UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
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`v.
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`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
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`____________
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`Case IPR2017-01434
`U.S. Patent No. 5,886,035
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`____________
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`PATENT OWNERS’ OBJECTIONS TO EVIDENCE
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`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
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`v.
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`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
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`____________
`
`
`Case IPR2017-01434
`U.S. Patent No. 5,886,035
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`____________
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`PATENT OWNERS’ OBJECTIONS TO EVIDENCE
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`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owners Santen Pharmaceutical
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`Co., Ltd. (“Santen”) and Asahi Glass Co., Ltd. (“AGC”) (together, “Patent
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`Owners”) hereby file these objections to evidence submitted by Petitioners Micro
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`Labs Limited and Micro Labs USA Inc. (together, “Petitioners”) in connection
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`with their Petition for Inter Partes Review of U.S. Patent No. 5,886,035 (“the ’035
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`Patent”), Case No. IPR2017-01434.
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`Exhibit 1006 (JP-A-7070054 to Ueno Japan et al.)
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`Patent Owners object to this exhibit in that the certification included in the
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`exhibit is not an “affidavit” as required by 37 C.F.R. § 42.63(b) and as defined by
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`37 C.F.R. § 42.2. Patent Owners further object to this exhibit under Fed. R. Evid.
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`602 in that the certification included in the exhibit does not establish that the signer
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`has personal knowledge concerning the accuracy of the English translation. Patent
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`Owners further object to this exhibit under Fed. R. Evid. 104(b) as any relevance
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`of the exhibit depends on the accuracy of the English translation, and proof
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`sufficient to support a finding that the English translation is accurate has not been
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`introduced. Specifically, the certification included in the exhibit does not establish
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`that the signer is able to assert, based upon personal knowledge or expertise, that
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`the English translation is accurate.
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`1
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`Exhibit 1007 (Bezuglov, V. V. & L. D. Bergelson, “Fluoroprostaglandins
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`– A New Class of Biologically Active Analogues of Natural Prostaglandins” in
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`Lipids of Biological Membranes (L.D. Bergelson, ed., 1982))
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`Patent Owners object to this exhibit in that the certification included in the
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`exhibit is not an “affidavit” as required by 37 C.F.R. § 42.63(b) and as defined by
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`37 C.F.R. § 42.2. Patent Owners further object to this exhibit under Fed. R. Evid.
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`602 in that the certification included in the exhibit does not establish that the signer
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`has personal knowledge concerning the accuracy of the English translation. Patent
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`Owners further object to this exhibit under Fed. R. Evid. 104(b) as any relevance
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`of the exhibit depends on the accuracy of the English translation, and proof
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`sufficient to support a finding that the English translation is accurate has not been
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`introduced. Specifically, the certification included in the exhibit does not establish
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`that the signer is able to assert, based upon personal knowledge or expertise, that
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`the English translation is accurate.
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`Exhibit 1010 (Stjernschantz, J.W. “From PGF2a-Isopropyl Ester to
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`Latanoprost: A Review of the Development of Xalatan,” Investig. Ophthal. &
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`Vis. Sci. 42(6):1134-1145 (2001))
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`Patents Owners object to this exhibit under Fed. R. Evid. 401-402
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`(relevance) and Fed. R. Evid. 403 (confusing, prejudicial, of limited probative
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`2
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`value, waste of time) to the extent it references technology that was not known in
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`the art as of the effective filing date of the claims of the ’035 Patent.
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`Exhibit 1011 (Nixon, D. “Hyperemia in Glaucoma Patients,” (2008)
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`available online at http://www.medscape.org/viewarticle/577054)
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`Patents Owners object to this exhibit under Fed. R. Evid. 401-402
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`(relevance) and Fed. R. Evid. 403 (confusing, prejudicial, of limited probative
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`value, waste of time) to the extent it references technology that was not known in
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`the art as of the effective filing date of the claims of the ’035 Patent.
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`Exhibit 1012 (PCT/US97/20671 to Klimko et al.)
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`Patents Owners object to this exhibit under Fed. R. Evid. 401-402
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`(relevance) and Fed. R. Evid. 403 (confusing, prejudicial, of limited probative
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`value, waste of time) to the extent it references technology that was not known in
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`the art as of the effective filing date of the claims of the ’035 Patent.
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`Exhibit 1013 (U.S. Provisional Patent Application No. 60/030,519 to
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`Klimko et al.)
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`Patents Owners object to this exhibit under Fed. R. Evid. 401-402
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`(relevance) and Fed. R. Evid. 403 (confusing, prejudicial, of limited probative
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`value, waste of time) to the extent it references technology that was not known in
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`the art as of the effective filing date of the claims of the ’035 Patent.
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`3
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`Exhibit 1027 (Declaration of Mitchell A. deLong, Ph.D.)
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`Patent Owners object to this exhibit on the ground that Dr. deLong’s
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`testimony relating to Exhibits 1006, 1007, 1010, 1012, and 1013 is inadmissible
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`for the grounds set forth above with respect to the specific exhibits.
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`These objections are being timely filed and served within 10 business
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`days of the institution of the trial, in accordance with 37 C.F.R.§ 42.64(b)(1).
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`Dated: December 13, 2017
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`4
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`Respectfully submitted,
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`/ Arlene L. Chow /
`Arlene L. Chow
`Registration No. 47,489
`Eric J. Lobenfeld
`(pro hac vice)
`Ernest Yakob
`Registration No. 45,893
`Hogan Lovells US LLP
`875 Third Avenue
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
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`Counsel for Patent Owners
`Santen Pharmaceutical Co., Ltd.
`and Asahi Glass Co., Ltd.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owners’ Objections to Evidence Pursuant to 37 C.F.R. § 42.64(b)(1) was served
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`on December 13, 2017, by filing this document through the Patent Trial and
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`Appeal Board End to End System as well as delivering a copy via electronic mail
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`upon the following attorneys of record for the Petitioner:
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`Cedric C.Y. Tan, Reg. No. 56,082
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Tel.: (202) 663-8000
`Fax.: (202) 663-8007
`Email: cedric.tan@pillsburylaw.com
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`Sean M. Weinman, Reg. No. 69,515
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22102
`Tel.: (703) 770-7511
`Fax.: (703) 770-4856
`Email: sean.weinman@pillsburylaw.com
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`MicroLabsIPR@pillsburylaw.com
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`5
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`/ Arlene L. Chow /
`Arlene L. Chow
`Registration No. 47,489
`Hogan Lovells US LLP
`875 Third Avenue
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
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`Counsel for Patent Owners
`Santen Pharmaceutical Co., Ltd.
`and Asahi Glass Co., Ltd.
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`Dated: December 13, 2017
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`6
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