`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
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`Petitioner
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`v.
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`HORIZON THERAPEUTICS, LLC,
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`Patent Owner
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`Case IPR2017-01159
`Patent 9,254,278
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`Pursuant to 37 C.F.R. § 42.70(a) and the Board’s Scheduling Order (Paper
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`11), the Patent Owner requests oral argument, which is currently scheduled for
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`July 9, 2018. The Patent Owner expects to argue the following issues at the oral
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`argument:
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`(1) Whether the Petitioner has met its burden to show that claims 4-7 and
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`12-15 of U.S. Patent 9,254,278 (“the ’278 patent”) would have been
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`obvious over Blau, Simell and the ’859 Publication.
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`(2) Whether the Petitioner has met its burden to show that claims 1-3 of
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`the ’278 patent would have been obvious over the ’859 Publication.
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`(3) Whether the Petitioner has met its burden to show that claim 8-11 of
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`the ’278 patent would have been obvious over Blau, Simell, the ’859
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`Publication and the Brusilow ’979 Patent.
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`(4)
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`Interpretations of the above-listed claims.
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`(5) The level of ordinary skill in the art, the attributes of one of ordinary
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`skill in the art at the time of the inventions claimed in the ’278 Patent,
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`and whether the Petitioner’s expert, Dr. Vaux, has the requisite
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`qualifications and knowledge of one of ordinary skill in the art of the
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`claimed subject matter.
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`(6) The Patent Owner’s responses to arguments made by the Petitioner in
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`its Reply (Paper 23), including but not limited to Petitioner’s
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`IPR2017-01159
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`Page 2
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`assertions that the Patent Owner is collaterally estopped from
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`contesting unpatentability of the challenged claims of the ’278 patent
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`and that certain findings made by the Board in the Final Written
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`Decision in IPR2016-00829 should be entitled preclusive effect, and
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`that Horizon has not offered any evidence in the instant IPR that
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`justifies deviating from that decision.
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`(7) Any other subsidiary issue relevant to issues (1) – (6).
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`(8) Any other issues identified by the Patent Owner or the Petitioner for
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`oral argument or any other issues raised in papers filed on or after this
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`date.
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`(9) Any other issues the Board deems necessary for issuing a final written
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`opinion.
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`Respectfully submitted,
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`Date: May 25, 2018
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`By: / M. C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
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`IPR2017-01159
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`Page 3
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 25, 2018, copies of the foregoing PATENT
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`OWNER’S REQUEST FOR ORAL ARGUMENT and all documents filed with it
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`were served via electronic mail, as agreed to by counsel, upon the following
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`counsel for Petitioner:
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`Elizabeth J. Holland: EHolland@goodwinlaw.com
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`Cynthia Lambert Hardman: CHardman@goodwinlaw.com
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`By: / M. C. Phillips /
`Matthew C. Phillips
`Reg. No. 43,403
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`IPR2017-01159
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`Page 4
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