THIRD UPDATED-- THIRD UPDATED-- THIRD UPDATED
`
`DANIELLE L. HERRITT
`MCCARTER & ENGLISH LLP,
`265 FRANKLIN STREET
`BOSTON, MA 02110
`
`Appeal No:
`Appellant:
`Reexam Control No:
`Hearing Room:
`Hearing Docket:
`Hearing Date:
`Hearing Time:
`Location:
`
`2014-007,671
`DANIELLE L. HERRI TT(3RD.PTY.REQ.), BIO
`DELIVERY SCIENCE INTERNATIONet al.
`95/002,170
`B
`A
`Wednesday, November 05,2014
`01:00PM
`Madison Building - East Wing
`600 Dulany Street, 9th Floor
`Alexandria, Virginia 22313-1450
`
`NOTICE OF HEARING
`RESPONSE REQUIRED WITHIN 21 DAYS
`
`Your attention is directed to 37 CFR § 41.73. The above identified appeal will be heard by
`the Patent Trial and Appeal Board on the date indicated. Hearings will commence at the time set,
`and as soon as the argument in one appeal is concluded, the succeeding appeal will be taken up.
`The time allowed for argument is 30 minutes for each appellant or respondent who has
`requested an oral hearing, unless additional time is requested and approved before the argument
`commences. As the hearing relates to an appeal of a reexamination, the hearing will be open
`to the public.
`Pursuant to § 41. 73( d), if any other party to the appeal desires to participate in the oral
`hearing, but did not request an oral hearing pursuant to§ 41.73(d), i.e., within two months after
`the mailing date of the Examiner's Answer, then this other party will be permitted to participate
`in the hearing by filing a separate request for oral hearing and the fee set forth in 3 7 C.F .R. §
`41.20(b)(3) within 21 DAYS of the mailing date of this Notice, as well as a confirmation of
`attendance at the oral hearing.
`CONFIRMATION OF ATTENDANCE OR WAIVER OF THE HEARING IS REQUIRED
`WITHIN 21 DAYS OF THE MAILING DATE OF THIS NOTICE. Failure to respond will be
`treated as a waiver of your request to participate in the oral hearing. If you are no longer
`interested in participating in the oral hearing, you must still file a waiver of oral hearing with the
`Board. This allows the panel to promptly act on the appeal without waiting for the oral hearing
`date.
`Confirmation or waiver of the hearing should be indicated by completing the form below and
`returning it to the Board. This form may be filed with the Board by any one of the following
`three alternative methods:
`
`DRL - EXHIBIT 1007
`DRL001
`
`

`
`1. PREFERRED: Via the USPTO Electronic Filing System (EFS) at
`http://www. uspto. gov /patents/process/file/ efs/
`2. Facsimile transmitted to: The USPTO Central fax number (official copy): (571) 273-8300
`and the PTAB Hearing fax number (courtesy copy): (571) 273-9797.
`
`3. By mail at the PT AB mailing address:
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. BOX 1450
`Alexandria, Virginia 22313-1450
`In all communications relating to this appeal, please identify the appeal by its number.
`
`CHECK ONE:
`(XI I previously filed my oral hearing request pursuant to 37 C.F.R. § 41.73(b).
`()I am now filing my initial request to participate in the oral hearing pursuant to 37 C.F. R.
`§ 41.73(d). A request for oral hearing and the fee set forth in 37 C.F.R. § 41.20(b)(3) are either
`attached to this hearing communication or have already been submitted.
`
`CHECK ONE:
`(X) IN-PERSON HEARING- ATTENDANCE CONFIRMED (EFS-Web selection:
`Confirmation of Hearing by Appellant)
`()TELEPHONIC HEARING- ATTENDANCE CONFIRMED (EFS-Web selection:
`Confirmation of Hearing by Appellant)
`()VIDEO HEARING- ATTENDANCE CONFIRMED (EFS-Web selection: Confirmation of
`Hearing by Appellant)
`()HEARING ATTENDANCE WAIVED (EFS-Web selection: Waiver of Hearing by
`Appellant)
`
`To aid the oral hearings staff in scheduling hearing rooms, please indicate the
`5
`total number of participating and observing attendees if more than three are expected:
`To aid the judges in determining whether any conflicts exist that may require a recusal, please
`list in the 'Comments' section the names of any additional person(s) who will be participating in
`the oral hearing. (Upon arrival, all persons presenting arguments must sign in at the Usher's
`desk.)
`
`Comments/Special Requests:
`Request: ELMO Projector
`
`Participants in Oral Hearing:
`Deborah M. Vernon (Reg. No. 55,699)
`Kia L. Freeman (Reg. No. 47,577)
`
`DRL - EXHIBIT 1007
`DRL002
`
`

`
`Danielle L. Herritt
`Typed or Printed Name of Attorney/ Agent/ Appellant
`
`43,670
`Registration No.
`
`~THIRD PARTY REQUESTER
`
`()PATENT OWNER
`/Danielle L. HerritU
`Signature of Attorney/ Agent/ Appellant
`The 'Hearings' tab ofthe PTAB webpage http://www.uspto.gov/ip/boards/bpai/index.jsp provides
`additional information about oral hearings.
`
`November 4, 2014
`Date
`
`Please direct other inquiries to the PTAB Hearings Clerk at 571-272-9797.
`
`cc: Patent Owner
`
`HOFFMANN & BARON LLP
`6900 JERICHO TURNPIKE
`SYOSSET, NY 11791
`
`DRL - EXHIBIT 1007
`DRL003
`
`

`
`US Patent No. 7,897,080
`Appeal No. 2014-007,671
`Reexamination No.: 95/002,170
`1177 44-00023
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Third Updated
`
`Third Party Requester's Confirmation of Attendance at Oral Hearing was served
`
`on November 4, 2014, by first class mail, directed to the patent owner at the
`
`correspondence address of record for the subject patent, that is:
`
`Daniel A. Scola, Jr.
`
`HOFFMANN & BARON, LLP
`
`6900 JERICHO TURNPIKE
`
`SYOSSET, NY 11791
`
`By:
`
`/Danielle L. Herritt/
`Danielle L. Herritt
`Registration No. 43,670
`Attorney for Third Party Requester
`
`MEl 19182989v.l
`
`DRL - EXHIBIT 1007
`DRL004
`
`

`
`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`20598225
`
`95002170
`
`International Application Number:
`
`Confirmation Number:
`
`6418
`
`Title of Invention:
`
`POLYETHYLENE-OXIDE BASED FILMS AND DRUG DELIVERY SYSTEMS MADE
`THEREFROM
`
`First Named Inventor/Applicant Name:
`
`7897080
`
`Customer Number:
`
`23869
`
`Filer:
`
`Danielle L. Herritt/Maureen Tierney
`
`Filer Authorized By:
`
`Danielle L. Herritt
`
`Attorney Docket Number:
`
`117744-00023
`
`Receipt Date:
`
`Filing Date:
`
`TimeStamp:
`
`04-NOV-2014
`
`1 0-SEP-2012
`
`11:08:31
`
`Application Type:
`
`inter partes reexam
`
`Payment information:
`
`Submitted with Payment
`
`I no
`
`File Listing:
`
`Document
`Number
`
`1
`
`Document Description
`
`File Name
`
`File Size( Bytes)/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(ifappl.)
`
`080TH I RDU pdated H eari ngConf
`irmation2014NOV4.PDF
`
`1084338
`
`cd9572cb8a48233f01 ed5ff79fea63522be8
`c6f7
`
`yes
`
`4
`
`DRL - EXHIBIT 1007
`DRL005
`
`

`
`Multipart Description/PDF files in .zip description
`
`Document Description
`
`Start
`
`End
`
`Reexam Miscellaneous Incoming Letter
`
`Reexam Certificate of Service
`
`1
`
`4
`
`3
`
`4
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`1084338
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New A~~lications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International A~~lication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International A~~lication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 0), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`DRL - EXHIBIT 1007
`DRL006
`
`

`
`UPDATED--UPDATED--UPDATED
`
`DANIELLE L. HERRITT
`MCCARTER & ENGLISH LLP,
`265 FRANKLIN STREET
`BOSTON, MA 02110
`
`Appeal No:
`Appellant:
`Reexam Control No:
`Hearing Room:
`Hearing Docket:
`Hearing Date:
`Hearing Time:
`Location:
`
`2014-007,671
`DANIELLE L. HERRI TT(3RD.PTY.REQ.), BIO
`DELIVERY SCIENCE INTERNATIONet al.
`95/002,170
`B
`A
`Wednesday, November 05,2014
`01:00PM
`Madison Building - East Wing
`600 Dulany Street, 9th Floor
`Alexandria, Virginia 22313-1450
`
`NOTICE OF HEARING
`RESPONSE REQUIRED WITHIN 21 DAYS
`
`Your attention is directed to 37 CFR § 41.73. The above identified appeal will be heard by
`the Patent Trial and Appeal Board on the date indicated. Hearings will commence at the time set,
`and as soon as the argument in one appeal is concluded, the succeeding appeal will be taken up.
`The time allowed for argument is 30 minutes for each appellant or respondent who has
`requested an oral hearing, unless additional time is requested and approved before the argument
`commences. As the hearing relates to an appeal of a reexamination, the hearing will be open
`to the public.
`Pursuant to § 41. 73( d), if any other party to the appeal desires to participate in the oral
`hearing, but did not request an oral hearing pursuant to§ 41.73(d), i.e., within two months after
`the mailing date of the Examiner's Answer, then this other party will be permitted to participate
`in the hearing by filing a separate request for oral hearing and the fee set forth in 3 7 C.F .R. §
`41.20(b)(3) within 21 DAYS of the mailing date of this Notice, as well as a confirmation of
`attendance at the oral hearing.
`CONFIRMATION OF ATTENDANCE OR WAIVER OF THE HEARING IS REQUIRED
`WITHIN 21 DAYS OF THE MAILING DATE OF THIS NOTICE. Failure to respond will be
`treated as a waiver of your request to participate in the oral hearing. If you are no longer
`interested in participating in the oral hearing, you must still file a waiver of oral hearing with the
`Board. This allows the panel to promptly act on the appeal without waiting for the oral hearing
`date.
`Confirmation or waiver of the hearing should be indicated by completing the form below and
`returning it to the Board. This form may be filed with the Board by any one of the following
`three alternative methods:
`
`DRL - EXHIBIT 1007
`DRL007
`
`

`
`1. PREFERRED: Via the USPTO Electronic Filing System (EFS) at
`http://www. uspto. gov /patents/process/file/ efs/
`2. Facsimile transmitted to: The USPTO Central fax number (official copy): (571) 273-8300
`and the PTAB Hearing fax number (courtesy copy): (571) 273-9797.
`
`3. By mail at the PT AB mailing address:
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. BOX 1450
`Alexandria, Virginia 22313-1450
`In all communications relating to this appeal, please identify the appeal by its number.
`
`CHECK ONE:
`(XI I previously filed my oral hearing request pursuant to 37 C.F.R. § 41.73(b).
`()I am now filing my initial request to participate in the oral hearing pursuant to 37 C.F. R.
`§ 41.73(d). A request for oral hearing and the fee set forth in 37 C.F.R. § 41.20(b)(3) are either
`attached to this hearing communication or have already been submitted.
`
`CHECK ONE:
`(X) IN-PERSON HEARING- ATTENDANCE CONFIRMED (EFS-Web selection:
`Confirmation of Hearing by Appellant)
`()TELEPHONIC HEARING- ATTENDANCE CONFIRMED (EFS-Web selection:
`Confirmation of Hearing by Appellant)
`()VIDEO HEARING- ATTENDANCE CONFIRMED (EFS-Web selection: Confirmation of
`Hearing by Appellant)
`()HEARING ATTENDANCE WAIVED (EFS-Web selection: Waiver of Hearing by
`Appellant)
`
`To aid the oral hearings staff in scheduling hearing rooms, please indicate the
`5
`total number of participating and observing attendees if more than three are expected:
`To aid the judges in determining whether any conflicts exist that may require a recusal, please
`list in the 'Comments' section the names of any additional person(s) who will be participating in
`the oral hearing. (Upon arrival, all persons presenting arguments must sign in at the Usher's
`desk.)
`
`Comments/Special Requests:
`Request: ELMO Projector
`
`Participants in Oral Hearing:
`Danielle L. Herritt (Reg. No. 43,670)
`Deborah M. Vernon (Reg. No. 55,699)
`
`DRL - EXHIBIT 1007
`DRL008
`
`

`
`Danielle L. Herritt
`Typed or Printed Name of Attorney/ Agent/ Appellant
`
`43,670
`Registration No.
`
`~THIRD PARTY REQUESTER
`
`()PATENT OWNER
`/Danielle L. HerritU
`Signature of Attorney/ Agent/ Appellant
`The 'Hearings' tab ofthe PTAB webpage http://www.uspto.gov/ip/boards/bpai/index.jsp provides
`additional information about oral hearings.
`
`November 3, 2014
`Date
`
`Please direct other inquiries to the PTAB Hearings Clerk at 571-272-9797.
`
`cc: Patent Owner
`
`HOFFMANN & BARON LLP
`6900 JERICHO TURNPIKE
`SYOSSET, NY 11791
`
`DRL - EXHIBIT 1007
`DRL009
`
`

`
`US Patent No. 7,897,080
`Appeal No. 2014-007,671
`Reexamination No.: 95/002,170
`1177 44-00023
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Updated Third
`
`Party Requester's Confirmation of Attendance at Oral Hearing was served on
`
`November 3, 2014, by first class mail, directed to the patent owner at the
`
`correspondence address of record for the subject patent, that is:
`
`Daniel A. Scola, Jr.
`
`HOFFMANN & BARON, LLP
`
`6900 JERICHO TURNPIKE
`
`SYOSSET, NY 11791
`
`By:
`
`/Danielle L. Herritt/
`Danielle L. Herritt
`Registration No. 43,670
`Attorney for Third Party Requester
`
`MEl 18985971 v.l
`
`DRL - EXHIBIT 1007
`DRL010
`
`

`
`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`20586357
`
`95002170
`
`International Application Number:
`
`Confirmation Number:
`
`6418
`
`Title of Invention:
`
`POLYETHYLENE-OXIDE BASED FILMS AND DRUG DELIVERY SYSTEMS MADE
`THEREFROM
`
`First Named Inventor/Applicant Name:
`
`7897080
`
`Customer Number:
`
`23869
`
`Filer:
`
`Danielle L. Herritt/Maureen Tierney
`
`Filer Authorized By:
`
`Danielle L. Herritt
`
`Attorney Docket Number:
`
`117744-00023
`
`Receipt Date:
`
`Filing Date:
`
`TimeStamp:
`
`03-NOV-2014
`
`1 0-SEP-2012
`
`12:29:39
`
`Application Type:
`
`inter partes reexam
`
`Payment information:
`
`Submitted with Payment
`
`I no
`
`File Listing:
`
`Document
`Number
`
`1
`
`Document Description
`
`File Name
`
`File Size( Bytes)/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(ifappl.)
`
`080UpdatedHearingConfirmati
`on2014NOV3.PDF
`
`1107256
`
`0652a7d5f46dcfac52e946e6140a3301921 d
`e2a8
`
`yes
`
`4
`
`DRL - EXHIBIT 1007
`DRL011
`
`

`
`Multipart Description/PDF files in .zip description
`
`Document Description
`
`Start
`
`End
`
`Reexam Miscellaneous Incoming Letter
`
`Reexam Certificate of Service
`
`1
`
`4
`
`3
`
`4
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`1107256
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New A~~lications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International A~~lication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International A~~lication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 0), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`DRL - EXHIBIT 1007
`DRL012
`
`

`
`SECOND UPDATED-- SECOND UPDATED-- SECOND UPDATED
`
`DANIELLE L. HERRITT
`MCCARTER & ENGLISH LLP,
`265 FRANKLIN STREET
`BOSTON, MA 02110
`
`Appeal No:
`Appellant:
`Reexam Control No:
`Hearing Room:
`Hearing Docket:
`Hearing Date:
`Hearing Time:
`Location:
`
`2014-007,671
`DANIELLE L. HERRI TT(3RD.PTY.REQ.), BIO
`DELIVERY SCIENCE INTERNATIONet al.
`95/002,170
`B
`A
`Wednesday, November 05,2014
`01:00PM
`Madison Building - East Wing
`600 Dulany Street, 9th Floor
`Alexandria, Virginia 22313-1450
`
`NOTICE OF HEARING
`RESPONSE REQUIRED WITHIN 21 DAYS
`
`Your attention is directed to 37 CFR § 41.73. The above identified appeal will be heard by
`the Patent Trial and Appeal Board on the date indicated. Hearings will commence at the time set,
`and as soon as the argument in one appeal is concluded, the succeeding appeal will be taken up.
`The time allowed for argument is 30 minutes for each appellant or respondent who has
`requested an oral hearing, unless additional time is requested and approved before the argument
`commences. As the hearing relates to an appeal of a reexamination, the hearing will be open
`to the public.
`Pursuant to § 41. 73( d), if any other party to the appeal desires to participate in the oral
`hearing, but did not request an oral hearing pursuant to§ 41.73(d), i.e., within two months after
`the mailing date of the Examiner's Answer, then this other party will be permitted to participate
`in the hearing by filing a separate request for oral hearing and the fee set forth in 3 7 C.F .R. §
`41.20(b)(3) within 21 DAYS of the mailing date of this Notice, as well as a confirmation of
`attendance at the oral hearing.
`CONFIRMATION OF ATTENDANCE OR WAIVER OF THE HEARING IS REQUIRED
`WITHIN 21 DAYS OF THE MAILING DATE OF THIS NOTICE. Failure to respond will be
`treated as a waiver of your request to participate in the oral hearing. If you are no longer
`interested in participating in the oral hearing, you must still file a waiver of oral hearing with the
`Board. This allows the panel to promptly act on the appeal without waiting for the oral hearing
`date.
`Confirmation or waiver of the hearing should be indicated by completing the form below and
`returning it to the Board. This form may be filed with the Board by any one of the following
`three alternative methods:
`
`DRL - EXHIBIT 1007
`DRL013
`
`

`
`1. PREFERRED: Via the USPTO Electronic Filing System (EFS) at
`http://www. uspto. gov /patents/process/file/ efs/
`2. Facsimile transmitted to: The USPTO Central fax number (official copy): (571) 273-8300
`and the PTAB Hearing fax number (courtesy copy): (571) 273-9797.
`
`3. By mail at the PT AB mailing address:
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. BOX 1450
`Alexandria, Virginia 22313-1450
`In all communications relating to this appeal, please identify the appeal by its number.
`
`CHECK ONE:
`(XI I previously filed my oral hearing request pursuant to 37 C.F.R. § 41.73(b).
`()I am now filing my initial request to participate in the oral hearing pursuant to 37 C.F. R.
`§ 41.73(d). A request for oral hearing and the fee set forth in 37 C.F.R. § 41.20(b)(3) are either
`attached to this hearing communication or have already been submitted.
`
`CHECK ONE:
`(X) IN-PERSON HEARING- ATTENDANCE CONFIRMED (EFS-Web selection:
`Confirmation of Hearing by Appellant)
`()TELEPHONIC HEARING- ATTENDANCE CONFIRMED (EFS-Web selection:
`Confirmation of Hearing by Appellant)
`()VIDEO HEARING- ATTENDANCE CONFIRMED (EFS-Web selection: Confirmation of
`Hearing by Appellant)
`()HEARING ATTENDANCE WAIVED (EFS-Web selection: Waiver of Hearing by
`Appellant)
`
`To aid the oral hearings staff in scheduling hearing rooms, please indicate the
`5
`total number of participating and observing attendees if more than three are expected:
`To aid the judges in determining whether any conflicts exist that may require a recusal, please
`list in the 'Comments' section the names of any additional person(s) who will be participating in
`the oral hearing. (Upon arrival, all persons presenting arguments must sign in at the Usher's
`desk.)
`
`Comments/Special Requests:
`Request: ELMO Projector
`
`Participants in Oral Hearing:
`Danielle L. Herritt (Reg. No. 43,670)
`Deborah M. Vernon (Reg. No. 55,699)
`Kia L. Freeman (Reg. No. 47,577)
`
`DRL - EXHIBIT 1007
`DRL014
`
`

`
`Danielle L. Herritt
`Typed or Printed Name of Attorney/ Agent/ Appellant
`
`43,670
`Registration No.
`
`~THIRD PARTY REQUESTER
`
`()PATENT OWNER
`/Danielle L. HerritU
`Signature of Attorney/ Agent/ Appellant
`The 'Hearings' tab ofthe PTAB webpage http://www.uspto.gov/ip/boards/bpai/index.jsp provides
`additional information about oral hearings.
`
`November 3, 2014
`Date
`
`Please direct other inquiries to the PTAB Hearings Clerk at 571-272-9797.
`
`cc: Patent Owner
`
`HOFFMANN & BARON LLP
`6900 JERICHO TURNPIKE
`SYOSSET, NY 11791
`
`DRL - EXHIBIT 1007
`DRL015
`
`

`
`US Patent No. 7,897,080
`Appeal No. 2014-007,671
`Reexamination No.: 95/002,170
`1177 44-00023
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Second
`
`Updated Third Party Requester's Confirmation of Attendance at Oral Hearing was
`
`served on November 3, 2014, by first class mail, directed to the patent owner at the
`
`correspondence address of record for the subject patent, that is:
`
`Daniel A. Scola, Jr.
`
`HOFFMANN & BARON, LLP
`
`6900 JERICHO TURNPIKE
`
`SYOSSET, NY 11791
`
`By:
`
`/Danielle L. Herritt/
`Danielle L. Herritt
`Registration No. 43,670
`Attorney for Third Party Requester
`
`MEl 18985971 v.l
`
`DRL - EXHIBIT 1007
`DRL016
`
`

`
`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`20595766
`
`95002170
`
`International Application Number:
`
`Confirmation Number:
`
`6418
`
`Title of Invention:
`
`POLYETHYLENE-OXIDE BASED FILMS AND DRUG DELIVERY SYSTEMS MADE
`THEREFROM
`
`First Named Inventor/Applicant Name:
`
`7897080
`
`Customer Number:
`
`23869
`
`Filer:
`
`Danielle L. Herritt/Maureen Tierney
`
`Filer Authorized By:
`
`Danielle L. Herritt
`
`Attorney Docket Number:
`
`117744-00023
`
`Receipt Date:
`
`Filing Date:
`
`TimeStamp:
`
`03-NOV-2014
`
`1 0-SEP-2012
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`20:35:14
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`Application Type:
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`inter partes reexam
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`Payment information:
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`Submitted with Payment
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`I no
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`File Listing:
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`Document
`Number
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`1
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`Document Description
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`File Name
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`File Size( Bytes)/
`Message Digest
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`Multi
`Part /.zip
`
`Pages
`(ifappl.)
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`080SECONDUpdatedHearingC
`onfirmation2014NOV3.PDF
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`1106481
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`7 eS 9f1 c3b3 7be069d 63 3 80f3 5 a282 9cfff482
`887
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`yes
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`4
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`DRL - EXHIBIT 1007
`DRL017
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`

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`Multipart Description/PDF files in .zip description
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`Document Description
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`Start
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`End
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`Reexam Miscellaneous Incoming Letter
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`Reexam Certificate of Service
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`1
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`4
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`3
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`4
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`Warnings:
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`Information:
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`Total Files Size (in bytes)
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`1106481
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New A~~lications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International A~~lication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International A~~lication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 0), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
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`DRL - EXHIBIT 1007
`DRL018
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In reAppeal No. 2014-007671 of
`Inter Partes Reexamination of:
`US Patent No. 7,897,080
`
`Named Inventor: Robert K. Yang et al.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`Title: POLYETHYLENE OXIDE-BASED )
`FILMS AND DRUG DELIVERY
`)
`SYSTEMS MADE THEREFROM
`)
`
`Control No. 95/002,170
`
`Request Filed: September 10, 2012
`
`Confirmation No.: 6418
`
`Group Art Unit: 3991
`
`Examiner: Alan D. Diamond
`
`M&E Docket: 1177 44-00023
`
`H&B Docket: 1199-26
`RCE/CON/REX
`
`PATENT TRIAL and APPEAL BOARD
`UNITES STATES PATENT AND TRADEMARK OFFICE
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`UPDATE ON RELATED APPEAL
`
`Both parties identified the appeal of the inter partes reexamination of US
`
`Patent No. 7,824,588 as a Related Appeal. See Appellant (MonoSol) Appeal Brief,
`
`March 10, 2014, at pp. 1-2 (referencing Appeal No. 2014-000547 of
`
`Reexamination Control No. 95/001,753); and BDSI's Respondent Brief in Inter
`
`Partes Reexamination, April10, 2014, at p. 2 (with three exceptions, agreeing to
`
`Patent Owner's identification of Related Appeals and Interferences). Requester
`
`now updates the Board on the resolution of that related appeal and, for the Board's
`
`reference, provides the attached Decision on Appeal No. 2014-000547.
`
`MEl 19085583v.l
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`DRL - EXHIBIT 1007
`DRL019
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`

`
`US Patent No. 7,897,080
`Reexamination No.: 95/002,170
`1177 44-00023
`
`The attached Decision issued on April 17, 20 14-after the respondent's brief
`
`was filed in this appeal. The attached Decision did not become final until June 17,
`
`20 14-after the briefing concluded in this appeal. The attached Decision on
`
`Appeal is relevant to issues in this appeal.
`
`Respectfully submitted,
`
`Attorneys for Requester, McCarter & English, LLP
`
`Dated: October 17, 2014
`
`By: ____ ~/D==a=n=ie=l=le~L=·~H=e=rn=·=tt~/ ______ __
`
`Danielle L. Herritt (Reg. No. 43,670)
`Kia L. Freeman (Reg. No. 47,577)
`Direct Dial: 617-449-6513
`
`MEl 19085583v.l
`
`2
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`DRL - EXHIBIT 1007
`DRL020
`
`

`
`US Patent No. 7,897,080
`Reexamination No.: 95/002,170
`1177 44-00023
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the Rebuttal Brief was
`
`served on October 17, 2014, by first class mail, directed to the patent owner at the
`
`correspondence address of record for the subject patent, that is:
`
`Daniel A. Scola, Jr.
`
`HOFFMANN & BARON, LLP
`
`6900 JERICHO TURNPIKE
`
`SYOSSET, NY 11791
`
`By:
`
`/Danielle L. Herritt/
`Danielle L. Herritt
`Registration No. 43,670
`Attorney for Respondent
`
`MEl 19085583v.l
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`3
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`DRL - EXHIBIT 1007
`DRL021
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`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,753
`
`09/12/2011
`
`7,824,588
`
`117744-00016
`
`6620
`
`7590
`23869
`Hoffmann & Baron LLP
`6900 Jericho Turnpike
`Syosset, NY 11791
`
`04/17/2014
`
`EXAMINER
`
`DIAMOND, ALAND
`
`ART UNIT
`
`PAPER NUMBER
`
`3991
`
`MAIL DATE
`
`DELIVERY MODE
`
`04/17/2014
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`•-
`
`·-
`
`--.... ,
`
`PTOL-90A (Rev. 04/07)
`
`DRL - EXHIBIT 1007
`DRL022
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`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE PATENT TRIAL AND APPEAL BOARD
`
`BIODELIVERY SCIENCES INTERNATIONAL, INC.
`Requester
`
`v.
`
`MONOSOL RX, LLC
`Patent Owner and Appellant
`
`Appeal2014-000547
`Reexamination Control 95/001,753
`Patent 7,824,588 B2
`Technology Center 3900
`
`Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and
`RAE LYNN P. GUEST, Administrative Patent Judges.
`
`GUEST, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`This is a decision on appeal by the Patent Owner from the Patent
`
`Examiner's decision to reject pending claims in an inter partes
`reexamination of U.S. Patent 7,824,588 B2 (herein after the "'588 patent"). 1
`
`1 The '588 patent issued November 2, 2010, to Robert K. Yang, et al.
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`DRL - EXHIBIT 1007
`DRL023
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`

`
`Appeal 2014-00054 7
`Reexamination Control95/001,753
`Patent 7,824,588 B2
`
`The Board's jurisdiction for this appeal is under 35 U.S. C. §§ 6(b), 134, and
`
`315. We AFFIRM.
`
`I. BACKGROUND
`
`A request for inter partes reexamination under 35 U.S.C. §§ 311-318
`
`and 37 C.F.R. §§ 1.902-1.997 for the '588 patent was filed on
`
`September 12,2011, by a Third-Party Requester, BioDelivery Sciences
`
`International, Inc. (hereinafter "Requester"). See Request for Inter Partes
`
`Reexamination 1 (hereinafter "Request"); Requester's Respondent Brief,
`
`dated July 24, 2013 (hereinafter "Res. Br."). The Patent Owner and
`
`Appellant is MonoSol Rx, LLC (hereinafter "Patent Owner"). Patent
`
`Owner's Appeal Br. 1, dated June 24, 2013 (hereinafter "App. Br.").
`
`The '588 patent is the subject of a litigation proceeding in the United
`
`States District Court for the District of New Jersey styled MonoSol Rx, LLC
`
`v. BioDelivery Sciences Int'l, Inc., 10-cv-5695. The litigation is currently
`
`stayed pending the outcome of this Reexamination proceeding. See App.
`
`Br. 2.
`
`An oral hearing was held March 26, 2014. A transcript of the hearing
`
`will be entered into the record in due course.
`
`The '588 patent is directed to a method for forming a rapidly
`
`dissolving film containing an active ingredient evenly or uniformly
`
`distributed throughout the film. '588 patent, col. 1, 11. 35-42. According to
`
`the '588 patent, "uniform distribution is achieved by controlling one or more
`
`parameters, and particularly the elimination of air pockets prior to and
`
`during film formation and the use of a drying process that reduces
`
`2
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`DRL - EXHIBIT 1007
`DRL024
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`

`
`Appeal2014-000547
`Reexamination Control95/001,753
`Patent 7,824,588 B2
`
`aggregation or conglomeration of the components in the film as it forms into
`
`a solid structure." !d. at col. 1, 11. 37-42.
`
`The '58 8 patent originally contained claims 1-191. During
`
`reexamination, Patent Owner amended claim 1 and added new independent
`
`claims 192 and 193. Claims 1-193 are currently rejected by the Examiner.
`
`Although Patent Owner appeals the rejection of all of the claims so
`
`rejected, with respect to independent claims 25 and 50 and the claims that
`
`depend therefrom, Patent Owner does not address the Examiner's specific
`
`findings and conclusions articulated in the rejections or explain why these
`positions are deficient. PO App. Br. 4. Accordingly, we summarily affirm the
`Examiner's rejections of claims 25 and 50 and the claims that depend
`
`therefrom.
`Consistent with the arguments presented by Patent Owner, we address
`the rejections of claims 1-24,75,78, 81, 84, 87, 90, 93, 96, 99, 102, 105, 106,
`
`111-132, 177, 178, 183, 186, 189, 192, and 193. !d.
`
`Claims 1, 192 and 193 are at issue in this appeal and read as follows
`
`(with underlining showing additional language over the original patented
`
`claim):
`
`1. A method of making a self-supporting therapeutic
`active-containing film comprising:
`(a) Mixing at least one edible polymer component, a
`therapeutic active composition, and at least one polar solvent to
`form a matrix;
`(b) Forming a wet film from said matrix, said wet film
`having a substantially uniform content of therapeutic active
`composition throughout said wet film;
`(c) Removing said polar solvent from said matrix with
`heat and/or radiation energy by exposing said matrix to a
`
`3
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`DRL - EXHIBIT 1007
`DRL025
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`

`
`Appeal2014-000547
`Reexamination Control 95/001,