`
`Subject:
`
`FW: IPR2016-00281 and IPR2016-00282
`
`From: Vignone, Maria [mailto:Maria.Vignone@USPTO.GOV] On Behalf Of Trials
`Sent: Friday, January 08, 2016 2:32 PM
`To: Michael Chakansky; Trials
`Cc: 'Holland, Elizabeth J.'; eyost@goodwinprocter.com; jstull@goodwinprocter.com;
`eblais@goodwinprocter.com; rfrederickson@goodwinprocter.com; 'Cerwinski, Robert V.'; Daniel Scola;
`Michael Chakansky; 514IPR
`Subject: RE: IPR2016‐00281 and IPR2016‐00282
`
`Counsel: We do not have a panel for these cases yet. Please check back in another week or so.
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571‐272‐4645
`
`
`
`
`
`From: Michael Chakansky [mailto:mchakansky@optonline.net]<mailto:[mailto:mchakansky@optonline.net]>
`Sent: Friday, January 08, 2016 1:15 PM
`To: Trials
`Cc: 'Holland, Elizabeth J.'; eyost@goodwinprocter.com<mailto:eyost@goodwinprocter.com>;
`jstull@goodwinprocter.com<mailto:jstull@goodwinprocter.com>;
`eblais@goodwinprocter.com<mailto:eblais@goodwinprocter.com>;
`rfrederickson@goodwinprocter.com<mailto:rfrederickson@goodwinprocter.com>; 'Cerwinski, Robert V.';
`'Daniel Scola'; 'Michael Chakansky'; 514ipr@hbiplaw.com<mailto:514ipr@hbiplaw.com>
`Subject: IPR2016‐00281 and IPR2016‐00282
`
`RE: IPR2016‐00281 (US Patent No. 8,603,514 ('514 Patent)) and IPR2016‐00282 (US Patent No. 8,017,150
`('150Patent))
` Request for Conference to Discuss Correcting Filing Dates for Both Petitions
`
`Dear Trial Board:
`
` We represent Patent Owner, MonoSol Rx LLC and we request a conference with the Board to discuss,
`in connection with the above‐referenced IPRs, Petitioner's incomplete service and incorrect statement in
`certificate of service as to the date of deposit with FedEx of the incomplete service. Patent Owner seeks
`guidance in how to have the filing dates corrected. Petitioner is the same for the foregoing IPRs and we have
`met and conferred with Counsel for Petitioner on the issues below.
`
`
`1
`
`MONOSOL RX EXHIBIT 2002 page 0001
`
`
`
` As the incomplete service involved both the above‐referenced IPRs as well as a third IPR some detail
`is necessary. As counsel of record for Patent Owner we received, on December 7, 2015, three banker's size
`boxes of materials regarding petitions for IPRs of the '514 Patent (281 IPR) and US Patent No. 8,475,832 ('832
`Patent) (IPR2016‐00280)(280 IPR). The 280 IPR is being handled by Counsel for the current Patent Owner of
`the '832 Patent. We only found out serendipitously that the documents also related to an IPR for the '150
`Patent. As the documents provided in the three boxes only contained petitions for the 280 and 281 IPRs, they
`did not disclose the existence of the 282 IPR. However, when we went online to the PTAB website, and
`searched, the results, in addition to the '280 and 281 IPRs, also disclosed a 282 IPR.
`
`
`
` In sum, the three boxes contained incomplete sets of documents, for which we later found out were
`for these three separate IPRs. Moreover, these documents were all intermixed and not bates‐stamped in
`accordance with the PTAB rules. Additionally, the filings with the PTAB were also incomplete. In particular,
`we briefly make note of the following material deficiencies in the completeness of service and in the
`certificate of service, separately for the 281 and 282 IPRs:
`
`IPR2016‐00282 (8,017,150):
`
`In the bankers' boxes served on Patent Owner's counsel of record:
`
` (1) There was no copy of the IPR Petition for the 8,017,150 patent.
`
` (2) There was no copy of Exhibit 3 (Expert Declaration of Nandita Das).
`
`
`
`
`
`
`
` (3) The Certificate of Service stated that it was served on December 3, 2015 by FedEx, even though
`the bankers' boxes were not tendered to FedEx until 3:02 am the next day, December 4, 2015.
`
`IPR2016‐00281 (8,603,514):
`
`In the bankers' boxes served on Patent Owner's counsel of record:
`
`
`
` (1) There was no copy of Exhibit 3 (Expert Declaration of Jayanth Panyam);
`
`
`
` (2) The Certificate of Service stated that it was served on December 3, 2015 by FedEx, even though
`the bankers' boxes were not tendered to FedEx until 3:02 am the next day, December 4, 2015.
`
`
`
` (3) Several documents were not stamped with Exhibit bates stamp markings.
`
`
`
` Petitioner subsequently served an additional fourth banker's box of documents, which we received
`on December 18, 2015, presumably made as part of Petitioner's responses to Papers No. 3 in the IPRs. The
`fourth banker's box did not provide the documents or address any of the itemized infirmities (1), (2) and (3)
`for the 281 IPR and 280 IPR as noted above. In particular, the fourth banker's box did not contain the '150
`Petition or the '150 and '514 expert declarations.
`
`
`
` Finally, after requesting a meet and confer with Counsel for Petitioner's, which request recited the
`above, we received, via electronic service on December 24, 2015, the missing and corrected documents.
`
`
`
` As service of the petition and supporting evidence is a prerequisite to being afforded a filing date for an
`IPR, the Patent Owner requests guidance on correcting the filing date of the Petitions to December 24, 2015,
`2
`MONOSOL RX EXHIBIT 2002 page 0002
`
`
`
`the date service of the missing petition and the two missing declarations and the other noted infirmities was
`finally completed. The filing dates currently afforded both the Petitions is December 4 (see Paper 3 in each
`file). However, it is our understanding that Petitioner will be requesting that the filing dates for both be
`changed to December 3, 2015.
`
`
`
` The filing dates are important as they are dispositive, at this stage of the process, as Patent Owners'
`complaint alleging infringement of the above three patents was served on Petitioner on December 3, 2014,
`thus bringing into play the 1 year bar of 35 U.S.C. 315(b). Moreover, we would like to discuss the incorrect
`statement in the certificates of service.
`
` Counsel for Patent Owner and Petitioner met and conferred on Thursday, January 7, 2016.
`
`
`
`
`
` If it is convenient for the Board, Counsel for Patent Owner and Petitioner are available for a conference
`next Thursday, January 14, 2016, between 2 pm and 5 pm, or next Friday, January 15, 2016 between 10 am
`and 12 noon. If these dates are not convenient, Patent Owner will try and be available whenever it is
`convenient for the Board.
`
`
`
` With the Board's permission, Petitioner intends to have a court reporter record the conference, and
`further requests permission to file a copy of the transcript as part of the record in each of these actions.
`
`
`
` Thank you for your consideration of this matter.
`
` Sincerely,
`
`
`
`
`
` Michael Chakansky.
`
`
`
`Michael I. Chakansky, Esq.
`Hoffmann & Baron, LLP
`6 Campus Drive
`Parsippany, NJ 07054‐4406
`TEL: 973.331.1700
`FAX: 973.331.1717
`mchakansky@hbiplaw.com<mailto:mchakansky@hbiplaw.com>
`www.hbiplaw.com<http://www.hbiplaw.com/>
`
`Please consider the environment before printing this email.
`
`CONFIDENTIAL & PRIVILEGED COMMUNICATION The information in this transmittal is privileged and
`confidential and is intended only for the recipient(s) listed above. Any unauthorized distribution or copying of
`this transmittal or its attachments, if any, is strictly prohibited.
`
`
`
`3
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`MONOSOL RX EXHIBIT 2002 page 0003