Mills, Jad
`
`From:
`Sent:
`To:
`
`Subject:
`
`Parmelee, Steve
`Wednesday, March 07, 2018 9:15 AM
`Trenchard, Robert W.; Love, Jane M.; Rosato, Michael; Mills, Jad; TRea@crowell.com;
`DYellin@crowell.com; SLentz@crowell.com; TLiu@agpharm.com; spark@winston.com;
`cklein@winston.com; snaqi@winston.com; ahollis@kirkland.com;
`egoryunov@kirkland.com; greg.springsted@kirkland.com
`RE: IPR2017-00854 - Corrected Motion to Amend
`
`Hi Bob,
`
`We do not object to you providing justification in your Reply for making the change to your Motion to Amend that you
`have proposed. Until you brief the issue in your Reply, we cannot take a position on whether your (as yet unwritten and
`unreviewed) briefing justifies making the change. It will be unfortunate if you choose to burden the Board needlessly
`when we have already agreed not to object to you addressing this issue in your Reply.
`
`-Steve
`
`
`From: Trenchard, Robert W. [mailto:RTrenchard@gibsondunn.com]
`Sent: Wednesday, March 07, 2018 7:20 AM
`To: Parmelee, Steve; Love, Jane M.; Rosato, Michael; Mills, Jad; TRea@crowell.com; DYellin@crowell.com;
`SLentz@crowell.com; TLiu@agpharm.com; spark@winston.com; cklein@winston.com; snaqi@winston.com;
`ahollis@kirkland.com; egoryunov@kirkland.com; greg.springsted@kirkland.com
`Subject: RE: IPR2017-00854 - Corrected Motion to Amend
`
`Hi Steve. It sounds as if Petitioners are reserving their right to object to a correction to the typo on reply, but also not
`agreeing to a corrected motion now. Please confirm or correct our understanding by 2 pm EST today. Assuming our
`understanding is correct, we plan thereafter to seek guidance from the Board. Best, Bob and Jane.
`
`
`Robert Trenchard
`
`GIBSON DUNN
`
`Gibson, Dunn & Crutcher LLP
`200 Park Avenue, New York, NY 10166-0193
`Tel +1 212.351.3942 • Fax +1 212.351.5242
`RTrenchard@gibsondunn.com • www.gibsondunn.com
`
`
`
`From: Parmelee, Steve [mailto:sparmelee@wsgr.com]
`Sent: Tuesday, March 6, 2018 8:31 PM
`To: Trenchard, Robert W. <RTrenchard@gibsondunn.com>; Love, Jane M. <JLove@gibsondunn.com>; Rosato, Michael
`<mrosato@wsgr.com>; Mills, Jad <jmills@wsgr.com>; TRea@crowell.com; DYellin@crowell.com; SLentz@crowell.com;
`TLiu@agpharm.com; spark@winston.com; cklein@winston.com; snaqi@winston.com; ahollis@kirkland.com;
`egoryunov@kirkland.com; greg.springsted@kirkland.com
`Subject: RE: IPR2017-00854 - Corrected Motion to Amend
`
`Hi Bob,
`
`
`1
`
`

`

`We do not object to you making your typo argument in your Reply to the Motion to Amend. We will thoughtfully
`evaluate the arguments you make in your Reply. Ultimately, the Board will decide how to address the arguments you
`include in your Reply.
`
`-Steve
`
`
`From: Trenchard, Robert W. [mailto:RTrenchard@gibsondunn.com]
`Sent: Tuesday, March 06, 2018 9:52 AM
`To: Parmelee, Steve; Love, Jane M.; Rosato, Michael; Mills, Jad; TRea@crowell.com; DYellin@crowell.com;
`SLentz@crowell.com; TLiu@agpharm.com; spark@winston.com; cklein@winston.com; snaqi@winston.com;
`ahollis@kirkland.com; egoryunov@kirkland.com; greg.springsted@kirkland.com
`Subject: RE: IPR2017-00854 - Corrected Motion to Amend
`
`Hi Steve. Petitioners’ brief makes clear that they knew this was a typo. That’s why Petitioners’ brief contains extensive
`argument on the assumption that the compound in the amended claims is the same as in the existing claims. In any
`event, we would be willing to correct the typo on reply only if Petitioners agree not object to the correction, and that
`our correction on reply will be the end of the issue.
`
`If, however, Petitioners plan to object to the correction of this obvious typo, then we need to know now to tee the issue
`up with the Board. If Petitioners currently plan to object, we do urge Petitioners to reconsider that
`position. Petitioners’ papers brought the typo to our attention, so the passage of time you cite is irrelevant. Petitioners
`could have bring the typo to our attention before briefing the issue. Petitioners extensively briefed issues relevant only
`if the proposed amendment is construed as containing a typo. We think the Board would appreciate the parties working
`the issue out themselves rather than having to bring another procedural issue to the Board.
`
`In that regard, the Microsoft Corp v. Surfcast, Inc., IPR2013-00292 (Paper 77 June 4, 2014), opinion permitted corrections
`to a motion to amend even after briefing was completed, and Zodiac Pool Systems, Inc. v. Aqua Products, Inc. PTAB-
`IPR2013-00159 (Paper 37 Feb. 14, 2013), allowed corrections to typos in the proposed amended claims. So we believe
`that ample support exists to correct the motion.
`
`Given In re Aqua, we believe that it is paramount that the Board address a motion to amend on the merits, not based on
`typos. Please let us know, by the end of today, Petitioners’ position on either of the two paths forward:
`
`1. Agreeing that Patent Owner can correct the typo on reply without objection; or
`
`2. Permitting a correction now and affording Petitioners an opportunity to address the corrected claims in a
`prompt amended brief (by March 16) that deletes the argument based on the typo, if Petitioners want to do
`so. Petitioners would of course be free to use that space for anything else they want to say.
`
`Best, Bob and Jane.
`
`
`Robert Trenchard
`
`GIBSON DUNN
`
`Gibson, Dunn & Crutcher LLP
`200 Park Avenue, New York, NY 10166-0193
`Tel +1 212.351.3942 • Fax +1 212.351.5242
`RTrenchard@gibsondunn.com • www.gibsondunn.com
`
`
`
`2
`
`

`

`From: Parmelee, Steve [mailto:sparmelee@wsgr.com]
`Sent: Monday, March 5, 2018 9:10 PM
`To: Love, Jane M. <JLove@gibsondunn.com>; Rosato, Michael <mrosato@wsgr.com>; Mills, Jad <jmills@wsgr.com>;
`TRea@crowell.com; DYellin@crowell.com; SLentz@crowell.com; TLiu@agpharm.com; spark@winston.com;
`cklein@winston.com; snaqi@winston.com; ahollis@kirkland.com; egoryunov@kirkland.com;
`greg.springsted@kirkland.com; Trenchard, Robert W. <RTrenchard@gibsondunn.com>
`Subject: RE: IPR2017-00854 - Corrected Motion to Amend
`
`Jane,
`
`Because it’s now been 16 weeks since you filed the Patent Owner’s Motion to Amend, and more than two weeks since
`we filed our Opposition, we think it’s more appropriate for P.O. to address this issue in its Reply brief. None of the cases
`you have cited appears to involve facts similar to the situation here. Your proposal to submit a Corrected Motion to
`Amend and engage in additional briefing does not seem appropriate at this stage.
`
`-Steve
`
`
`From: Love, Jane M. [mailto:JLove@gibsondunn.com]
`Sent: Saturday, March 03, 2018 5:46 AM
`To: Parmelee, Steve; Rosato, Michael; Mills, Jad; TRea@crowell.com; DYellin@crowell.com; SLentz@crowell.com;
`TLiu@agpharm.com; spark@winston.com; cklein@winston.com; snaqi@winston.com; ahollis@kirkland.com;
`egoryunov@kirkland.com; greg.springsted@kirkland.com
`Cc: Love, Jane M.; Trenchard, Robert W.
`Subject: IPR2017-00854 - Corrected Motion to Amend
`
`Hello Counsel.
`
`Petitioners’ opposition to Novartis’s motion to amend identifies a clerical error (a typo) in the motion. Novartis
`intends to ask the Board for permission to correct the typo via a corrected motion to amend. Per Board practice,
`we are writing to ask Petitioners to agree to the motion. We understand such consent is usually routine,
`including to correct clerical errors in the proposed amended claims. See, e.g., McWane v. Waugh, IPR2016-
`00266 (Paper 24 September 3, 2016); Microsoft Corp v. Proxyconn, Inc., IPR2012-00026 and IPR2013-00109
`(Paper 43 June 20, 2013); Zodiac Pool Systems, Inc. v. Aqua Products, Inc. PTAB-IPR2013-00159 (Paper 37
`Feb. 14, 2013). We would prefer not to burden the Board again with a contested issue, though we note that the
`Board has resolved such motions on a contested basis before in favor of permitting a correction. See Microsoft
`Corp v. Surfcast, Inc., IPR2013-00292 (Paper 77 June 4, 2014).
`
`In the event that Petitioners would like to amend their response to the motion to amend in view of the
`correction, we would have no objection in concept so long as we received an amended response by March 14,
`2018.
`
`
`Please let us have Petitioners’ views by the end of the day on Monday, March 5th.
`
`
`Best, Jane and Bob
`
`
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