`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Dear Aydin,
`
`Hartmann, Anthony <anthony.hartmann@finnegan.com>
`Friday, August 18, 2017 1:09 PM
`Aydin Harston; E. Anthony Figg; LITIGATION PARALEGALS
`KakenIPR; Livingstone, John; toan.vo@bausch.com; Yoshida, Naoki
`RE: ACRUX DDS PTY LTD. & ACRUX LIMITED v. KAKEN PHARMACEUTICAL CO., LTD.
`Case IPR2017-00190
`
`Further to our email, we consulted with our client about Petitioner’s request for additional discovery regarding
`“marketing spend” under 37 C.F.R. § 42.51(b)(2). We do not agree to your request for additional discovery.
`
`Regards,
`Tony
`
`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: Hartmann, Anthony
`Sent: Friday, August 11, 2017 2:28 PM
`To: 'Aydin Harston'; E. Anthony Figg; LITIGATION PARALEGALS
`Cc: KakenIPR; Livingstone, John; toan.vo@bausch.com; Yoshida, Naoki
`Subject: RE: ACRUX DDS PTY LTD. & ACRUX LIMITED v. KAKEN PHARMACEUTICAL CO., LTD. Case IPR2017-00190
`
`Dear Aydin,
`
`“US_ _ _ 20170531(2).xlsx” and “012617 Jublia 4mEq Commercial Market Comparison.xlsx” are Exhibit 2095 and Exhibit
`2093, respectively. Accordingly, Patent Owner has provided the information upon which Exhibit 2098 and Exhibit 2099
`are “based on.” All information that Mr. Thomas has relied on has been produced to Petitioners. Patent Owner believes
`that it has complied with the requirements of 37 C.F.R. § 42.51(b)(1).
`
`As to your request for additional discovery under 37 C.F.R. § 42.51(b)(2) regarding “marketing spend,” we will consider
`your request with our client.
`
`Regards,
`Tony
`
`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
`
`Page 1 of 2
`
`ACRUX DDS PTY LTD. et al.
`EXHIBIT 1666
`IPR Petition for
`U.S. Patent No. 7,214,506
`
`
`
`From: Aydin Harston [mailto:aharston@rothwellfigg.com]
`Sent: Thursday, August 10, 2017 1:16 PM
`To: Hartmann, Anthony; E. Anthony Figg; LITIGATION PARALEGALS
`Cc: KakenIPR; Livingstone, John; toan.vo@bausch.com; Yoshida, Naoki
`Subject: ACRUX DDS PTY LTD. & ACRUX LIMITED v. KAKEN PHARMACEUTICAL CO., LTD. Case IPR2017-00190
`
`Dear Tony,
`
` I write to request that PO provide “US_ _ _ 20170531(2).xlsx” and “012617 Jublia 4mEq Commercial Market
`Comparison.xlsx,” in addition to any other document or information underlying the preparation of Exhibits 2093‐2095
`and 2098‐2099, to Petitioners immediately. PO’s commercial success expert, Mr. Vincent A. Thomas, has relied upon
`Exhibits 2098 and 2099 in his analysis. According to Mr. Thomas’ Declaration, these exhibits are “based on” the
`underlying documents which were not provided with the POR. See EX. 2028, n.3‐4 (Exhibit 2098 is “based on US_ _ _
`20170531(2).xlsx” and Exhibit 2099 is “based on 012617 Jublia 4mEq Commercial Market Comparison.xlsx.) In light of
`the fact that the witness himself states the exhibits he relied upon in order to form his opinions are “based on” some
`other withheld information, Petitioners request the specified spread sheets be provided immediately, as well as any
`other as yet withheld document or information either used in the preparation of Exhibits 2093‐2095 and 2098‐2099 or
`relied upon by Mr. Thomas in forming his opinions (either directly or indirectly). 37 C.F.R. § 42.51(b)(i).
`
` In addition, given Mr. Thomas’ testimony that “the marketing spend for Jublia is consistent with other companies’
`advertising costs on comparable branded topical onychomycosis treatments such as Lamisil (more than $100 million in
`advertising to date) and Penlac (more than 10 million annually)” (EX. 2028, ¶25), Petitioners request PO provide a
`document or documents sufficient to show the quarterly total of the marketing spend attributable to Jublia from the 4th
`quarter of 2013 (just prior to Jublia’s launch) through the 2nd quarter of 2017. 37 C.F.R. § 42.51(b)(ii).
`
` As it is Petitioners’ position that this information qualifies as routine discovery and/or information that is inconsistent
`with the positions taken by the declarant under the Board rules, it should have been provided with the POR. If PO
`refuses to provide the information, please let us know your availability for a meet‐and‐confer to discuss these issues. In
`the absence of an agreement, Petitioners intend to contact the Board to request authorization to file a motion to obtain
`the information.
`
`Thank you,
`
`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
`
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`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
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`
`Page 2 of 2
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