From: Trials
`Sent: Thursday, October 05, 2017 4:16 PM
`To: Love, Jane M. <JLove@gibsondunn.com>
`Cc: Mills, Jad <jmills@wsgr.com>; Rosato, Michael <mrosato@wsgr.com>; trea@crowell.com; Yellin,
`Deborah <DYellin@crowell.com>; slentz@crowell.com; TLiu@agpharm.com; SPark@winston.com;
`CKlein@winston.com; SNaqi@winston.com; amanda.hollis@kirkland.com; egoryunov@kirkland.com;
`greg.springsted@kirkland.com; Trenchard, Robert W. <RTrenchard@gibsondunn.com>; 'Parmelee,
`Steve' <sparmelee@wsgr.com>
`Subject: RE: IPR2017-00854 - Request for Conference Call re: In re Aqua
`
`Counsel:
`In light of the Federal Circuit’s decision in In re Aqua Products, and Patent Owner’s
`consideration of a motion to amend, Due Date 1 is postponed by 4 weeks to Friday, November
`10. All other due dates will be adjusted accordingly to avoid inconveniencing either party. A
`revised scheduling Order setting new dates for the remainder of this proceeding will issue
`shortly. A conference call is not necessary at this time.
`
`Regards,
`Eric Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`From: Love, Jane M. [mailto:JLove@gibsondunn.com]
`Sent: Thursday, October 05, 2017 3:54 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Mills, Jad <jmills@wsgr.com>; Rosato, Michael <mrosato@wsgr.com>; trea@crowell.com; Yellin,
`Deborah <DYellin@crowell.com>; slentz@crowell.com; TLiu@agpharm.com; SPark@winston.com;
`CKlein@winston.com; SNaqi@winston.com; amanda.hollis@kirkland.com; Love, Jane M.
`<JLove@gibsondunn.com>; egoryunov@kirkland.com; greg.springsted@kirkland.com; Trenchard,
`Robert W. <RTrenchard@gibsondunn.com>; 'Parmelee, Steve' <sparmelee@wsgr.com>
`Subject: RE: IPR2017-00854 - Request for Conference Call re: In re Aqua
`
`To the Patent Trial and Appeal Board in IPR2017-00854:
`
`We misunderstood Petitioners’ offer to speak about an extension within the existing schedule,
`for which we apologize to the Board and Mr. Parmelee.
`
`We do think an extension of the entire schedule is called for in this unusual circumstance, as we
`explained in the email Mr. Parmelee attached to his email to the Board.
`
`We believe that a meet and confer to adjust due dates within the existing schedule will not
`suffice, and will simply delay resolution further.
`
`
`

`

`We thus respectfully request an expedited phone conference with the Board to address the
`issue.
`
`Respectfully submitted,
`Jane M. Love (Lead Counsel for Patent Owner
`
`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
`
`
`
`From: Parmelee, Steve [mailto:sparmelee@wsgr.com]
`Sent: Thursday, October 05, 2017 3:39 PM
`To: 'Trials'
`Cc: Mills, Jad; Rosato, Michael; trea@crowell.com; Yellin, Deborah; slentz@crowell.com;
`TLiu@agpharm.com; SPark@winston.com; CKlein@winston.com; SNaqi@winston.com;
`amanda.hollis@kirkland.com; egoryunov@kirkland.com; greg.springsted@kirkland.com; Trenchard,
`Robert W.; Love, Jane M.
`Subject: RE: IPR2017-00854 - Request for Conference Call re: In re Aqua
`
`Dear Trials,
`
`We object to Patent Owner’s email below for misrepresenting the parties’ correspondence on this
`issue. This is a recurring issue in this IPR.
`
`It is Petitioner’s view that the Aqua Products decision does not require an extension of Patent Owner’s
`deadlines to file its patent owner response or motion to amend, and certainly is not good cause for
`waiving the statutory requirement that the IPR trial be completed within one year of institution. We
`believe any time adjustments can be accommodated under the current schedule by stipulations
`between the parties.
`
`As to the issue of stipulated extensions of time, we did offer to discuss an extension of Patent Owner’s
`filing dates as a matter of professional courtesy. The parties have not yet had that discussion, and a
`two-week extension was never discussed--contrary to Patent Owner’s statements below. The parties’
`correspondence on this issue is memorialized in the attached email chain.
`
`We believe the Board should direct the parties to meet and confer on this issue, and explore whether
`they can obviate the need to burden the Board. Of course, we can be available at the Board’s
`convenience to discuss case schedule with the Board should a conference call be deemed appropriate.
`
`Respectfully,
`
`Steven W. Parmelee
`
`

`

`Wilson Sonsini Goodrich & Rosati
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`206-883-2542 Direct
`sparmelee@wsgr.com | www.wsgr.com
`
`
`From: Love, Jane M. [mailto:JLove@gibsondunn.com]
`Sent: Thursday, October 05, 2017 11:16 AM
`To: 'Trials'
`Cc: Parmelee, Steve; Mills, Jad; Rosato, Michael; trea@crowell.com; Yellin, Deborah;
`slentz@crowell.com; TLiu@agpharm.com; SPark@winston.com; CKlein@winston.com;
`SNaqi@winston.com; amanda.hollis@kirkland.com; egoryunov@kirkland.com;
`greg.springsted@kirkland.com; Love, Jane M.; Trenchard, Robert W.
`Subject: IPR2017-00854 - Request for Conference Call re: In re Aqua
`
`To the Patent Trial and Appeal Board in IPR2017-00854:
`
`As the Board is likely aware, yesterday the Federal Circuit decided In re Aqua. The Circuit
`overturned the PTAB’s existing rules regarding burdens of proof in motions to amend.
`
`The Board will recall that Patent Owner Novartis AG is actively considering a motion to amend
`in this proceeding. Currently, Novartis AG’s Patent Owner’s response and accompanying
`motion to amend are due Friday, October 13, 2017.
`
`We request a teleconference with the Board to seek an extension of the entire schedule in this
`and all consolidated IPRs by one month. That will allow time to digest the decision, assess its
`impact on a possible motion to amend, and address with Petitioners how to deal with such a
`motion from a procedural perspective.
`
`In emails last night, Petitioners graciously offered to extend our time to file by two weeks, but
`within the current schedule. We appreciate the offer but believe that the issues will require
`more time to work out, including the shape and nature of the record that must accompany the
`application for amended claims, as well as the schedule for briefing on those claims. Our goal is
`to have enough time for the parties to try to reach agreement on all issues and then present
`them to the Board. An agreed-upon framework of course would reduce the risk of procedural
`error.
`
`Given the timing of Patent Owner’s impending due date, we respectfully request that any
`conference occur on an expedited basis.
`
`Respectfully submitted,
`Jane M. Love, Ph.D.
`Lead Counsel for Patent Owner
`
`Copy to: Petitioners’ Counsel
`
`

`

`
`
`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
`
`
`
`
`This message may contain confidential and privileged information. If it has been sent to you in
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`
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