`Sent: Tuesday, February 20, 2018 11:49 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Rosato, Michael <mrosato@wsgr.com>; trea@crowell.com; dyellin@crowell.com;
`slentz@crowell.com; tliu@agpharm.com; amanda.hollis@kirkland.com; egoryunov@kirkland.com;
`spark@winston.com; Springsted, Gregory <greg.springsted@kirkland.com>; 'sparmelee@wsgr.com'
`<sparmelee@wsgr.com>; Mills, Jad <jmills@wsgr.com>; Love, Jane M. <JLove@gibsondunn.com>;
`Trenchard, Robert W. <RTrenchard@gibsondunn.com>
`Subject: IPR2017‐00854 ‐ Request for a Teleconference
`
`To the Members of the Patent Trial and Appeal Board in IPR2017‐00854:
`
`
`We represent Patent Owner Novartis in this proceeding. We write to request an urgent conference with
`the Board to seek permission to move to strike Petitioners’ Reply, or to file a sur‐reply with supporting
`evidence. Our request stems from Petitioners’ submission of a 60‐page declaration from an entirely
`new expert witness with their Reply. This testimony is essential to Petitioners’ prima facie case, and
`thus is improper reply evidence under the Board’s rules and the Administrative Procedure Act. Belden
`Inc. v. Berk‐Tek LLC, 805 F.3d 1064, 1081–82 (Fed. Cir. 2015).
`
`
`The Board found in the Institution Decision that a person of skill in the art includes a
`pharmacologist. But Petitioners had relied solely on a declaration from a physician, Dr. Barbara Giesser,
`to support their Petition. The Board gave Petitioners the benefit of the doubt that Dr. Giesser knew
`enough pharmacology from her medical school training to institute the IPR. However, cross‐
`examination testimony from Dr. Giesser and other evidence has shown otherwise — a point Petitioners
`do not dispute in their reply. Petitioners instead are attempting to back‐fill Dr. Giesser’s deficiency with
`a 60‐page declaration from a new expert — a pharmacologist, Dr. Leslie Benet.
`
`In waiting to submit this evidence on reply, Petitioners are depriving Novartis of the opportunity to
`submit responsive evidence, a result the Board’s rules, Belden v. Berk‐Tek, and related cases
`prohibit. Striking Petitioners’ Reply papers would be a fair and efficient resolution. However, Berk‐Tek
`suggests that other remedies may be considered, such as the submission of a sur‐reply and supporting
`evidence. 805 F.3d at 1082. If the Board would prefer that route, then Novartis respectfully requests
`the opportunity to submit a single brief of 25 pages combining the reply supporting the motion to
`amend and a sur‐reply. This accommodation would not alter the current schedule.
`
`Novartis will be available at the Board’s convenience if a conference call is scheduled.
`
`Respectfully submitted,
`Jane M. Love, Ph.D.
`Lead Counsel for Patent Owner Novartis
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`
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`Jane M. Love, Ph.D.
`
`GIBSON DUNN
`
`Gibson, Dunn & Crutcher LLP
`200 Park Avenue, New York, NY 10166-0193
`
`
`
`Tel +1 212.351.3922 • Fax +1 212.351.6322
`JLove@gibsondunn.com • www.gibsondunn.com
`
`
`
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