Trials
`Aydin Harston; Trials
`Livingstone, John; Yoshida, Naoki; toan.vo@bausch.com; KakenIPR; E. Anthony Figg; Lisa N. Phillips;
`LITIGATION PARALEGALS; trea@crowell.com; slentz@crowell.com; tliu@agpharm.com; Hartmann, Anthony
`RE: IPR2017-00190: Acrux DDS Pty Ltd. v. Kaken Pharmaceutical Co., Ltd.
`Friday, July 20, 2018 2:44:28 PM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`We view the “completion of IPR2017-00190” to occur when either the time for appeal has expired and no
`appeal has been filed, or upon the exhaustion of any appeal from this proceeding. When IPR2017-00190
`is complete, we will lift the stay of Reissue Application 15/405,171 without the need for any further motion
`practice or briefing by either party. Upon the exhaustion of any appeal from this proceeding, Patent
`Owner should submit an e-mail to the Board indicating such completion to facilitate lifting the stay.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`From: Aydin Harston <aharston@rothwellfigg.com>
`Sent: Thursday, July 19, 2018 12:09 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Livingstone, John <John.Livingstone@finnegan.com>; Yoshida, Naoki
`<naoki.yoshida@finnegan.com>; toan.vo@bausch.com; KakenIPR <KakenIPR@finnegan.com>; E.
`Anthony Figg <efigg@rothwellfigg.com>; Lisa N. Phillips <lphillip@rothwellfigg.com>; LITIGATION
`PARALEGALS <LITIGATIONPARALEGALS@rothwellfigg.com>; trea@crowell.com;
`slentz@crowell.com; tliu@agpharm.com; 'Hartmann, Anthony' <anthony.hartmann@finnegan.com>
`Subject: RE: IPR2017-00190: Acrux DDS Pty Ltd. v. Kaken Pharmaceutical Co., Ltd.
`
`Dear Board,
`
`In connection with Patent Owner’s request for clarification, Petitioners direct the Board’s attention
`to these Orders lifting the stay only after the proceeding was complete:
`
`·
`
`·
`
`Sienna Biopharmaceuticals, Inc. v. William March Rice University, IPR2017-00046, Paper 54
`at 2-3 (lifting stay only after Patent Owner agreed to 1) not request a rehearing or appeal the
`Final Written Decision issued in IPR2017-00046; 2) to only pursue claims that are patentably
`distinct from the claims found unpatentable in the proceeding; and 3) to abide by all rules
`and regulations applicable to reexamination proceedings, including 37 C.F.R. § 42.73(d)(3).).
`
`Dermira, Inc. v. Purepharm, Inc., IPR2015-01594, Paper 29 at 2 (lifting stay only after
`deadlines for filing the request for rehearing and notice of appeal had expired and no appeal
`had been filed.).
`
`

`

`·
`
`Legend3d, Inc. v. Prime Focus Creative Services Canada, Inc., IPR2016-00806, Paper 79 at 3-4
`(lifting stay only after deadline for appeal had passed and Patent Owner stated that no
`appeal would be filed.).
`
`Thank you,
`Counsel for Acrux
`
`Aydin H. Harston, Ph.D.
`Rothwell, Figg, Ernst & Manbeck PC
`607 14th Street, NW; Suite 800
`Washington, DC 20005
`ph: 202-783-6040
`fax: 202-783-6031
`www.rfem.com | bio
`
`The information contained in this electronic message and any attachments to this message are intended for the exclusive
`use of the addressee(s) and may contain confidential and/or privileged information. If you are not the addressee, note that
`any disclosure, copy, distribution or use of the contents of this message is prohibited. If you are not the intended recipient,
`please notify Rothwell, Figg, Ernst & Manbeck P.C. immediately at (202) 783-6040 or email us at aharston@rfem.com, and
`destroy all copies of this message and any attachments.
`
`From: Hartmann, Anthony [mailto:anthony.hartmann@finnegan.com]
`Sent: Thursday, July 19, 2018 9:57 AM
`To: Trials; Aydin Harston
`Cc: Livingstone, John; Yoshida, Naoki; toan.vo@bausch.com; KakenIPR; E. Anthony Figg; Lisa N. Phillips;
`LITIGATION PARALEGALS; trea@crowell.com; slentz@crowell.com; tliu@agpharm.com
`Subject: RE: IPR2017-00190: Acrux DDS Pty Ltd. v. Kaken Pharmaceutical Co., Ltd.
`
`Dear Board,
`
`Patent Owner seeks clarification on the Board’s July 13, 2018 correspondence below. Does the
`Board view “termination or completion of IPR2017-00190” as (1) the date on which the Patent
`Owner files a notice of appeal or the date on which the option to file a notice of appeal expires (see,
`e.g., Gnosis S.p.A. v. Merck & CIE, IPR2013-00117, Paper 74 at 2-3 (P.T.A.B. Feb. 5, 2015) (lifting stay
`in concurrent reexamination proceeding following final written decision and patent owner’s notice
`of appeal)), or (2) the exhaustion of any such appeal from this proceeding (cf., e.g., Hewlett-Packard
`Co. v. MCM Portfolio, LLC, IPR2013-00217, Paper 32 at 2 (P.T.A.B. Sept. 12. 2014) (lifting stay in
`concurrent reissue proceeding following final written decision and before notice of appeal filed)).
`
`Thank you,
`Counsel for Patent Owner
`
`Anthony A. Hartmann
`Of Counsel
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`
`

`

`+1 202 408 4275 | fax +1 202 408 4400 | anthony.hartmann@finnegan.com | www.finnegan.com
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, July 13, 2018 3:54 PM
`To: Aydin Harston <aharston@rothwellfigg.com>; Trials <Trials@USPTO.GOV>
`Cc: Livingstone, John <John.Livingstone@finnegan.com>; Yoshida, Naoki
`<naoki.yoshida@finnegan.com>; toan.vo@bausch.com; KakenIPR <KakenIPR@finnegan.com>; E.
`Anthony Figg <efigg@rothwellfigg.com>; Lisa N. Phillips <lphillip@rothwellfigg.com>; LITIGATION
`PARALEGALS <LITIGATIONPARALEGALS@rothwellfigg.com>; trea@crowell.com;
`slentz@crowell.com; tliu@agpharm.com; Hartmann, Anthony <anthony.hartmann@finnegan.com>
`Subject: RE: IPR2017-00190: Acrux DDS Pty Ltd. v. Kaken Pharmaceutical Co., Ltd.
`
`Counsel,
`
`We stayed Reissue Application 15/405,171 until “the termination or completion of IPR2017-00190.”
`See Paper 31, 4. Because Patent Owner is reserving the right to file an appeal of the final written
`decision in IPR2017-00190, the case is not yet completed. Therefore, we do not grant Patent
`Owner’s request that the stay be lifted, nor do we authorize Patent Owner to file a motion to lift the
`stay at this time.
`
`Thank you,
`
`Maria Vignone
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`From: Aydin Harston <aharston@rothwellfigg.com>
`Sent: Friday, July 13, 2018 11:52 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Livingstone, John <John.Livingstone@finnegan.com>; Yoshida, Naoki
`<naoki.yoshida@finnegan.com>; toan.vo@bausch.com; KakenIPR <KakenIPR@finnegan.com>; E.
`Anthony Figg <efigg@rothwellfigg.com>; Lisa N. Phillips <lphillip@rothwellfigg.com>; LITIGATION
`PARALEGALS <LITIGATIONPARALEGALS@rothwellfigg.com>; trea@crowell.com;
`slentz@crowell.com; tliu@agpharm.com; anthony.hartmann@finnegan.com
`Subject: RE: IPR2017-00190: Acrux DDS Pty Ltd. v. Kaken Pharmaceutical Co., Ltd.
`
`Dear Board,
`
`Following up on Patent Owner’s July 12, 2018 e-mail, Patent Owner is correct that it is Petitioners’
`position that it would be inappropriate to lift the stay of the reissue application in light of Patent
`
`

`

`Owner’s reservation of the right to appeal the Board’s decision. In the event Patent Owner appeals
`the Board’s decision, it is also Petitioners’ position that it would be inappropriate for the stay of the
`reissue application to be lifted before any such appeal is completed.
`
`If the Board determines a formal Motion to Lift the Stay of the Reissue Application is necessary,
`Petitioners are available for a call on Wednesday (except between 1:15 and 2:45 pm), Thursday or
`Friday of next week to discuss the briefing schedule.
`
`Thank you,
`Counsel for Acrux
`
`Aydin H. Harston, Ph.D.
`Rothwell, Figg, Ernst & Manbeck PC
`607 14th Street, NW; Suite 800
`Washington, DC 20005
`ph: 202-783-6040
`fax: 202-783-6031
`www.rfem.com | bio
`
`The information contained in this electronic message and any attachments to this message are intended for the exclusive
`use of the addressee(s) and may contain confidential and/or privileged information. If you are not the addressee, note that
`any disclosure, copy, distribution or use of the contents of this message is prohibited. If you are not the intended recipient,
`please notify Rothwell, Figg, Ernst & Manbeck P.C. immediately at (202) 783-6040 or email us at aharston@rfem.com, and
`destroy all copies of this message and any attachments.
`
`From: Hartmann, Anthony [mailto:anthony.hartmann@finnegan.com]
`Sent: Thursday, July 12, 2018 6:43 PM
`To: Trials@USPTO.GOV
`Cc: Livingstone, John; Yoshida, Naoki; toan.vo@bausch.com; KakenIPR; E. Anthony Figg; Lisa N. Phillips;
`Aydin Harston; LITIGATION PARALEGALS; trea@crowell.com; slentz@crowell.com; tliu@agpharm.com
`Subject: IPR2017-00190: Acrux DDS Pty Ltd. v. Kaken Pharmaceutical Co., Ltd.
`
`Dear Board,
`
`Patent Owner respectfully requests the Board lift the stay of Reissue Application No. 15/405,171
`(“the Reissue Application”).
`
`Patent Owner filed the Reissue Application on January 12, 2017. On May 1, 2017, the Board
`instituted this IPR. Petitioner then moved to stay examination of the Reissue Application and, on
`August 31, 2017, the Board issued an Order granting Petitioner’s motion pursuant to 37 C.F.R. §§
`42.3 and 42.122. See also Paper 80 at 3-4. On June 6, 2018, the Board issued a Final Written
`Decision in which it held claims 1 and 2 of the ’506 patent unpatentable under 35 U.S.C. § 103(a).
`Paper 80 at 52. Neither party has requested a rehearing, and the period for doing so has now
`expired. Accordingly, Patent Owner now requests that the stay be lifted. Furthermore, if the Panel
`determines a Motion to Lift Stay of Reissue Application is necessary to consider such a request,
`Patent Owner seeks authorization for such a motion.
`
`

`

`
`Patent Owner asked counsel for Petitioners in an email dated July 9, 2018, whether they would
`oppose this motion. Counsel for Petitioners stated that: “Petitioners will not oppose Patent Owner’s
`motion to lift the stay of the reissue application, provided that Patent Owner commits in writing not
`to request rehearing or reconsideration of the Board’s decision or to appeal that decision.” Patent
`Owner did not request a rehearing, as noted above, but reserves its right to appeal the Board’s June
`6th decision. Therefore, Patent Owner understands that Petitioners will oppose this request.
`
`If the Board believes briefing on this issue is necessary, Patent Owner requests a call to discuss a
`briefing schedule.
`
`Respectfully,
`Counsel for Patent Owner
`
`Anthony A. Hartmann
`Of Counsel
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`+1 202 408 4275 | fax +1 202 408 4400 | anthony.hartmann@finnegan.com | www.finnegan.com
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
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`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
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`
`