`To:
`Cc:
`Subject:
`Date:
`
`Kushan, Jeffrey P.
`"rmccormick@mayerbrown.com"; "BNolan@mayerbrown.com"
`Adam Brausa (ABrausa@durietangri.com); Petruzzi, Heather; Gunther, Jr., Robert J.; Cavanaugh, David
`IPR2016-01624, -00383, -00460
`Wednesday, February 17, 2016 1:45:58 PM
`
`Counsel,
`
`We are reaching out to you for two reasons.
`
`First, we observed that the trial institution decision in IPR2016-01624 that issued recently was authored by APJ Christopher
` Paulraj. Prior to then, we had no knowledge Judge Paulraj would be participating in this or any other proceeding involving the ‘415
` patent. Judge Paulraj was an associate at Sidley Austin LLP between 2005 and 2006, at which time Sidley was representing
` Genentech in the reexamination of the ‘415 patent that is at issue in the ‘01624 proceeding. Sidley has reviewed its records, and
` has determined that Judge Paulraj billed approximately 10 hours of time to work on the ‘415 patent reexamination matter. We
` believe we are required to bring this to the attention of the panel, and seek their guidance on how to proceed.
`
`Second, your client Sanofi is a real party in interest in three different petitions against the ‘415 patent. The first one has resulted
` in institution of a trial (i.e., IPR2015-01624). The second (IPR2016-00383) and third (i.e., IPR2016-00460) petitions remain pending
` before the Board. The ‘460 petition is essentially identical to the petition Sanofi filed in the ‘1624 proceeding. We assume your
` motivation in filing the ‘460 petition was to preserve your ability to participate in the trial based on the ‘1624 petition on behalf of
` Sanofi and its subsidiary Genzyme. To do that, we anticipate you will file a motion for joinder of the ‘460 petition to the ‘1624
` proceeding soon.
`
`You must certainly appreciate that conducting multiple proceedings on a single patent, particularly on different schedules, is
` burdensome not only on the patent owners but also on the Board. We therefore invite you to consider filing a joinder motion for
` your ‘460 proceeding to the ‘1624 proceeding, and withdrawing your ‘383 petition. If you do so before patent owners are
` required to file their preliminary response to the ‘383 petition and you agree to adhere to the grounds and schedule of the ‘1624
` proceeding as instituted, Patent Owners would not oppose your joinder motion. If you are interested in this type of arrangement,
` please let us know at your earliest convenience.
`
`Please let us know at what times on Thursday, Friday and next Monday you would be available for a call with the Board to discuss
` the issue concerning Judge Paulraj. If you accept our proposal on the joinder motion, we would propose to also raise that issue
` with the Board on the call.
`
`Sincerely,
`
`JEFFREY KUSHAN
`Partner
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, DC 20005
`+1 202 736 8914
`jkushan@sidley.com
`www.sidley.com
`
` SIDLEY AUSTIN LLP
`
`
`
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`GENENTECH 2025
`GENZYME V. GENENTECH
`IPR2016-00383
`
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