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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEALS BOARD
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`AMERIGEN PHARMACEUTICALS LIMITED,
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`Petitioner,
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`v.
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`SHIRE LLC,
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`Patent Owner
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`PETITIONER’S REQUEST FOR ORAL ARGUMENT
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`Case No.: IPR2015-02009
`Patent No.: Re 42,096
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`– 1 –
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`Polaris Innovations LTD Exhibit 2010
`Kingston v. Polaris, IPR2016-01622
`Page 2010-1
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`Pursuant to the Paper #9, Scheduling Order at 4 and 37 C.F.R. § 42.70(a),
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`see also, 35 U.S.C. 326(a)(10), Petitioner Amerigen Pharmaceuticals Limited sub-
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`mits this Request for Oral Argument on the following issues:
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`1.
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`As presented in the Paper #8, Decision, Institution of Inter Partes
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`Review, 37 C.F.R. § 42.108 (April 18, 2016) (“Institution Decision”):
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`a. Whether Claims 18–21 and 23 are invalid on the evidence of
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`record on the basis of anticipation by Mehta1, from the Paper
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`#8, Institution Decision at 25–28, 31; and
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`b. Whether Claims 18–21, 23, and 25 are invalid on the evidence
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`of record on the basis of obviousness over Mehta and the
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`Adderall PDR2, from the Paper #8, Institution Decision at 34–
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`36
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`2.
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`As presented
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`in Paper #10, Patent Owner’s Request
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`for
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`Reconsideration, whether the Institution Decision instituted inter partes review of
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`Claim 25 or instituted inter partes review of only some part less than the whole of
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`Claim 25.
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`3.
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`As presented by Petitioner’s Paper #11, Motion Presenting Request
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`for Rehearing Under 37 C.F.R. § 42.71(d) of Decision Denying-In-Part Institution
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`1 U.S. Patent No. 5,837,284 (filed July 14, 1997) (“Mehta”) (Ex. 1003).
`2 PHYSICIANS’ DESK REFERENCE 331, 2209–11 (51st ed. 1997) (“Adderall
`PDR”) (Ex. 1004).
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`– 2 –
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`Polaris Innovations LTD Exhibit 2010
`Kingston v. Polaris, IPR2016-01622
`Page 2010-2
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`
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`of Inter Partes Review, whether the claim language “essentially all . . . within
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`about 60 minutes” is expressly disclosed and presumptively enabled by Mehta,
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`without regard to inherency, as shown through the unrebutted testimony of
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`Dr. Elder (Exhibit 1005 ¶ 283), such that the Board should reconsider (i) its denial
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`of institution as to Claims 1–3, 5, 8–9, 11, and 25 on grounds of anticipation by
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`Mehta, (ii) its denial of institution of Claims 1–3, 5, 8–9, and 11 on grounds of
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`obviousness over Mehta and the Adderall PDR, and (iii) its denial of institution as
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`to Claims 8, 9, and 11 on grounds of obviousness over Mehta, the 1997 Adderall
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`ADR, and Rosen.
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`4.
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`As presented by Paper #15, Patent Owner’s Motion to Amend; by
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`Paper #17, Petitioner’s Opposition to Motion to Amend; and by Paper #21, Patent
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`Owner’s Reply to Petitioner’s Opposition to Motion to Amend:
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`a. Whether Patent Owner met its burden of showing that the proposed
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`amended claim under its broadest reasonable interpretation would be
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`valid over all art known to the Patent Owner, including, for example,
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`but not limited to, art not cited in the Paper #1, Petition for Inter
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`Partes Review of USPN RE42,096 under 35 U.S.C. §§ 311–319 and
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`37 C.F.R. 42.1–42.80 and 42.100–42.123, but otherwise disclosed to
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`the Patent Owner in related litigation;
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`– 3 –
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`Polaris Innovations LTD Exhibit 2010
`Kingston v. Polaris, IPR2016-01622
`Page 2010-3
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`b. Whether the proposed amended Claim 25 under its broadest
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`reasonable interpretation would be valid in light of the unrebutted
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`evidence of record teaching every limitation of proposed amended
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`Claim 25 as it depends from Claim 2, including the claim language
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`“essentially all . . . within about 60 minutes” as expressly disclosed
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`and presumptively enabled by Mehta, without regard to inherency, as
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`shown through the unrebutted testimony of Dr. Elder (e.g., Exhibit
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`1005 ¶ 283); and
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`c. Whether the proposed amendment should be denied for Patent
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`Owner’s failure to show good cause for its untimely filing.
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`5.
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`Any issues presented in motions to exclude evidence filed in
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`accordance with Paper #9, Scheduling Order.
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`Paper #9, Scheduling Order, at 6 has previously set oral argument (if
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`requested) on the instituted claims for January 10, 2017. Petitioner requests that
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`oral argument on all pending issues identified hereinabove be heard on that date, or
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`at such other date and time as the Board may set.
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`Dated: December 9, 2016
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`/Marc R. Wezowski/
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`Marc R. Wezowski, Reg. No. 73,825
`Lead Counsel for Petitioner
`marc.wezowski@huschblackwell.com
`Philip D. Segrest, Jr., Reg. No. 39,021
`Backup Counsel for Petitioner
`philip.segrest@huschblackwell.com
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`– 4 –
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`Polaris Innovations LTD Exhibit 2010
`Kingston v. Polaris, IPR2016-01622
`Page 2010-4
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`HUSCH BLACKWELL LLP
`120 South Riverside Plaza, Suite 2200
`Chicago, IL 60606
`Tel. 312-655-1500
`Fax. 312-644-1501
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`– 5 –
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`Polaris Innovations LTD Exhibit 2010
`Kingston v. Polaris, IPR2016-01622
`Page 2010-5
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`CERTIFICATE OF SERVICE
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`I certify that under 37 C.F.R. § 42.6 a copy of the foregoing
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`PETITIONER’S REQUEST FOR ORAL ARGUMENT was served upon the
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`named individuals below on December 9, 2016 by email as provided by 37
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`C.F.R. § 42.6(e)(l) and the agreement of the parties:
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`December 9, 2016
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`Joseph R. Robinson
`joseph.robinson@troutmansanders.com
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`Robert Schaffer
`robert.schaffer@troutmansanders.com
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`Dustin B. Weeks
`dustin.weeks@troutmansanders.com
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`/Marc R. Wezowski/
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`Marc R. Wezowski, Reg. No. 73,825
`Lead Counsel for Petitioner
`marc.wezowski@huschblackwell.com
`Philip D. Segrest, Reg. No. 39,021
`Backup Counsel for Petitioner
`philip.segrest@huschblackwell.com
`HUSCH BLACKWELL LLP
`120 South Riverside Plaza, Suite 2200
`Chicago, IL 60606
`Tel. 312-655-1500
`Fax. 312-644-1501
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`– 6 –
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`Polaris Innovations LTD Exhibit 2010
`Kingston v. Polaris, IPR2016-01622
`Page 2010-6
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