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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`Taro Pharmaceuticals U.S.A., Inc.
`Petitioner,
`
`v.
`
`Apotex Technologies, Inc.
`Patent Owner
`
`
`Case No.: IPR2017-01446
`Patent No. 7,049,328
`
`
`
`
`
`JOINT MOTION TO LIMIT PETITION
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`
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`On July 2, 2018, the Board ordered the parties to confer to discuss the
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`Board’s modified institution decision, instituting inter partes review on all of the
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`challenged claims and all of the grounds presented in the petition. (Paper 50.)
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`The parties have so conferred and have agreed to file this Joint Motion to Limit
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`the Petition by removing the claims or grounds upon which the Board did not
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`institute in its Decision on Institution.
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`
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`The parties have therefore agreed to limit the petition and the entire
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`proceeding to challenge the patentability of the following claims of U.S. Patent
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`7,049,328 on the following grounds, as originally instituted by the Board (Paper 7
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`at 41):
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`Dated: July 9, 2018
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`
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`Respectfully submitted,
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`
`
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`
`
`
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`/Huiya Wu/
`Huiya Wu (Reg. No. 44,411)
`Robert V. Cerwinski (to seek pro hac vice
`admission)
`Sarah Fink (Reg. No. 64,886)
`GOODWIN PROCTER LLP
`620 Eighth Avenue
`New York, NY 10018
`Phone: (212) 813-8800
`Fax: (212) 355-3333
`
`

`

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`Counsel for Petitioner
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`/W. Blake Coblentz/
`
`
` W. Blake Coblentz (Reg. No. 57,104)
`
`Cozen O’Connor
`1200 19th Street, N.W.
`
` Washington, DC 20036
`
`Tel: (202) 912-4800
`
`Counsel for Patent Owner
`
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`2
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`

`

`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 9th day of July, 2018, I
`
`caused to be served a true and correct copy of the foregoing “JOINT MOTION TO
`
`LIMIT PETITION” via electronic mail on the following attorneys of record:
`
`W. Blake Coblentz
`Aaron S. Lukas
`Barry Golob
`
`Email:
`wcoblentz@cozen.com
`alukas@cozen.com
`bgolob@cozen.com
`
`
`
`
`By: /Sarah Fink/
` Sarah Fink
`
`
`
`

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