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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` -----------------------------------------------
`APOTEX, INC., APOTEX CORP. )
`ARGENTUM PHARMACEUTICALS, )
`LLC, ACTAVIS ELIZABETH LLC, )
`TEVA PHARMACEUTICALS USA, )
`INC., SUN PHARMACEUTICAL )
`INDUSTRIES LTD., SUN )
`PHARMACEUTICAL INDUSTRIES, )
`INC., and SUN PHARMA GLOBAL,)
`FZE, )
` )
` Petitioners, )
` )
` vs. ) IPR 2017-00854
` ) Patent No.
`NOVARTIS, A.G., ) 9,187,405
` )
` Patent Owner. )
`----------------------------)
` ** REVISED **
` TELECONFERENCE
` Seattle, Washington
` Thursday, March 29, 2018
`
`Reported by:
`Connie Recob, CCR 2631, RMR, CRR
`JOB NO. 140070
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`APOTEX ET AL. - EXHIBIT 1052
`Apotex Inc. et al. v. Novartis AG
`IPR2017-00854
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` -----------------------------------------------
`APOTEX, INC., APOTEX CORP. )
`ARGENTUM PHARMACEUTICALS, )
`LLC, ACTAVIS ELIZABETH LLC, )
`TEVA PHARMACEUTICALS USA, )
`INC., SUN PHARMACEUTICAL )
`INDUSTRIES LTD., SUN )
`PHARMACEUTICAL INDUSTRIES, )
`INC., and SUN PHARMA GLOBAL,)
`FZE, )
` )
` Petitioners, )
` )
` vs. ) IPR 2017-00854
` ) Patent No.
`NOVARTIS, A.G., ) 9,187,405
` )
` Patent Owner. )
`----------------------------)
` ** REVISED **
` TELECONFERENCE
` Seattle, Washington
` Thursday, March 29, 2018
`
`Reported by:
`Connie Recob, CCR 2631, RMR, CRR
`JOB NO. 140070
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`APOTEX ET AL. - EXHIBIT 1052
`Apotex Inc. et al. v. Novartis AG
`IPR2017-00854
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`Page 2
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` March 29, 2018
` 9:00 a.m.
`
` Teleconference, held at the offices
`of Wilson Sonsini Goodrich & Rosati, 701
`Fifth Avenue, Seattle, Washington, before
`Connie Recob, CCR 2631, RMR, CRR, a Notary
`Public of the State of Washington.
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`A P P E A R A N C E S:
`
`Presiding:
` The Honorable ROBERT POLLOCK,
` Administrative Patent Judge
`
` JUDGE CHRISTOPHER N. KAISER
`
` WILSON SONSINI GOODRICH & ROSATI
` Attorneys for Petitioner
` 701 Fifth Avenue
` Seattle, Washington 98104
` BY: STEVE PARMELEE, ESQ.
` JAD MILLS, ESQ.
`
` GIBSON, DUNN & CRUTCHER
` Attorneys for Patent Owner:
` 200 Park Avenue
` New York, New York 10166
` BY: ROBERT TRENCHARD, ESQ.
` JANE LOVE, Ph.D., ESQ.
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`A P P E A R A N C E S:
`
` KIRKLAND & ELLIS
` Attorneys for Petitioner Teva
` 601 Lexington Avenue
` New York, New York 10022
` BY: GREGORY SPRINGSTED, ESQ.
`
` ALSO PRESENT:
` Tyler Liu, Associate General Counsel
` at Argentum Pharmaceuticals
`
` Samuel Park, Counsel for Sun
` Pharma
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` * * * P R O C E E D I N G S * * *
`
` HON. POLLOCK: Good afternoon. This
`call is in relation to IPR 2017-00854
`and joined cases and the e-mails of parties
`dated March 28, 2018. This is Judge
`Pollock and with me on the line is Judge
`Kaiser. I would like to start with a roll
`call.
` Who do we have for Petitioner
`Apotex?
` MR. PARMELEE: This is Steve
`Parmelee and I also have Jad Mills.
` HON. POLLOCK: Good afternoon. And
`from Petitioner Argentum?
` MR. LIU: Hi. This is Tyler Liu,
`last name L-I-U, for Argentum
`Pharmaceuticals.
` HON. POLLOCK: And for Petitioner
`Teva Actavis?
` MR. SPRINGSTED: This is Gregory
`Springsted of Kirkland & Ellis.
` HON. POLLOCK: For Petitioner Sun
`Pharma?
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` MR. PARK: This is Sam Park,
`P-A-R-K, for Sun Pharma.
` HON. POLLOCK: And who is on the
`line for Patent Owner Novartis?
` MR. TRENCHARD: Good afternoon, Your
`Honor. It's Robert Trenchard from Gibson,
`Dunn & Crutcher and with me is Jane Love.
` HON. POLLOCK: Okay. And is there a
`court reporter?
` THE REPORTER: There is. This is
`Connie Recob from TSG Reporting and I'm
`present in Steve Parmelee's office in
`Seattle, Washington.
` HON. POLLOCK: Good afternoon,
`Connie.
` I would ask parties to submit a copy
`of the transcript as an exhibit when it
`becomes available. I would also appreciate
`a rough draft of the transcript sent to the
`trial's mailbox at the conclusion of this
`call.
` Petitioners requested this call for
`two reasons: First to request permission
`to file a motion to strike Novartis's
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`sur-reply, or in the alternative, an
`opportunity to submit responsive briefing
`with supporting evidence on an adjusted
`schedule, and second, to request
`authorization to file a sur-reply in
`support of its motion to amend.
` Petitioner, would you please address
`why relief is warranted with respect to the
`first issue?
` MR. PARMELEE: Yes, Your Honor.
`This is Steve Parmelee and Mr. Mills is
`going to speak on Petitioners' behalf.
` HON. POLLOCK: Very good.
` MR. MILLS: Thank you, Your Honor.
`I want to begin by thanking the Board for
`scheduling this teleconference.
` Last Friday on March 23rd, the
`Patent Owner Novartis filed Paper 63, its
`sur-reply and response to --
` HON. POLLOCK: Excuse me, Mr. Mills.
`Could you get a little closer to the
`microphone? Your voice is a little faint
`on my end.
` MR. MILLS: Yes, is that better?
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` HON. POLLOCK: Yes, thank you.
` MR. MILLS: Okay. So Paper 63, the
`sur-reply in response to Petitioners' reply
`to the Patent Owner response, and also
`Paper 64, Novartis's reply in support of
`its motion to amend. It also submitted 13
`exhibits. That's Exhibit 2095 through
`2107. Those exhibits included four expert
`declarations totaling almost 200 paragraphs
`and 85 pages of testimony. These
`declarations came from one pharmacologist,
`Dr. Jusko, and three physicians. Notably
`Novartis had already submitted five
`declarations from experts totaling
`237 pages. In other words, its submissions
`in support of its Patent Owner response
`were neither constrained nor streamlined.
` Novartis's request for a sur-reply
`focused on responding to Dr. Benet's
`treatment of Novartis's pharmacokinetic and
`pharmacodynamic arguments based on the
`Webb, Kahan 2003, and Park references and
`sought leave to submit testimony from a
`pharmacologist, not additional testimony
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`from a physician. The Board subsequently
`issued its order, Paper 54, setting forth
`the scope of the sur-reply and the
`responsive evidence. The order was quite
`clear that the scope that was authorized
`was limited to responding to the
`pharmacological testimony regarding the
`Webb, Kahan 2003, and Park argument put
`forth by Patent Owner.
` The Board did not authorize Novartis
`to combine its sur-reply and testimonial
`evidence with Novartis's reply to the
`motion to amend. As described briefly in
`our e-mail to the Board, the majority of
`Novartis's March 23rd filing exceeded the
`authorization. Novartis made very little
`effort to disguise its sur-reply argument
`as falling within the authorized scope
`other than labeling its paper and
`authorized sur-reply.
` You take a look at the table of
`contents, approximately one-third of the
`sur-reply addresses claim construction or
`Section 112 support in Sections 1 and 3.
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`The sur-reply denotes four entire pages and
`an entirely new Lublin physician
`declaration addressing skepticism
`attempting to distinguish an anticipatory
`reference that Novartis itself submitted
`with its Patent Owner response and
`misapplying case law in Section II.B. This
`is case law that had not been raised with
`the Patent Owner response.
` The Patent Owner spent an additional
`two pages in Section II.C mischaracterizing
`the Kovarik and Kappos 2005 references and
`spent only four pages addressing Webb,
`Kahan 2003 and Park in Section II.A.
` Although Patent Owner found
`unauthorized space to repeat its spurious
`character attacks against Dr. Giesser in
`its introduction, its introduction
`curiously never mentions pharmacokinetics,
`pharmacology, Webb, Kahan 2003, or Park.
` Novartis also used its sur-reply to
`discuss, as I mentioned, new cases without
`affording Petitioner a chance to respond.
`For example, Novartis cited the Janssen v.
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`Rexall Sundown case from the Federal
`Circuit, a 2003 case, for the first time in
`its sur-reply. Janssen does not apply to
`the present case in a way that would
`support Novartis's arguments, and
`Petitioner should be afforded an
`opportunity to respond to those arguments
`if the motion to strike is not granted.
` Novartis also cited the Sanofi v.
`Watson Labs case, the Federal Circuit
`decision from 2017 that issued prior to
`their submission of their Patent Owner
`response. They did not cite that case in
`their Patent Owner response. The first
`time they mentioned it was in their
`January 19th opposition to Petitioners'
`motion for discovery. Because it was not
`discussed in its Patent Owner response, it
`was not within the scope of Patent Owner's
`reply and Patent Owner has not had an
`opportunity to address their arguments
`regarding that case.
` Of course, Novartis's four expert
`declarations also exceed the scope
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`authorized by the Board, parallels the
`unauthorized portions of the sur-reply. I
`can provide specific examples if the Board
`wishes, but I'll move on for now.
` It's clear that Novartis used its
`request for a limited sur-reply as a trojan
`horse to provide lengthy declaration
`discussion it cited in support of its
`motion to amend. If you look at the
`corrected contingent motion to amend,
`you'll see that there are citations to
`Dr. Steinman's third declaration,
`Exhibit 2096, and the fourth Lublin
`declaration, Exhibit 2097, in particular in
`support of the non-anticipation arguments
`in Section II.B that's dealing with the
`references that Novartis itself submitted
`with its Patent Owner response.
` Novartis even admits in its motion
`to amend, that's Paper 61 and 2, that
`Novartis held back its arguments supporting
`the patentability of the proposed dependent
`claims until the reply, reasoning that the
`burden of persuasion is on Petitioners, but
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`that fact asserted by Novartis actually
`goes the opposite direction that to the
`extent the burden is on Petitioners, that's
`a reason for Petitioners to have an
`opportunity to address the argument.
` Novartis now attempts to take
`advantage of its violation of the Board's
`order claiming in Paper 64 at 10 that its
`motion to amend must prevail because the
`unauthorized additional testimony of Drs.
`Steinman, Lublin and Jusko stands
`unrebutted.
` So unless the Board authorizes
`Petitioners to respond to responsive
`briefing and testimonial evidence,
`Petitioners will have had imposed on them
`improperly a burden of persuasion without
`being afforded under the APA an
`opportunity -- an adequate opportunity to
`respond to the arguments and testimonial
`evidence.
` Patent Owner has argued that
`observations on cross-examination are
`adequate. They are not adequate because
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`Patent Owner's sur-reply and supporting
`declarations interject new issues into the
`proceedings that cannot adequately be
`addressed without responsive briefing and
`evidence, including potentially expert
`analysis.
` Just to give an example, Novartis
`argues for the first time in its sur-reply
`that the average efficacy in lymphopenia
`reported and published in Webb should be
`discarded in favor of individual mouse data
`that was not reported or published in Webb.
`Petitioner should be permitted to submit
`responsive briefing and evidence including
`potentially testimonial evidence to address
`this argument after reviewing the
`underlying data. If Novartis is not going
`to produce the underlying data, the
`opinions and argument based on it should be
`entitled to no weight.
` I can provide additional examples if
`that would be helpful to the Board.
` A motion -- or striking the
`unauthorized filings in the March 23rd
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`filings is an appropriate remedy under the
`circumstances of this case. The Board
`informed Novartis that the trial would
`focus on the Patent Owner's pharmacokinetic
`and pharmacodynamic arguments that were
`based on the Webb, Kahan 2003, and Park
`references and informed Novartis that
`Novartis would waive any patentability
`arguments that it did not raise in its
`Patent Owner response.
` Novartis's actions in waiting to
`provide its arguments have resulted in
`extreme prejudice to Petitioners. The
`parties previously agreed to extend due
`date four, the date for cross-examination,
`observations and motions to exclude to
`April 17th, and Novartis has informed
`Petitioner because of the current case
`schedule that Petitioners must depose
`Novartis's four expert witnesses on
`April 5th and 6th and 9th and 10th in New
`York, providing Petitioners' counsel very
`little time to prepare for so many
`substantive depositions.
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` Further extension of the case
`schedule by agreement of the parties is not
`feasible as the agreed dates for due dates
`five and six are April 24 and April 30 and
`the oral hearing is set for May 11th. The
`current case schedule is too constrained to
`afford Petitioner an adequate opportunity
`to respond to Novartis's March 23rd
`submissions, in part because Novartis
`insisted on receiving a 30-day extension to
`review the Aqua Products decision, delayed
`production of the clinical trial protocol
`for weeks requiring another two-week
`extension and insisted on deposing
`Dr. Benet prior to submitting its motion to
`amend requiring another one-week extension.
` Despite repeatedly being the cause
`of delay, Novartis enjoyed five weeks to
`depose one witness and respond to
`Petitioners' papers. Novartis intends to
`force Petitioner to depose four expert
`witness and respond in three weeks, all
`while also preparing its motion to exclude.
` HON. POLLOCK: Mr. Mills, Petitioner
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`could have brought in an expert in
`pharmacology with the petition, yet you did
`not do that until the reply. How long do
`we need to extend the schedule to make up
`for this?
` MR. MILLS: So I think there's
`two points in Your Honor's question, so the
`first point is bringing in a
`pharmacologist. The institution decision
`correctly noted. The Patent Owner itself
`indicated during the prosecution that the
`person of ordinary skill in the art was an
`M.D. or somebody with experience in
`neurology and that is the person of
`ordinary skill in the art whose testimony
`was submitted in support of the petition.
` You know, Patent Owner attempted to
`move the goalposts which is something that
`its repeatedly done throughout the case.
`It gives one explanation for why the claims
`are patentable and that's disproved and
`they move to another one. So they came to
`the Board. They brought forth their
`pharmacology argument. They said that
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`there had to be testimony from a
`pharmacologist. A pharmacologist looked at
`their arguments, has demonstrated why
`they're incorrect. After demonstrating why
`they're incorrect now Novartis is once
`again changing its story and moving to a
`new argument.
` So I think that's the answer to the
`first question which is are we to blame
`here? And I don't think that we are, and I
`think that the Board has already correctly
`resolved that question.
` As to the second question, how much
`time is necessary? If the Board does
`authorize responsive briefing and
`responsive testimonial evidence if
`necessary, I don't think we're looking for
`a month's extension. I think that we could
`get things done in a matter of a couple of
`additional weeks.
` HON. POLLOCK: All right. Patent
`Owner, would you like to respond?
` MR. TRENCHARD: Yes, Your Honor,
`very much so. And like Mr. Mills, thank
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`you very much for scheduling this call so
`quickly.
` The Patent -- we think that the
`Patent Owner's evidence is well within the
`scope of what the Board authorized and what
`will be required by the APA and the Board's
`rules. Mr. Mills is mistaken. He was not
`on the call where we discussed this issue.
`We did not say we wanted to submit only a
`pharmacologist's testimony. Our
`application was actually to strike
`Dr. Benet's testimony as inappropriate
`reply evidence and the Board decided a less
`drastic remedy would be to allow us to
`respond to his testimony, and all of our
`testimony, all of the brief itself as well
`as the four declarations Mr. Mills
`mentioned, does exactly that.
` It responds to Dr. Benet. You can
`walk through the brief and the declarations
`and you'll see we cite paragraphs where
`Dr. Benet argues such and so and we
`respond. All of our arguments are
`responsive in that respect.
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` And as Your Honor pointed out, the
`Petitioners could have avoided this by
`bringing a pharmacologist along with the
`petition in addition to an M.D. Mr. Mills
`says we moved the goalposts, and in fact,
`what we did was made an argument about
`teaching a way that the Board agreed with
`and added a pharmacologist as a person of
`skill. Under the AIA, of course, the
`Petitioner bears the burden and the risk of
`bringing a complete record of all of the
`petition, so their failure to do that is
`why we are here.
` We do appreciate that the Board's
`order makes reference to pharmacokinetics
`here and there. We took that to mean that
`they were entitled to respond to
`Dr. Benet's pharmacology arguments since
`the narrow subject of pharmacokinetics is
`only part of the subject of pharmacology
`and certainly on the subject that he
`testified about, and that was consistent
`with certainly our understanding, that the
`Board's authorization of the sur-reply was
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`in lieu of the less drastic remedy of
`striking the entire declaration.
` The total number of pages of our
`declarations are commensurate with
`Dr. Benet's total number of pages.
`Dr. Benet, we believe, strayed well outside
`of his expertise as a pharmacologist which
`necessitated that we address his submission
`with multiple witnesses, but we tried to
`keep the total number of pages commensurate
`with his declaration, and we believe that
`we did so.
` It would be very odd, indeed, to
`read the Board's order as limiting our
`sur-reply to the technical issue of
`pharmacokinetics. Pharmacokinetics is the
`study of how the body eliminates a drug
`from its system. Pharmacokinetics,
`pharmacodynamics are both subsets of the
`broader subject of pharmacology. That is
`the subject that Dr. Benet submitted
`testimony on and we were entitled under the
`APA and the Board's rules to a rebuttal.
`The whole issue could have been avoided if
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`there had simply been a pharmacologist
`along with the petition.
` Again, just to return to this idea
`that we moved the goalposts, what we
`pointed out in the preliminary response
`that led the Board to conclude that a
`pharmacologist should be included in the
`definition of a person in skill was that
`anybody reading the references listed on
`the face of the patent would know that you
`need pharmacological expertise in order to
`do dose estimations which is what the
`patent, of course, is all about.
`Petitioners instead chose to take the risk
`that an M.D. with no pharmacology
`experience whatsoever could carry the water
`for them. That was their choice. They
`were entitled to make that strategic
`choice, but that didn't, of course, give
`them the right to then backfill with a
`pharmacologist.
` We appreciate, as I said in our last
`call, the Board's desire to really just get
`a complete record rather than -- given the
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`investment of everyone on the case rather
`than strike Dr. Benet's testimony, but that
`complete record required that we have the
`opportunity to put in a full response to
`everything Dr. Benet said.
` On this issue of pharmacokinetics
`being stitched in throughout his opinion,
`you know, for instance, our argument about
`teaching a way focuses on these three Webb
`references. They're called Webb, Kahan
`2003, Park 2005. Throughout his
`declaration Dr. Benet argues that his
`reading of those references is that those
`references point towards the dose that is
`claimed in our patent. We disagree with
`that rather strongly, but that's his
`argument and it's in every part of his
`declaration, every section.
` That's exactly the issue that the
`Board's order cited and that the
`institution decision cited that justified
`testimony from a pharmacologist. It's
`everywhere in Dr. Benet's declaration.
` Another issue, he argues that the
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`use of an FDA animal scaling methodology,
`which is a pharmacokinetically oriented
`model, would allow one to scale from a dose
`of a mouse in one paper up to the dose that
`we claimed. That idea, too, is shot
`through throughout his declaration. I
`don't know how we would parse that sort of
`analysis from everything else, especially
`in the context of the request that we
`originally made which was to strike his
`declaration in its entirety. We think that
`the APA and the Board's rules entitled us
`to an opportunity to respond.
` And lastly, you know, of course
`we're under a one-year deadline. Extending
`the schedule to do the sort of work that
`Mr. Mills is requesting just seems to us
`impractical at this point especially
`because effectively a remedy to the remedy
`of the Petitioners' error in bringing in a
`new expert on reply.
` You know, right now I think that the
`one-year deadline runs because there's a
`motion to amend in August of 2018. The
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`hearing is in May. If you were to extend
`the hearing any further, it really would
`begin to seriously cramp the Board's
`ability to do their opinion so it
`prejudices the Board especially because the
`record would continue to grow. It would of
`course prejudice Novartis because in
`addition to the two, three, however many
`weeks Mr. Mills has in mind for getting
`whatever additional evidence he wants
`together, we, of course, would be entitled
`then to depose any further witnesses and so
`on it goes.
` This is exactly why, Your Honor, the
`AIA puts the pressure on the Petitioner to
`submit a full record with the petition.
`Otherwise it just becomes a never-ending
`cycle of response -- call and response, and
`that's not where we're supposed to be.
` With respect to the -- I'm not sure
`whether Mr. Mills addressed the idea of the
`motion to amend sur-reply. I heard some
`arguments that might go to that direction,
`but I can hold off on that if Your Honor --
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` HON. POLLOCK: We'll take that next.
` MR. TRENCHARD: Okay.
` HON. POLLOCK: Anything more,
`Mr. Parmelee -- sorry, Mr. Trenchard?
` MR. TRENCHARD: I think I've hit all
`my points, Your Honor.
` HON. POLLOCK: Okay. Mr. Mills,
`I'll give you a minute for a short response
`and then please move on to the second
`issue.
` MR. MILLS: Okay. Thank you.
` So we certainly do disagree that it
`was our burden to anticipate the arguments,
`the pharmacokinetic and pharmacodynamic
`arguments that Patent Owner raised for the
`first time in its Patent Owner preliminary
`response, and we believe that the
`institution decision recognizes that's the
`case.
` To Mr. Trenchard's argument that
`they did not say that they were seeking
`testimony from a pharmacologist, the
`transcript is Exhibit 2094 and a review of
`the transcript confirms that that's the
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`case. They talked about pharmacologist
`testimony, testimony from a pharmacologist.
`There was no discussion of submitting
`testimony from three physicians.
` As to the examples he gave where he
`said that the response should not be
`limited specifically to Webb, Kahan and
`Park, he gave examples of Dr. Benet saying
`that the animal references actually point
`towards a 0.5-milligram dose and that there
`is an animal scaling methodology that was
`used at the time. If Your Honors read the
`sur-reply, you will see that the majority
`of the discussion is not addressing dose
`points. They're addressing completely
`separate points that are not directed to
`those pharmacological points such as claim
`construction and case law and so forth.
` With regard to the argument about
`the one-year deadline, the Board did grant
`a 30-day extension to Patent Owner to
`review the Aqua Products decision. If the
`Board determines that an extension of the
`one-year deadline is necessary, we
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`understand that they have done so in the
`past in cases where there have been
`joinders. We're saying otherwise that the
`one-year clock may be calculated
`differently in joinder cases and that also
`the Aqua Products decision may provide a
`basis for the Board making that decision.
` Moving on to the contingent motion
`to amend, I have addressed some of the
`material in that simply because there was
`so much overlap between the material and
`the underlying declarations and that the
`Patent Owner was using the sur-reply as a
`stocking horse, a trojan horse to be able
`to submit testimony. They stated in their
`motion, their contingent motion to amend at
`Page 2, that they were withholding their
`testimony and they submitted an
`anticipatory prior art reference with their
`Patent Owner response and failed to provide
`any discussion of it so that they could
`have expert testimony addressing that in
`their reply, and then now they've argued
`that because they waited to provide it that
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`we're prohibited from providing expert
`testimony and that somehow the number of
`witnesses that they have addressing the
`issue should be decisive of the outcome.
` And so we do think that it's
`appropriate for us to have an opportunity
`to provide responsive briefing and
`testimonial evidence in response to their
`reply to the motion to amend.
` HON. POLLOCK: Testimonial evidence
`as well?
` MR. MILLS: Yes, potentially.
` HON. POLLOCK: And what would this
`do to the current schedule?
` MR. MILLS: So what we're looking
`for -- I think we're not trying to have a
`long extension. What I mentioned before
`that we think with a couple of weeks
`extension, I think we're planning on doing
`everything simultaneously.
` HON. POLLOCK: Very well.
`Mr. Trenchard?
` MR. TRENCHARD: Yes, Your Honor. We
`actually don't think this is the right sort
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`of case in which to use the Board's
`authority to extend the schedule beyond a
`year. That authority exists to address
`unforeseeable issues that pop up, things
`like the federal circuit issuing the in re
`Aqua decision, the illness of counsel, new
`parties joining, that sort of thing. Here
`the joinder of new parties really had no
`effect on the schedule at all. They just
`followed along with what Petitioner Apotex
`was doing and it's obviously quite
`important from a policy perspective for the
`Board not to freely extend that one-year
`deadline, because again, that would lead to
`the sort of call and response style
`litigation that the AIA was trying to avoid
`and relieve Petitioners of the duty to come
`forward with a full record in the petition.
` With respect to the sur-reply in
`particular, we were surprised by that
`request because after in re Aqua came out,
`we specifically raised in an e-mail that
`you submitted to the Board with the
`Petitioners the issue how in re Aqua and
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`its shifting to the burden of proof from us
`to them would affect or should affect the
`briefing schedule. We even sent them a
`quote from a Law 360 article that came out
`right after in re Aqua in which the Law 360
`folks said, well, you know, this may mean
`because the Petitioners now have the burden
`here that maybe the Petitioners should have
`a last brief on the issue.
` We raised that issue specifically
`with them. They didn't take up our offer
`to talk about it at all and instead agreed
`to three adjusted schedules since then, all
`of which follow what later -- what
`subsequently was the Board's guidance on
`this issue which is that in motions to
`amend the old briefing pattern should still
`exist, should be moving brief, opposition
`brief and reply brief.
` Obviously in re Aqua changes what
`goes into those briefs. We don't have a
`burden of proof on the facts anymore to
`prove patentability, so our opening brief
`all we have to do is identify what -- the
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`changes that we're seeking and that it's
`narrowing and not expanding and more
`technical requirements. We don't have to
`put in all our evidence, we can't because
`we don't know what the arguments are going
`to be against us. So they then have to put
`in evidence challenging our proposed
`amended claims and then we get to respond.
` So in this context, we don't see a
`basis for granting relief or a sur-reply on
`the motion to amend. Where we specifically
`raised this issue with them, they did not
`take us up on it and have since agreed to
`three schedules on the current -- with the
`current briefing pattern. And we, of
`course, relied on that in scheduling all
`along. Your Honors will remember we've had
`several discussions about motion to amend
`scheduling and its importance and the
`significance of the schedule during
`multiple conference calls in this case.
` HON. POLLOCK: Anything else?
` MR. TRENCHARD: No, I think that's
`it.
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