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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC. and MYLAN LABORATORIES
`LIMITED,
`Petitioner,
`
`v.
`
`UCB PHARMA GMBH,
`Patent Owner.
`
`Case No. IPR2016-00510
`Patent No. 6,858,650
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`PATENT OWNER’S NOTICE OF SUPPLEMENTAL EVIDENCE IN
`RESPONSE TO PETITIONER’S OBJECTIONS TO EXHIBITS
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`IPR2016-00510
`Patent 6,858,650
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`Patent Owner UCB Pharma GmbH (“UCB”) submits this Notice of
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`Supplemental Evidence in Response to “Petitioner’s Objections to Patent Owner’s
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`Evidence Pursuant to 37 C.F.R. § 42.64” dated October 31, 2016. In response to
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`Petitioner’s objections, UCB serves herewith supplemental evidence, identified as
`
`Exhibits 2026A, 2027A, and 2102, pursuant to 37 C.F.R. § 42.64(b)(2). UCB
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`further files and serves herewith its Amended List of Exhibits pursuant to 37
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`C.F.R. § 42.63(e). Patent Owner’s Amended List of Exhibits identifies its
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`supplemental evidence, Exhibits 2026A, 2027A, and 2102, and includes amended
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`descriptions for Exhibits 2049, 2072, and 2075, in response to Petitioner’s
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`objections.
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`Section 42.64(b)(1) requires that evidentiary objections “must identify the
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`grounds for the objection with sufficient particularity to allow correction in the
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`form of supplemental evidence.” 37 C.F.R. § 42.61(b)(1), 77 Fed. Reg. 48676
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`(Aug. 14, 2012). Many of Petitioner’s objections contain only conclusory
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`references to the Federal Rules of Evidence, and thus do not provide the required
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`particularity. For example, Petitioner’s objections to various paragraphs of
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`Exhibits 2021, 2022, 2023, 2024, and 2025 under Federal Rule of Evidence 703
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`lack the required particularity.
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`Petitioner’s objections to Exhibits 2094-2101 under Federal Rules of
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`Evidence 802 and 901 are without merit, particularly because these exhibits were
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`IPR2016-00510
`Patent 6,858,650
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`authenticated as business records by Dr. Clause Meese in his sworn declaration
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`(Ex. 2025). Nevertheless, Patent Owners serve herewith Exhibit 2102 as
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`supplemental evidence to provide additional information on the retrieval of these
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`exhibits. The availability of Exhibits 2094-2101 to persons of ordinary skill in the
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`art is not relevant because these exhibits are not presented as prior art, but rather as
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`permissible evidence of nonobviousness of the challenged claims.
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`All of Patent Owner’s exhibits were cited by Patent Owner in its Response
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`or by Patent Owner’s declarants in their supporting declarations, and none lack
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`relevance under Federal Rules of Evidence 401 and 402. Petitioner’s objections to
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`Exhibits 2021 and 2023 as irrelevant for relating to secondary considerations are
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`without merit because Patent Owner established in its Response, supported by the
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`Chyall Declaration (Ex. 2024), the nexus between the commercial embodiment and
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`the challenged claims. Petitioner’s objections to certain additional exhibits as
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`irrelevant, including, but not limited to, Exhibits 2036, 2040, 2050 and 2064,
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`mischaracterize the purpose of these exhibits, which provide context and
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`comparative analysis and are not presented as prior art. Further, relevance
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`objections to Exhibits 2071, 2073-2074, 2076-2091 are particularly lacking
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`because these exhibits substantiate Patent Owner’s assertions that the commercial
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`embodiment of the challenged claims was an improvement in the field of treatment
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`IPR2016-00510
`Patent 6,858,650
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`and possesses unexpected beneficial properties that could not have been predicted.
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`Such substantiating evidence would, necessarily, post-date the priority date.
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`UCB reserves all rights to respond to any further explanations Petitioner is
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`allowed to provide regarding its evidentiary objections. Patent Owner’s service of
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`supplemental evidence is timely under 37 C.F.R. § 42.64(b)(2) because it is served
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`within 10 business days of the service of Petitioner’s objections.
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`3
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`IPR2016-00510
`Patent 6,858,650
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`Respectfully submitted,
`
`
`WHITE & CASE LLP
`/Jeffrey J. Oelke/ (Electronically signed)
`Jeffrey J. Oelke, Reg. No. 37,409
`joelke@whitecase.com
`James S. Trainor, Jr., Reg. No. 52,297
`jtrainor@whitecase.com
`Robert E. Counihan, Reg. No. 61,382
`rcounihan@whitecase.com
`White & Case LLP
`1155 Avenue of the Americas
`New York, NY 10036
`(212) 819-8200
`
`Attorneys for UCB Pharma GmbH
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`Date: November 14, 2016
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`4
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`IPR2016-00510
`Patent 6,858,650
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner
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`Notice of Supplemental Evidence was served on November 14, 2016, by filing this
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`document through the Patent Review Processing System as well as delivering a
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`copy via electronic mail upon the following attorneys of record for the Petitioner:
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`Mitchell G. Stockwell, Reg. No. 39,389
`mstockwell@kilpatricktownsend.com
`D. Clay Holloway, Reg. No. 58,011
`cholloway@kilpatricktownsend.com
`Alyson L. Wooten, Reg. No. 58,045
`awooten@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, NE Suite 2800
`Atlanta, Georgia 30309
`(404) 815-6500
`
`
`/Jeffrey J. Oelke/ (Electronically signed)
`Jeffrey J. Oelke
`Reg. No. 37,409
`Phone: (212) 819-8200
`
`
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`
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`Date: November 14, 2016
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`5
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