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`IPR2017-01373
`Patent Owner’s Reply ISO Motion to Exclude
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`Filed on behalf of Patent Owner Genentech, Inc. by:
`
`David L. Cavanaugh (Reg. No. 36,476)
`Lauren V. Blakely (Reg. No. 70,247)
`Robert J. Gunther, Jr. (Pro Hac Vice)
`Lisa J. Pirozzolo (Pro Hac Vice)
`
`Kevin S. Prussia (Pro Hac Vice)
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`Andrew J. Danford (Pro Hac Vice)
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`WILMER CUTLER PICKERING
`
` HALE AND DORR LLP
`1875 Pennsylvania Ave., NW
`
`Washington, DC 20006
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`
`
`Adam R. Brausa (Reg No. 60,287)
`Daralyn J. Durie (Pro Hac Vice)
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`CELLTRION, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`Case IPR2017-01373
`U.S. Patent No. 6,407,213
`____________________________________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE
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`IPR2017-01373
`Patent Owner’s Reply ISO Motion to Exclude
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`The Board should exclude Exhibit 1193 and the associated arguments and
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`
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`testimony that rely on this exhibit, including the first full paragraph of pages 15
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`and 21 of Petitioner’s Reply (Paper 54), Ex. 1143 ¶30, and Ex. 1138 at 176:25 to
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`178:23. This evidence was newly introduced in reply and is an improper attempt
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`to present a new theory of unpatentability not disclosed in the Petition and are
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`therefore not relevant to the instituted grounds. (See Paper 59; Paper 61). As the
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`Board recently explained, “Federal Circuit case law indicates that a motion to
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`exclude is a proper vehicle for enforcing our rule and trial practice guide regarding
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`the scope of evidence that may be submitted with a reply brief.” Dexcom, Inc. v.
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`Waveform Techs, Inc., IPR2016-01679, Paper 53 at 50-51 (Feb. 28, 2018); see also
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (“a party may
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`move to exclude evidence … as improper under the response-only regulation,
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`under the Trial Practice Guide’s advice”); Genzyme Therapeutic Prods. L.P. v.
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`Biomarin Pharm. Inc., 825 F.3d 1360, 1368 (Fed. Cir. 2016) (if Patent Owner “had
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`wanted the Board to disregard those references, it could have filed a motion to
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`exclude them,” citing, e.g., 37 C.F.R. § 42.64(c)); Intelligent Bio-Systems, Inc. v.
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`Illumina Cambridge, Ltd., 821 F.3d 1359 (Fed. Cir. 2016) (not error for the Board
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`to exclude petitioner’s new theory of invalidity supported by new evidence not
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`relied upon in the petition).
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`1
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`IPR2017-01373
`Patent Owner’s Reply ISO Motion to Exclude
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`Exhibit 1193 is thus per se irrelevant under Federal Rule of Evidence 401
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`
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`because it is untimely and in violation of the Board’s rules and its governing
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`statute. 35 U.S.C. § 312(a); 37 C.F.R. § 42.23(b). Any relevance is greatly
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`outweighed by the unfair prejudice to Patent Owner because Patent Owner has
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`been denied any meaningful opportunity to substantively respond to Petitioner’s
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`positions. As a result, the Board should exclude Exhibit 1193 and the associated
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`arguments and testimony that rely on this exhibit.
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`July 10, 2018
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`Respectfully Submitted,
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`By:
`
`/David L. Cavanaugh/
`
`David L. Cavanaugh
`Reg. No. 36,476
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`202-663-6025
`
`2
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`IPR2017-01373
`Patent Owner’s Reply ISO Motion to Exclude
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`CERTIFICATE OF SERVICE
`I hereby certify that, on July 10, 2018, I caused a true and correct copy of the
`following materials:
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`
`
` Patent Owner’s Reply in Support of its Motion to Exclude
`
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`to be served via electronic mail on the following attorneys of record:
`
`Cynthia Lambert Hardman
`GOODWIN PROCTER LLP
`chardman@goodwinlaw.com
`620 Eighth Avenue, New York, NY 10018
`
`Robert V. Cerwinski
`GOODWIN PROCTER LLP
`rcerwinski@goodwinlaw.com
`620 Eighth Avenue, New York, NY 10018
`
`Elizabeth Holland
`GOODWIN PROCTER LLP
`eholland@goodwinlaw.com
`620 Eighth Avenue, New York, NY 10018
`
`Linnea P. Cipriano
`GOODWIN PROCTER LLP
`lcipriano@goodwinlaw.com
`620 Eighth Avenue, New York, NY 10018
`
`Sarah J. Fischer
`GOODWIN PROCTER LLP
`sfischer@goodwinlaw.com
`100 Northern Avenue, Boston, MA 02110
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`1
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`IPR2017-01373
`Patent Owner’s Reply ISO Motion to Exclude
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`/Lauren V. Blakely/
`Lauren V. Blakely
`Reg. No. 70,247
`Wilmer Cutler Pickering Hale & Dorr LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`(650) 600-5039
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`2
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