Paper No. ________
`
`Filed: March 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
`
`v.
`
`MONOSOL RX, LLC,
`Patent Owner
`_______________
`
`Case IPR2016-00281 (Patent 8,603,514 B2)
`Case IPR2016-00282 (Patent 8,017,150 B2)1
`
`_______________
`
`DECLARATION OF MICHAEL I. CHAKANSKY
`
`1 Per Order, Paper 8 (281 IPR) and Paper 7 (282 IPR), fn. 1, Patent Owner
`hereby attests, in connection with this paper, that it is filing the word-for-word
`identical paper in each proceeding identified in the heading.
`
`MONOSOL RX EXHIBIT 2007 page 0000
`
`
`
`Filed: March 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
`
`v.
`
`MONOSOL RX, LLC,
`Patent Owner
`_______________
`
`Case IPR2016-00281 (Patent 8,603,514 B2)
`Case IPR2016-00282 (Patent 8,017,150 B2)1
`
`_______________
`
`DECLARATION OF MICHAEL I. CHAKANSKY
`
`1 Per Order, Paper 8 (281 IPR) and Paper 7 (282 IPR), fn. 1, Patent Owner
`hereby attests, in connection with this paper, that it is filing the word-for-word
`identical paper in each proceeding identified in the heading.
`
`MONOSOL RX EXHIBIT 2007 page 0000
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-1-
`
`IPR2016-00282 (8,017,150 B2)
`
`I, Michael I. Chakansky, hereby declare as follows:
`
`1.
`
`I am a partner at the law firm of Hoffmann & Baron LLP (“Hoffmann”),
`
`resident in the Parsippany, New Jersey office located at 6 Campus Drive,
`
`Parsippany, NJ 07054. I am registered to practice before the United States
`
`Patent and Trademark Office (Reg. No. 31,600), and am back-up counsel of
`
`record in proceedings IPR2016-00281 (8,603,514 B2) (“281 IPR”) and
`
`IPR2016-00282 (8,017,150 B2) (“282 IPR”).
`
`2.
`
`On Monday, December 7, 2015, Hoffmann received three banker boxes
`
`delivered by FedEx to the Syosset, New York office of the Hoffmann firm,
`
`located at 6900 Jericho Turnpike, Syosset, NY 11791. The boxes were
`
`opened for docketing purposes as described in the Declaration of Daniel
`
`Doran, and after the contents were identified as involving, inter alia,
`
`Hoffmann client MonoSol Rx LLC, I was notified about the boxes. That
`
`day, I instructed that the three boxes with their complete contents be
`
`resealed, and sent to me in the Parsippany office by overnight delivery. I
`
`received the three boxes in the Parsippany office on Tuesday, December 8,
`
`2015.
`
`3.
`
`The FedEx tracking numbers for the three boxes I received are: 7751 1902
`
`MONOSOL RX EXHIBIT 2007 page 0001
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-2-
`
`IPR2016-00282 (8,017,150 B2)
`
`8582; 7751 1902 8983; and 7751 1902 9203. See Exhibit 2001 for true and
`
`correct copies of the shipping labels.
`
`4.
`
`The boxes and their contents remained undisturbed until on or about
`
`December 14, 2015, when I went through the contents of the three boxes
`
`and discovered several deficiencies in the alleged service of the petitions.
`
`5.
`
`In connection with IPR2016-00282 (8,017,150 B2), service was materially
`
`incomplete in that, inter alia: (a) there was no copy of the IPR Petition for
`
`the 8,017,150 B2 patent; (b) there was no copy of Exhibit 3 (Expert
`
`Declaration of Nandita Das); and (c) the Certificate of Service wrongly
`
`stated that it was served on December 3, 2015 by FedEx, even though, as
`
`discussed below, on-line FedEx Tracking histories (Ex. 2001) and a
`
`telephone conversation with FedEx established that the bankers' boxes were
`
`not tendered to FedEx until the next day, December 4, 2015.
`
`6.
`
`In connection with IPR2016-00281 (8,603,514 B2), service was materially
`
`incomplete in that, inter alia: (a) there was no copy of Exhibit 3 (Expert
`
`Declaration of Jayanth Panyam); (b) the Certificate of Service wrongly
`
`stated that it was served on December 3, 2015 by FedEx, even though, as
`
`discussed below, on-line FedEx Tracking histories (Ex. 2001) and a
`
`telephone conversation with FedEx established that the bankers' boxes were
`
`MONOSOL RX EXHIBIT 2007 page 0002
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-3-
`
`IPR2016-00282 (8,017,150 B2)
`
`not tendered to FedEx until the next day, December 4, 2015; and (c) several
`
`documents were not stamped with Exhibit bates stamp markings.
`
`7.
`
`On Tuesday, December 15, 2015, I accessed the FedEx Tracking history
`
`on-line for each of the three tracking numbers identified in ¶ 3 above. A
`
`true and correct copy of each of the three FedEx Tracking histories is
`
`included in Ex. 2001. As shown in Ex. 2001, the three boxes were a
`
`three-piece shipment under “Master tracking number 775119028582.” The
`
`“Ship date” for each of the three pieces is listed as “Fri 12/04/2015.” Ex.
`
`2001. The “Travel History” for each piece includes an entry “Picked up
`
`Tendered at FedEx Office” at “3:02 am” on “12/04/2015-Friday” and an
`
`entry “Left FedEx origin facility at “11:19 pm” on “12/04/2015-Friday.”
`
`8.
`
`Later that day, December 15, 2015, I placed a call to FedEx. FedEx
`
`confirmed that the three boxes having the tracking numbers identified in ¶ 3
`
`above were part of the same shipment, and that each box was delivered to a
`
`24-hour FedEx facility located at 60 West 40th Street, New York City on
`
`December 4, 2015.
`
`9.
`
`Also on December 15, 2015, I contacted the Patent Trials and Appeal Board
`
`(“PTAB”) at 571-272-7822 for guidance regarding the incomplete service
`
`and spoke with Mr. Eric Hawthorne, whom I believe is a Supervisory
`
`MONOSOL RX EXHIBIT 2007 page 0003
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-4-
`
`IPR2016-00282 (8,017,150 B2)
`
`Paralegal Specialist. Mr. Hawthorne suggested that we request guidance
`
`from the PTAB in an email to Trials.gov. Before I could send an email, I
`
`learned that filing dates had been accorded to IPR2016-00281 and IPR2016-
`
`00282. By reviewing Paper No. 3 at the PTAB for each of IPR2016-00281
`
`and IPR2016-00282, respectively, I learned that the date afforded to each
`
`was December 4, 2015.
`
`10.
`
`Papers No. 3 in each of IPR2016-00281 and IPR 2016-00282 (as well as
`
`IPR2016-00280) noted defects in the documents and Certificates of Service
`
`that Petitioner had filed with the PTAB.
`
`11.
`
`Papers No. 3 also instructed Patent Owner to file a Mandatory Notice within
`
`21 days of service of the petition. Therefore, that day, December 15, 2015, I
`
`contacted Paul Sullivan of the PTAB at 571-272-0338, as instructed in
`
`Papers No. 3, to request guidance as to how to deal with the incomplete
`
`service and to ask when Patent Owner’s Mandatory Notices would be due as
`
`a result of the incomplete service. Mr. Sullivan suggested that I write to
`
`Trials.gov, explain the situation and copy the Petitioner.
`
`12.
`
`That day, December 15, 2015, we decided we should meet and confer with
`
`Petitioner to comply with PTAB rules before making any formal request to
`
`the PTAB, which we did (see below) and that we also should first put in an
`
`MONOSOL RX EXHIBIT 2007 page 0004
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-5-
`
`IPR2016-00282 (8,017,150 B2)
`
`appearance, which we also did, see below.
`
`13. On Friday, December 18, 2015, Hoffmann filed mandatory notices in the
`
`281 & 282 IPRs. See Paper 7 (281 IPR) and Paper 6 (282 IPR).
`
`14. On Friday, December 18, 2015, Hoffmann received a fourth box of
`
`documents from Petitioner containing copies of Petitioner’s December 17,
`
`2015 filings with the PTAB, including Amended Certificates of Service, yet
`
`still showing service by FedEx on December 3, 2015. These documents
`
`were filed and served presumably to address the defects noted on Papers 3
`
`(280, 281 and 282 IPRs). Again, the Petition and Expert Declaration of
`
`Nandita Das for IPR2016-00282 and the Expert Declaration of Jayanth
`
`Panyam for IPR2016-00281 were not included in the fourth box.
`
`MONOSOL RX EXHIBIT 2007 page 0005
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-6-
`
`IPR2016-00282 (8,017,150 B2)
`
`15. A true and correct copy (except for the absence of the page number “-53-”)
`
`of the original Certificate of Service for IPR2016-00281 that I found in the
`
`three boxes delivered on December 7, 2015 is shown below (emphasis
`
`supplied).
`
`MONOSOL RX EXHIBIT 2007 page 0006
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-7-
`
`IPR2016-00282 (8,017,150 B2)
`
`16. A true and correct copy of the original Amended Certificate of Service for
`
`IPR2016-00281 that I found in the fourth box delivered on December 18,
`
`2015 is shown below (emphasis supplied).
`
`MONOSOL RX EXHIBIT 2007 page 0007
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-8-
`
`IPR2016-00282 (8,017,150 B2)
`
`17. As there was no petition served for IPR2016-00282 in the three boxes
`
`delivered on December 7, 2015, there was no original Certificate of Service,
`
`therefore a true and correct copy of the original Certificate of Service for
`
`IPR2016-00282 from that on file with PTAB is shown below (emphasis
`
`supplied).
`
`MONOSOL RX EXHIBIT 2007 page 0008
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-9-
`
`IPR2016-00282 (8,017,150 B2)
`
`18. A true and correct copy of the original Amended Certificate of Service for
`
`IPR2016-00282 that I found in the fourth box delivered on December 18,
`
`2015 is shown below (emphasis supplied).
`
`19. On Wednesday, December 23, 2016, Lead Counsel Daniel A. Scola and I,
`
`along with Senior Associate Andrea M. Wilkovich, went through all three
`
`boxes delivered on December 7, 2015 page by page and again confirmed,
`
`MONOSOL RX EXHIBIT 2007 page 0009
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-10-
`
`IPR2016-00282 (8,017,150 B2)
`
`inter alia, the absence of the Petition or the Expert Declaration of Nandita
`
`Das for IPR2016-00282 and of the Expert Declaration of Jayanth Panyam
`
`for IPR2016-00281.
`
`20.
`
`The same day, Wednesday, December 23, 2015, Patent Owner’s Counsel
`
`requested, by email, a meet and confer with Petitioner’s counsel in
`
`IPR2016-00281 and IPR2016-00282 regarding numerous deficiencies in
`
`service. The email sent by me enumerated, inter alia, Petitioner’s
`
`deficiencies in service, including the incomplete service of the petitions and
`
`supporting evidence, as well as Certificates of Service which failed to recite
`
`the documents actually served, and also gave an incorrect date of deposit
`
`with FedEx.
`
`21. On Thursday, December 24, 2015, Petitioner’s counsel served Patent
`
`Owner’s Counsel by email with documents noted as missing in the original
`
`3 boxes, the Petition and Expert Declaration of Nandita Das for
`
`IPR2016-00282 and the Expert Declaration of Jayanth Panyam for
`
`IPR2016-00281, and agreed to a meet and confer on January 7, 2016.
`
`December 24, 2015 was the first time Patent Owner’s counsel received
`
`copies of the Petition and Expert Declaration of Nandita Das for
`
`IPR2016-00282 and the Expert Declaration of Jayanth Panyam for
`
`MONOSOL RX EXHIBIT 2007 page 0010
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-11-
`
`IPR2016-00282 (8,017,150 B2)
`
`IPR2016-00281 from Petitioner by any means.
`
`22. On Thursday, January 7, 2016, Patent Owner’s and Petitioner’s counsel met
`
`and conferred to discuss incomplete service, the FedEx drop off on
`
`December 4, 2015 and the incorrect Certificates of Service. Petitioner’s
`
`counsel admitted that the three service boxes had not been dropped off with
`
`FedEx until 3 am on December 4, 2015, but claimed they had a problem in
`
`filing the documents and paying fees in connection with IPR2016-00281
`
`and IPR2016-00282, which resulted in the December 4, 2015 filing date.
`
`Petitioner’s counsel said that notwithstanding the incomplete and late
`
`service, they would be seeking to change the filing dates in IPR2016-00281
`
`and IPR2016-00282 to December 3, 2015. Patent Owner’s Counsel again
`
`responded that IPR2016-00281 and IPR2016-00282 were not even entitled
`
`to a December 4, 2015 filing date, because although service was first
`
`attempted on December 4, 2015, inter alia, the three service boxes did not
`
`include the Petition or Expert Declaration of Nandita Das for
`
`IPR2016-00282 or the Expert Declaration of Jayanth Panyam for
`
`IPR2016-00281. Finally, Patent Owner’s Counsel said they would seek
`
`guidance from the PTAB regarding the incomplete and late service and
`
`concerns about the incorrect statements in Petitioner’s Certificates of
`
`MONOSOL RX EXHIBIT 2007 page 0011
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-12-
`
`IPR2016-00282 (8,017,150 B2)
`
`Service.
`
`23. On Friday, January 8, 2016, Patent Owner’s Counsel emailed
`
`Trials@uspto.gov with Patent Owner’s request for a conference, describing
`
`the incomplete service, the December 4, 2015 drop off at FedEx, the
`
`incorrect Certificates of Service and that the statutory one year bar date of
`
`December 3, 2015 had been exceeded. Counsel for Petitioner were copied
`
`on the email. Patent Owner’s Counsel received back a response from PTAB
`
`that no panels had been assigned to the IPRs and that we should try again in
`
`a week or so. See Exhibit 2002.
`
`24.
`
`True and correct copies of the summons showing service on December 3,
`
`2014 and the complaint filed with the court (without exhibits) in Reckitt
`
`Benckiser Pharmaceuticals Inc., RB Pharmaceuticals Limited, et al v. Teva
`
`Pharmaceuticals USA, Inc., Civil Action 14-1451 (D. Del.) may be found in
`
`Exhibits 2004 and 2005, respectively.
`
`25. On Friday, January 29, 2016, Petitioner’s counsel informed Patent Owner’s
`
`Counsel that a panel had been assigned to IPR2016-00281 and IPR2016-
`
`00282 and requested a meet and confer to discuss reaching out to the Board
`
`for a conference call.
`
`26. On Monday, February 1, 2016, the PTAB emailed Petitioner’s counsel and
`
`MONOSOL RX EXHIBIT 2007 page 0012
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-13-
`
`IPR2016-00282 (8,017,150 B2)
`
`Patent Owner’s counsel in IPR2016-00280 regarding IPR2016-00280,
`
`IPR2016-00281 and IPR2016-00282, however Patent Owner’s Counsel for
`
`IPR2016-00281 and IPR2016-00282 was not included on the email
`
`exchange as of February 1, 2016. See Exhibit 2003. The PTAB email
`
`directed Petitioner to meet and confer with Patent Owner regarding the date
`
`issue. Petitioner’s Counsel did not forward the email to Patent Owner’s
`
`Counsel for IPR2016-0281 and IPR2016-0282.
`
`27. On Tuesday, February 2, 2016, Patent Owner’s counsel for IPR2016-00280
`
`forwarded the PTAB email of February 1, 2016 referenced above to Patent
`
`Owner’s Counsel for IPR2016-00281 and IPR2016-00282. I then contacted
`
`the PTAB, at the telephone number provided in the PTAB email, to inquire
`
`why Patent Owner’s Counsel for IPR2016-00281 and IPR2016-00282 had
`
`not been copied. I was informed by Paralegal Operations Manager, Maria
`
`Vignone, that it had been a mistake. Ms. Vignone then re-sent the email
`
`regarding the meet and confer, this time including an instruction that “when
`
`an e-mail is sent into the Board, they include all parties of record.” Exhibit
`
`2003.
`
`28.
`
`The email forwarded to Patent Owner’s Counsel on February 2, 2016 was
`
`Patent Owner’s first notification of the original ex parte communication
`
`MONOSOL RX EXHIBIT 2007 page 0013
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-14-
`
`IPR2016-00282 (8,017,150 B2)
`
`from Petitioner’s Counsel to the USPTO at 12:30 am on December 4, 2015
`
`regarding alleged payment difficulties that were encountered by Petitioner’s
`
`Counsel. See Exhibit 2003.
`
`29. On Wednesday, February 3, 2016, a meet and confer was held among
`
`counsel for Petitioner and Patent Owners in IPR2016-00281 and IPR2016-
`
`00282 as well as in IPR2016-00280 to discuss the timing for a conference
`
`with the PTAB.
`
`30. On Thursday, February 4, 2016 Petitioner’s counsel sent a joint request to
`
`the PTAB for a conference for IPR2016-00281, IPR2016-00282 and
`
`IPR2016-00280.
`
`31. On February 17, 2016, a conference was held with the PTAB panels,
`
`Petitioner’s Counsel and all Patent Owners’ Counsel, for IPR2016-00281,
`
`IPR2016-00282 and IPR2016-00280.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on March 10, 2016.
`
`
`
` /Michael I. Chakansky/
` Michael I. Chakansky
` Reg. No. 31,600
`
`MONOSOL RX EXHIBIT 2007 page 0014
`
`
`
`IPR2016-00281 (8,603,514 B2)
`
`-15-
`
`IPR2016-00282 (8,017,150 B2)
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this the 10th day of March, 2016, the foregoing
`
`DECLARATION OF MICHAEL I. CHAKANSKY was served in its entirety on
`
`the following counsel of record by electronic service by email at the email
`
`addresses consented to for service as provided in the Petitions, Papers No. 1, 281
`
`IPR (pages 10-11) & 282 IPR (pages 6-8), and as set forth below:
`
`Elizabeth Holland, Esq.
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eight Avenue
`New York, N.Y. 10018
`(212) 813-8800
`
`eholland@goodwinprocter.com
`eyost@goodwinprocter.com
`jstull@goodwinprocter.com
`eblais@goodwinprocter.com
`rfrederickson@goodwinprocter.com
`rcerwinski@goodwinprocter.com
`
`By:
`
`/Michael I. Chakansky/
`Michael I. Chakansky (Reg. No. 31,600)
`Hoffmann & Baron, LLP
`6 Campus Drive
`Parsippany, N.J. 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
`
`MONOSOL RX EXHIBIT 2007 page 0015
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