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`ATTORNEY DOCKET NOS. 22338-10230 AND -10231
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Control Nos.:
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`Confirmation Nos.:
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`90/007,542
`90/007,859
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`7585 (’542)
`6447 (’859)
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`Filed:
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`13 May 2005
`23 December 2005
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`(’542)
`(’859)
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`Patent Owner:
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`Genentech, Inc. and
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`City of Hope
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`Group Art Unit:
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`3991
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`Examiner:
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`P. Ponnaluri
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`For:
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`Merged Reexaminations of U.S. Patent No. 6,331,415 (Cabilly et al.)
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`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`RE UEST FOR RECONSIDERATION and/or PETITION UNDER 37 C.F.R.
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`1.183
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`Sir:
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`This petition is directed to the “DECISION DENYING PETITION TO EXPUNGE
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`INFORMATION (37 CFR l.59(b) AND 182) AND PETITION TO WAIVE SERVICE
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`RULE” mailed in the merged reexamination proceeding identified above on 5 May 2009.
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`On a final review of the reexamination file, Owners have discovered that one of the
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`documents filed with the submission under M.P.E.P. § 724.02 on 6 June 2008 was not the
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`version that Owners intended to present to the Office. In particular, as discussed below,
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`Owners inadvertently and erroneously provided an expert report from a then—pending
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`litigation that included an appendix containing highly confidential information, whereas it
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`had been intended to submit the expert report without that appendix.
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`Owners renew their petition to expunge information specifically with respect to the
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`inadvertently submitted appendix. As an alternative basis for providing the requested relief,
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`Owners petition the Director under § 1.183 to suspend the rules to substitute the attached
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`copy of the expert report, without the appendix in question, for inclusion in the record.
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`This petition requires the fee specified in § 1.17(f) ($ 400). The Director is requested
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`to debit that amount, as well as any other fees which may be required in connection with this
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`petition, from our Deposit Account No. 18-1260.
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`PETITION UNDER 37 C.F.R. § 1.183
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`15 MAY 2009 — PAGE 1
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`Genzyme Ex. 1042, pg 1065
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`Genzyme Ex. 1042, pg 1065
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`CONTROL NOS. 90/007,542 AND 90/007,859
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`ATTORNEY DOCKET NOS. 22338-10230 AND -10231
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`Background
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`1.
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`Genentech, Inc. and City of Hope are co—owners of the patent that is the subject of the
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`captioned merged reexamination proceeding.
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`2.
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`On 6 June 2008, Owners filed certain materials from a then—pending litigation
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`involving the patent under reexamination under the provisions of M.P.E.P. § 724.02.
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`Owners’ submission included a petition under 37 C.F.R. §§ l.59(b) and 1.182 to
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`expunge the cited information from the file, and a petition under § 1.183 to waive the
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`service requirement of § 1.550(f).
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`3.
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`In an advisory action mailed on 19 July 2008, the examiner acknowledged the
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`submission of information under M.P.E.P. § 724.02 and stated:
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`Pursuant to MPEP § 724.04 the submitted information is found to be material
`to the patentability and/or confirmation of the instant reexamination claims.
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`4.
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`There has been no further discussion of the information submitted under M.P.E.P.
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`§ 724.02 on 6 June 2008 by the examiner in this reexamination proceeding.
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`5.
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`A Notice of Intent to Issue a Reexamination Certificate (NIRC) was mailed in this
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`proceeding on 23 February 2009. A Certificate has not yet been granted.
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`6.
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`An interview summary dated 30 April 2009 states that Owners’ representative
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`indicated to the Office that petitions to expunge filed on 13 September and 24
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`October 2007 would not be renewed. The interview summary does not record any
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`representation concerning the petition to expunge associated with the 6 June 2008
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`submission.
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`7.
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`In a decision mailed on 5 May 2009, the Office denied both of the petitions related to
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`the submission under M.P.E.P. § 724.02 filed on 6 June 2008.
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`Discussion
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`One of the two items of information cited in the submission under M.P.E.P. § 724.02
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`filed on 6 June 2008 was the expert report of a licensing expert, Dr. E. Fintan Walton, that
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`was submitted in Medlmmzme, Inc. v. Genentech, Inc., No. CV—03—2567 (C.D. Cal.). One
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`component of Dr. Walton’s report, specifically Appendix 3, contains highly sensitive
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`proprietary information. The public disclosure of the proprietary information in Appendix 3
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`PETITION UNDER 37 C.F.R. § 1.183
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`15 MAY 2009 — PAGE 2
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`Genzyme Ex. 1042, pg 1066
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`Genzyme Ex. 1042, pg 1066
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`
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`CONTROL NOS. 90/007,542 AND 90/007,859
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`ATTORNEY DOCKET NOS. 22338-10230 AND -10231
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`would severely prejudice the interests of not only the patent owners, but of third parties as
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`well. Because of the inclusion of that information, Dr. Walton’s report is marked “Restricted
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`Conf1dentia1— Attorney’s Eyes Only.”
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`The body of Dr. Walton’s expert report sets forth his analysis of how the
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`biotechnology industry’s licensing of the Cabilly patents is probative of the commercial
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`success of the invention claimed in the ’415 patent. This was the information that Owners
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`intended to present for review by the Office.
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`Appendix 3 of Dr. Walton’s original report provides a table that identifies licenses
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`taken under the Cabilly patent, the licensees, and the nature and essential economic terms of
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`the licenses. Genentech is under contractual obligations to its licensees to protect the
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`confidentiality of the proprietary information in Appendix 3 of Dr. Walton’s report.
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`Owners did not intend to present Appendix 3 for consideration by the Office. Indeed,
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`Owners’ attention to the sensitivity of the information is shown in a corresponding
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`declaration under § 1.132 by Dr. Walton, filed by Owners in the public record on 6 June
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`2008. In that declaration, Dr. Walton stated that “[b]ecause of confidentiality considerations
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`regarding these licenses, I have not provided a detailed table of the companies, products, and
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`terms of the licenses.’’ See Walton § 1.132 dec., page 4, footnote 3.
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`Relief requested
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`Expungement ofproprietary information
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`Specifically with reference only to the portion of Dr. Walton’s expert report identified
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`as Appendix 3, Owners respectfully renew their request that the Office expunge information
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`filed in the submission under M.P.E.P. § 724.02 on 6 June 2008 from the record of this
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`proceeding. Owners reiterate the representations stated in their petition under §§ l.59(b) and
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`182 filed on 6 June 2008 as to Appendix 3. Owners do not maintain their petition to expunge
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`information either as to the balance of Dr. Walton’s report (z'.e., the body of the report and
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`Appendices 1 and 2), or as to the other document cited in that submission (i.e., a transcript of
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`the deposition of Dr. Walton taken in connection with the Medlmmzme litigation).
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`A copy of the expert report, from which only Appendix 3 has been deleted, is
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`provided as an exhibit to this petition. Owners request that this document be entered in the
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`public file in place of the copy of Dr. Walton’s expert report filed on 6 June 2008.
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`PETITION UNDER 37 C.F.R. § 1.183
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`15 MAY 2009 — PAGE 3
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`Genzyme Ex. 1042, pg 1067
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`Genzyme Ex. 1042, pg 1067
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`
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`CONTROL NOS. 90/007,542 AND 90/007,859
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`ATTORNEY DOCKET NOS. 22338-10230 AND -10231
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`Owners and their licensees would suffer significant harm if the terms of specific
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`licenses were made public. The Office should provide relief that adequately protects the
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`business interests of Owners and their licensees while also ensuring the integrity of the public
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`record. Expungement of only Appendix 3 will not impair the ability of the public to
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`appreciate the basis for the Office’s determination of patentability in this proceeding. The
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`extent and economic value of the licenses under the Cabilly patents, as well as Dr. Walton’s
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`discussion of why the licenses demonstrate the commercial success of the invention claimed
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`in the ’415 patent, are fully discussed in aggregate in the body of Dr. Walton’s report.
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`Service of documents on third—party requesters
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`In the decision mailed on 5 May 2009, the Office required Owners to serve copies of
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`the information submitted under M.P.E.P. § 724.02 on 6 June 2008 on the third—party
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`requesters in the reexamination proceeding.
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`Specifically with reference only to Appendix 3 to of Dr. Walton’s expert report,
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`Owners renew their petition under § 1.183 that the Office waive the service requirement of
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`§ l.550(f). Owners further request that the Office stay the requirement set forth in the
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`decision mailed on 5 May 2009 to serve the papers filed on 6 May 2009, insofar as that
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`requirement applies to Appendix 3, pending a decision on this renewed petition.
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`Owners are concurrently serving on the third—party requesters a copy of Dr. Walton’s
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`expert report from which Appendix 3 has been removed, inasmuch as that document is
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`provided as an exhibit to this petition. Owners are also concurrently serving on the third
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`parties a copy of Dr. Walton’s deposition transcript, which was the only other item of
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`information cited in the submission under M.P.E.P. § 724.02 on 6 June 2008, as indicated on
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`the attached certificate of service.
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`Alternative basis under § 1.183 for providing the requested relief
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`Should the Office consider that the result stated in its 5 May 2009 decision is required
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`by the Rules, Owners submit that the Office should grant the requested relief under the
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`authority of § 1.183. The Off1ce’s policies concerning petitions to expunge material from the
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`records of public files are not mandated by statute. Moreover, the interest ofjustice requires
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`that the Office act to protect the business interests of Owners and their licensees, as well as
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`the public interest, in its treatment of the proprietary information at issue. Finally, Owners
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`PETITION UNDER 37 C.F.R. § 1.183
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`15 MAY 2009 — PAGE 4
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`Genzyme Ex. 1042, pg 1068
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`Genzyme Ex. 1042, pg 1068
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`
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`CONTROL NOS. 90/007,542 AND 90/007,859
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`ATTORNEY DOCKET NOS. 22338-10230 AND -10231
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`respectfully submit that this is an extraordinary situation within the meaning of § 1.183 that
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`justifies granting the requested relief.
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`Owners appreciate the procedural difficulties for the Office in responding to this
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`request at this point in this reexamination proceeding. Key personnel only recently came to
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`appreciate the nature of the information that is the subject of the Off1ce’s denial of the
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`petitions filed on 6 June 2008, thus necessitating the present petition. Owners regret the
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`inconvenience to the Office caused by this request.
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`Conclusion
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`Owners respectfully request that the Office reconsider its decision mailed on 5 May
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`2009, and grant the petitions to expunge proprietary information from the record and to waive
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`the service requirement of § 1.550(1), to the limited extent discussed above. Owners request
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`that the attached copy of the expert report of Dr. E. Fintan Walton, from which Appendix 3
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`has been removed, replace the copy filed on 6 June 2008.
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`Additionally or in the alternative, Owners request that the Office waive or suspend its
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`rules under the authority of § 1.183 to grant the relief requested above.
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`Respectfully submitted,
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`/David L. Fitzgerald/
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`David L. Fitzgerald, Reg, no. 47,347
`Attorney of Record
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`15 May 2009
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`SIDLEY AUSTIN LLP
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`1501 K Street, N.W.
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`Washington, D.C. 20005
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`Telephone: (202) 736-8818
`Facsimile: (202) 736-8711
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`PETITION UNDER 37 C.F.R. § 1.183
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`15 MAY 2009 — PAGE 5
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`Genzyme Ex. 1042, pg 1069
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`Genzyme Ex. 1042, pg 1069