We
`25 obviously had no way to know what they
`
`1 TELEPHONE CONFERENCE
`2 the delivery to Fed Ex on the 4th
`3 where we have a tracking receipt and
`4 you just heard the Petitioner say that
`5 they in fact did deliver it on the
`6 4th. We never received any e-mail
`7 service so we didn't -- you know,
`8 that's one of the requirements for
`9 filing obviously, it's separate than
`10 filing the petition.
`11 And then the amended certificate
`12 of service which was filed on
`13 December 17th was not corrected, it
`14 still said December 3rd. I would just
`15 like to point that out. It didn't
`16 make a correction on December 4th and
`17 we called Fed Ex to confirm that the
`18 boxes were in fact received and we
`19 think this issue is dispositive for
`20 late service as one of the
`21 requirements for obtaining a filing
`22 date.
`23 Incomplete service as well,
`24 that's the second point. On the 281,
`25 we did not receive a declaration and
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`212-279-9424
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`Veritext Legal Solutions
`www.veritext.com
`
`5 (Pages 14 - 17)
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`212-490-3430
`
`TEVA EXHIBIT 1040
`TEVA PHARMACEUTICALS USA, INC. V. MONOSOL RX, LLC
`IPR2016-00281
`
`

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`Page 18
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`1 TELEPHONE CONFERENCE
`2 on the 282 we did not receive the
`3 petition or a declaration. So when we
`4 opened the boxes those papers were not
`5 in them. And we received the boxes,
`6 of course the 4th was a Friday, we
`7 received them on a Monday, and those
`8 were not present in the boxes.
`9 JUDGE FRANKLIN: What did you do
`10 in response to that?
`11 MR. SCOLA: I'm sorry, Your
`12 Honor? Let me make sure I got the
`13 facts straight on this. So on the
`14 281, which is the '514 patent, there
`15 was no copy of the declaration of one
`16 of the experts, Jayan Panyan
`17 (phonetic) -- just making sure I said
`18 that correctly -- and the amended
`19 certificate of service said December
`20 3rd. And then on the 282 IPR, which
`21 is the '150 patent, that was missing
`22 the IPR petition as well as one of the
`23 -- Exhibit 3, which is the expert
`24 declaration. Just making sure the
`25 first time around I got my facts
`
`1 TELEPHONE CONFERENCE
`2 it was the 18th of December, and on
`3 the 21st, I believe, we sent an e-mail
`4 to Trials and I believe -- it might
`5 have been later -- and when we did, we
`6 got bounce back saying that no Panel
`7 had been instituted yet and that we
`8 should send it back in a week or so
`9 and we contacted Petitioner's counsel
`10 and we're here now.
`11 JUDGE FRANKLIN: Thank you. And
`12 Mr. Scola, is there anything else you
`13 wanted to add regarding the 281 and
`14 282 filing date?
`15 MR. SCOLA: No, I don't think so.
`16 Those were the main points. I mean,
`17 other than the fact that there was
`18 some mislabelling but I think those
`19 were -- the Board is aware of that.
`20 The one thing I will say is that we do
`21 have a year to do this and the letter
`22 was written 12:30 -- the e-mail about
`23 the problems was written 12:30 in the
`24 morning on the 4th. It wasn't written
`25 during the problem time. So I'll just
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`1 TELEPHONE CONFERENCE
`2 straight.
`3 JUDGE FRANKLIN: Thank you. We
`4 understand that. My question is what
`5 did you do upon discovering those
`6 items were missing?
`7 MR. CHAKANSKY: We opened the box
`8 around -- we double checked the boxes
`9 on December 14th when see discovered
`10 that there was no petition for the
`11 '150 and the two declarations were
`12 missing. I contacted Trial and asked
`13 them what to do. At that point, the
`14 petitions had not been accorded a
`15 filing date and when we spoke to the
`16 person there they said, "Why don't you
`17 send a letter, an e-mail, to Trials."
`18 By the time I finished it, the
`19 petitions had been accorded -- that
`20 day, the petitions had been accorded
`21 filing dates. I called back and they
`22 said, "Well, go ahead and send --
`23 update your e-mail and send it back to
`24 Trials."
`25 We put in an appearance, I think
`
`1 TELEPHONE CONFERENCE
`2 mention that.
`3 JUDGE FRANKLIN: Thank you. We
`4 are now going to go back to
`5 Petitioner's counsel. And what I
`6 would like you to do is briefly
`7 address those points that Mr. Scola
`8 and Mr. Chakansky raised regarding the
`9 certificate of service and the
`10 incomplete service relating to 281 and
`11 282 cases that you have not already
`12 mentioned previously.
`13 MS. HOLLAND: I don't want to
`14 repeat myself so I'll say quickly on
`15 certificate of service that Ms. Yost
`16 had expected the filing to take place
`17 on December 3rd. That's why the
`18 certificate of service says December
`19 3rd. We wanted to correct the
`20 certificate of service as soon as we
`21 could. We have -- that was one of the
`22 things we wanted to talk about today,
`23 in fact, Your Honor, on the call was
`24 the proper method that the Board would
`25 like us to correct the certificate of
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`212-279-9424
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`Veritext Legal Solutions
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`
`6 (Pages 18 - 21)
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`212-490-3430
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`TEVA EXHIBIT 1040
`TEVA PHARMACEUTICALS USA, INC. V. MONOSOL RX, LLC
`IPR2016-00281
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`1 TELEPHONE CONFERENCE
`2 service.
`3 With respect to the boxes, as I
`4 said earlier, we had instructed the
`5 clerical staff what to put in the
`6 boxes and send those to -- deliver
`7 those to Fed Ex and then they would be
`8 shipped to Patent Owner's counsel. We
`9 did not know there were any issues
`10 with what was in the boxes until
`11 December 23rd, which is the first time
`12 we had gotten any communication from
`13 Patent Owner's counsel on that. I'll
`14 note on the response we just heard, it
`15 sounds like they didn't even open the
`16 boxes until December 14th, which is a
`17 week after they were received.
`18 JUDGE FRANKLIN: Does that
`19 matter?
`20 MS. HOLLAND: It does, Your
`21 Honor, I believe, to the extent there
`22 is any argument about prejudice
`23 because how can there be prejudice
`24 when Patent Owner's didn't take action
`25 to try to get things done as
`
`1 TELEPHONE CONFERENCE
`2 JUDGE FRANKLIN: Tell me this:
`3 If Petitioner is stuck with the 12/4
`4 filing date for the 281 and 282 cases,
`5 is there a (inaudible) that the
`6 Petitioners will barred under 315(b)?
`7 MS. HOLLAND: Yes, Your Honor.
`8 JUDGE FRANKLIN: If we have
`9 nothing more on 281 and 282 cases --
`10 MR. CHAKANSKY: Your Honor?
`11 JUDGE FRANKLIN: This is Michael
`12 Chakansky for Patent Owner MonoSol. I
`13 just want to add one more thing.
`14 Because the Fed Ex boxes were not
`15 dropped off until the 4th, we didn't
`16 receive it until next business day,
`17 the 7th, in Long Island. The file doc
`18 person opened the box, was able to
`19 locate the two petitions and notified
`20 me of it. I had it shipped to my
`21 office here. We have two office, one
`22 in Long Island and New Jersey. I
`23 didn't get those boxes until late on
`24 the 8th and I opened them up on the
`25 14th, which is not too late, and went
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`1 TELEPHONE CONFERENCE
`2 expeditiously as possible? So I do
`3 believe it does impact the prejudice
`4 analysis. With respect to prejudice,
`5 I will also note, Your Honor, that
`6 everything was uploaded and was on the
`7 PRPS system and could have been
`8 downloaded. These were all documents
`9 that were publicly available to Patent
`10 Owner. Of course we understand that
`11 the boxes should have been complete
`12 and that was the intention, but as a
`13 separate matter the Patent Owner would
`14 have known about the filing based on
`15 docket navigator and other systems
`16 that alert to keep tabs on filings and
`17 keep tabs on petitions.
`18 So to the extent here that there
`19 is prejudice, we don't see how there
`20 was any. If there were any missing
`21 documents they certainly could have
`22 been discovered on December 7th rather
`23 than waiting to tell us about them on
`24 December 23rd. And they were also
`25 available publicly on PRPS.
`
`1 TELEPHONE CONFERENCE
`2 through them page by page because
`3 there was no order to them.
`4 Everything was intermixed. I was
`5 searching for the other petition at
`6 that point on the 14th and I couldn't
`7 locate it, nor could I locate the two
`8 declarations for the 282 and 281.
`9 MR. SCOLA: Just to be clear, the
`10 280 was also included in this and
`11 that's why when he said he found two
`12 petitions, he did not find the '150
`13 petition and I also went through page
`14 by page, thinking it should be there
`15 and it was not. Nor were the two
`16 declarations in 281 and 282. And then
`17 the amended certificate, which of
`18 course was not changed, it was dated
`19 the 3rd.
`20 JUDGE FRANKLIN: You mentioned
`21 that. Thank you. If there is nothing
`22 further then we will move on to the
`23 280 case and Judge Bonilla will
`24 address that case with the parties.
`25 JUDGE BONILLA: Good afternoon.
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`212-279-9424
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`www.veritext.com
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`TEVA EXHIBIT 1040
`TEVA PHARMACEUTICALS USA, INC. V. MONOSOL RX, LLC
`IPR2016-00281
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`2 Thanks for staying on the line for the
`3 280 case. I understand that counsel
`4 for Petitioner will remain the same
`5 for this case, is that correct?
`6 MS. HOLLAND: That is correct.
`7 JUDGE BONILLA: And I believe
`8 that Indivior, if I'm pronouncing it
`9 correctly, the Patent Owner that
`10 you've identified, Mr. Reister and
`11 Mr. Longton as counsel, is that
`12 correct?
`13 MS. REISTER: This is Andrea
`14 Reister, Judge.
`15 JUDGE BONILLA: I apologize.
`16 MS. REISTER: No worries.
`17 JUDGE BONILLA: I think we've
`18 heard a lot already. I just want to
`19 figure out what is relevant to 280.
`20 One issue is for Petitioner. Is it
`21 your position that 280, also that
`22 service was started at 3 a.m. by
`23 delivering to the Fed Ex company on
`24 December 4th and that it was actually
`25 delivered by Fed Ex on December 4th?
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`1 TELEPHONE CONFERENCE
`2 petition was one of the three boxes
`3 that was delivered to Fed Ex to be
`4 served not until after December 3rd;
`5 it was done on December 4th as
`6 Petitioner admits. And the critical
`7 date for all three of these petitions
`8 is December 3, 2015. So this is a
`9 very critical issue, to complete all
`10 of the statutory requirements by the
`11 one-year deadline as set forth in the
`12 statute. And service is, as the Board
`13 has held, is part of the statutory
`14 requirements for a filing date and
`15 here there is no question that service
`16 wasn't even begun until December 4th.
`17 So it's our position that even though
`18 the petition in 280 proceeding was
`19 accorded a December 3rd date by the
`20 PTAB, that service was not complete on
`21 December 4th. In fact, it wasn't even
`22 started until December 4th and
`23 therefore the petition is not entitled
`24 to a December 3rd date.
`25 There also was a defect in the
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`2 Is that your position in this case as
`3 well?
`4 MS. HOLLAND: Yes. Our position
`5 is that it spilled over to the early
`6 morning of December 4th. It was
`7 delivered to Fed Ex at about 3 a.m. on
`8 the 4th.
`9 JUDGE BONILLA: Okay. Now, my
`10 understanding is that this conference
`11 call in relation to this case is
`12 actually raised by Patent Owner.
`13 Patent Owner wants authorization to
`14 file a motion to change the filing
`15 date in this case.
`16 Patent Owner, would you like to
`17 start with what your position is on
`18 this?
`19 MS. REISTER: Yes, Your Honor.
`20 Patent Owner, because the service was
`21 not effected until December 4th as
`22 Petitioner has explained here and as
`23 Mr. Chakansky and Mr. Scola talked
`24 about, we also have the evidence from
`25 Fed Ex itself that this, the 280
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`1 TELEPHONE CONFERENCE
`2 certificate of service as the
`3 certificate of service indicated only
`4 that the petition was, quote, caused
`5 to be served on December 3rd and
`6 didn't indicate that all of the
`7 exhibits were served on the Patent
`8 Owner, as required by the stature as
`9 well.
`10 In response to that notice of
`11 defect, an amended certificate of
`12 service was again filed on December
`13 17th which indicated incorrectly that
`14 service was done on December 3rd of
`15 the petition and the exhibits when in
`16 fact it was done on December 4th. So
`17 it's our position, Your Honor, that
`18 this, the petition in the 280
`19 proceeding, is not entitled to the
`20 December 3rd date and because of that
`21 the petition is time barred and should
`22 be denied.
`23 JUDGE BONILLA: Okay.
`24 Petitioner, would you like to respond?
`25 MS. HOLLAND: Sure, Your Honor.
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`212-279-9424
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`Veritext Legal Solutions
`www.veritext.com
`
`8 (Pages 26 - 29)
`
`212-490-3430
`
`TEVA EXHIBIT 1040
`TEVA PHARMACEUTICALS USA, INC. V. MONOSOL RX, LLC
`IPR2016-00281
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`

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`2 I mean, they are basically the same
`3 responses with 281 and 282 in terms of
`4 it getting to Fed Ex at 3 a.m. We
`5 believe that we intended and expected
`6 to serve it on December 3rd, that
`7 because of various issues with
`8 printing as well as with uploading on
`9 loading on system that spilled over to
`10 December 4th. We don't believe that
`11 that's a statutory requirement. I
`12 think the Board has uniformly held
`13 that this is something that the Board
`14 can waive or suspend pursuant to
`15 Section 42.5 and we would ask the
`16 Board to do so in this case.
`17 JUDGE BONILLA: And just to be
`18 clear, and I apologize, I'm going to
`19 ask Patent Owner this question again:
`20 When the material was actually
`21 delivered by Fed Ex on December 4th,
`22 was everything in there?
`23 MR. SCOLA: It wasn't delivered
`24 on the 4th, Your Honor, it was
`25 delivered on the 7th to our New York
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`1 TELEPHONE CONFERENCE
`2 Andrea Reister on behalf of Patent
`3 Owner Indivior. I think the confusion
`4 here is that Mr. Scola and
`5 Mr. Chakansky are responding as they
`6 are the correspondent's addressees for
`7 this patent as well so they are the
`8 ones that actually got the boxes. But
`9 to be very direct in answering your
`10 question, the material with respect to
`11 the 280 proceeding started to be
`12 delivered on December 4th was actually
`13 delivered to their office in Long
`14 Island on December 7th and we do not
`15 believe that for this case there was
`16 anything missing.
`17 JUDGE BONILLA: Okay.
`18 MS. REISTER: May I respond to
`19 the Petitioner's point about the
`20 statutory requirements.
`21 JUDGE BONILLA: I think I cut off
`22 Petitioner before. I will give you a
`23 chance to respond but I'm going to let
`24 Petitioner finish their position
`25 before we switch back over to you.
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`2 office. It was briefly opened to
`3 ascertain what it referred to. They
`4 were able to ascertain that it
`5 referred to two petitions, the 280 and
`6 281. They then contacted me because I
`7 work on matters for that client. I
`8 said, "Pack everything up, ship it to
`9 me in New Jersey" and they did. So
`10 the earliest our firm had the boxes,
`11 which were incomplete, was on
`12 December 7th.
`13 JUDGE BONILLA: Whenever you
`14 received it, when it was obviously at
`15 least started to be delivered on the
`16 4th of December, in the box that you
`17 received that was started to be
`18 delivered at that time, was everything
`19 in there, was there anything missing?
`20 MR. SCOLA: Yes. Absolutely.
`21 JUDGE BONILLA: What specifically
`22 was missing, let me ask Patent Owner
`23 this time, what specifically was
`24 missing in relation to the 280 IPR?
`25 MS. REISTER: Your Honor, this
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`1 TELEPHONE C