`U.S. Patent No. 7,064,197
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`HOLOGIC, INC., and BECTON, DICKINSON AND COMPANY,
`Petitioner
`
`v.
`
`
`
`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`
`Case IPR2016-00822
`
`U.S. Patent No. 7,064,197
`TITLE: SYSTEM, ARRAY AND NON-POROUS SOLID SUPPORT
`COMPRISING FIXED OR IMMOBILIZED NUCLEIC ACIDS
`Issue Date: June 20, 2006
`
`__________________
`
`ENZO’S REQUEST FOR ORAL ARGUMENT
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`Pursuant to 37 C.F.R. § 42.70, Patent Owner Enzo Life Sciences, Inc.
`
`(“Enzo”) respectfully requests oral argument for Case IPR2016-00822, which oral
`
`argument is currently scheduled for June 1, 2017. Enzo anticipates that it will
`
`present oral argument on the following issues:
`
`1.
`
`Claims 17, 19, 25, 105, 106, 114, 116, 119, 128, 129, 150, 152, 178,
`
`180, 186, and 187 of U.S. Patent No. 7,064,197 (“the ’197 Patent”)
`
`are not anticipated by Fish.
`
`2.
`
`Claims 130, 131, 151, and 154 of the ‘197 Patent are not obvious over
`
`Fish.
`
`3.
`
`Claims 120 and 189 of the ’197 Patent are not obvious over Fish,
`
`Metzgar, and Sato.
`
`4.
`
`Claims 113 and 185 of the ’197 Patent are not obvious over Fish and
`
`Gilham.
`
`5.
`
`6.
`
`VPK is not prior art to the challenged claims of the ’197 Patent.
`
`Claims 17, 19, 25, 105, 106, 114, 119, 120, 128, 129, 131, 150, 151,
`
`152, 178, 180, 186, and 189 of the ’197 Patent are not obvious over
`
`VPK and Metzgar.
`
`7.
`
`Claims 113, 116, 130, 154, 185, and 187 of the ’197 Patent are not
`
`obvious over VPK, Noyes, Metzgar, and Ramachandran.
`
`8.
`
`Enzo’s Motion to Exclude.
`
`1
`
`
`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`Enzo also anticipates that it will present oral argument to rebut Petitioners’
`
`arguments.
`
`
`
`Enzo respectfully proposes consolidating oral argument in this proceeding
`
`with oral argument in related matter Case IPR2016-00820, which involves the
`
`same patent and many of the same issues. Enzo also respectfully proposes that
`
`each side receive 45 minutes in total to present its arguments in the consolidated
`
`oral argument.
`
`
`
`Finally, Enzo requests the use of audio-visual equipment to display
`
`demonstratives and exhibits, including the use of a computer, ELMO presenter,
`
`projector, and screen.
`
`Dated: April 24, 2017
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`2
`
`
`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on April 24,
`
`2017, a complete copy of the foregoing was served on counsel of record for the
`Petitioner by filing this document through PTAB E2E and by sending this
`document via electronic mail to the following addresses:
`
`For Petitioner Hologic:
`
`M. Paul Barker (Reg. No. 32,013)
`paul.barker@finnegan.com
`
`Arpita Bhattacharyya (Reg. No. 63,681)
`arpita.bhattacharyya@finnegan.com
`
`Thomas L. Irving (Reg. No. 28,619)
`tom.irving@finnegan.com
`
`For Petitioner BD:
`
`Jamie T. Wisz (Reg. No. 58,429)
`Jamie.Wisz@WilmerHale.com
`
`Heather Petruzzi (Reg. No. 71,720)
`Heather.Petruzzi@WilmerHale.com
`
`Nancy Lynn Schroeder (Reg. No.
`75,538)
`Nancy.Schroeder@WilmerHale.com
`
`Respectfully submitted,
`
`
`
`Dated: April 24, 2017
`
`
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`
`
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