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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APOTEX INC., APOTEX CORP., and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioners
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` v.
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`NOVARTIS AG,
`Patent Owner
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`Case IPR2017-008541
`U.S. Patent No. 9,187,405
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`PATENT OWNER’S LIST OF PROPOSED MOTIONS
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`August 23, 2017
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` 1 Case IPR2017-01550 has been joined with this proceeding.
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`Pursuant to the Patent Trial and Appeal Board’s Office Patent Trial Practice
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`Guide, and in advance of the initial conference call scheduled for Friday, August 25,
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`2017 at 1 PM, Patent Owner Novartis AG hereby provides a list of the proposed
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`motions it presently anticipates filing in the above-captioned inter partes review
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`(“IPR”) proceeding. Patent Owner has not listed those motions which are
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`automatically authorized by the Board, such as motions to exclude evidence. The
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`“[s]ubmission of [this] list [does] not preclude the filing of additional motions not
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`contained in the list.” See 77 Fed. Reg. 48,756, 48,765 (Aug. 14, 2012).
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`List of Proposed Motions
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`1. A motion to amend the claims of the ’405 Patent pursuant to 37 C.F.R. §
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`42.121.
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`2. A motion for a protective order and motion(s) to seal confidential
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`information pursuant to 37 C.F.R. § 42.54.
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`3. A motion to extend Patent Owner’s word limits pursuant to 37 C.F.R. §
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`42.24(a)(2).
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`4. A motion to terminate Ground 3 as outside of 35 U.S.C. § 311 limiting
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`institution of an inter partes review to “a ground that could be raised under
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`section 102 or 103 and only on the basis of prior art consisting of patents
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`or printed publications.”
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`5. A motion to dismiss this proceeding as violating the U.S. Constitution by
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`seeking to extinguish private property rights through a non-Article III
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`forum without a jury or a fair opportunity to be heard, or alternatively a
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`motion to stay this proceeding pending the outcome of review by the U.S.
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`Supreme Court of the Oil States Energy Services, LLC v Greene’s Energy
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`Group LLC, cert. granted (from IPR2014-00215) case.
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`Respectfully Submitted,
`/Jane M. Love, Ph.D./
`Jane M. Love, Ph.D., Reg. No. 42,812
`Lead Counsel for Patent Owner
`GIBSON, DUNN & CRUTCHER LLP
`200 Park Avenue
`New York, NY 10166
`Jlove@gibsondunn.com
`Tel.: 212-351-3922
`Dated: August 23, 2017
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`2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 4.26, the undersigned hereby certifies that a true
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`and correct copies of Patent Owner’s List of Proposed Motions was served by
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`email upon Petitioner’s counsel of record:
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`For Apotex:
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`Steven W. Parmelee: sparmelee@wsgr.com
`Michael T. Rosato: mrosato@wsgr.com
`Jad. A. Mills: jmills@wsgr.com
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`Wilson Sonsini Goodrich & Rosati
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`Telephone: 206-883-2542
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`For Argentum:
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`Teresa Stanek Rea: trea@crowell.com
`Deborah H. Yellin: dyelling@crowell.com
`Shannon M. Lentz: slentz@crowell.com
`Tyler C. Liu: TLiu@agpharm.com
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`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Ave, NW
`Washington, DC 20004-2595
`(202) 624-2620
`via electronic mail and secure file transfer, pursuant to agreement of the parties, on
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`the date hereof.
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`Dated: August 23, 2017
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`/Jane M. Love, Ph.D./
`Jane M. Love, Ph.D., Reg. No. 42,812
`Lead Counsel for Patent Owner
`GIBSON, DUNN & CRUTCHER LLP
`200 Park Avenue
`New York, NY 10166
`Jlove@gibsondunn.com
`Tel.: 212-351-3922
`Dated: August 23, 2017
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