Daniel R. Evans
`Fishwick, Laura
`Trials; Kallas,Nicholas; #ZortressAfinitorIPR; Jeffrey Blake; Melissa M. Hayworth; BreckenridgeAfinitor_131_IPR
`Re: IPR2017-01592 -- Petitioner requests permission to file motion for Board to grant authorization to file
`Declaration of Fu. L. Luan, M.D.
`Monday, January 22, 2018 8:20:37 PM
`
`From:
`To:
`Cc:
`Subject:
`
`Date:
`
`Dear Board,
`
`Please be aware that Petitioner can be available for a conference call with the Board, if
`necessary, on an earlier date (such as 24-26 January), as well as the later dates proposed by
`Patent Owner.
`
`Thank you for your consideration of Petitioner’s request.
`
`Sincerely,
`
`Daniel Evans
`
`Sent from my iPhone
`
`On Jan 22, 2018, at 19:54, Fishwick, Laura <LFishwick@FCHS.COM> wrote:
`
`Dear Board,
`
`Patent Owner Novartis respectfully objects to Petitioner’s email as an improper
`substantive communication to the Board without authorization.
`
`Patent Owner also opposes Petitioner’s request for permission to file a motion
`seeking authorization to file the Luan declaration after the deadline in the
`Board’s January 3, 2018 Institution Decision (Paper 12).
`
`Should the Board desire a conference call, Patent Owner is available on January
`29 – January 31, 2018.
`
`Respectfully submitted,
`
`Laura Fishwick
`
`Laura Fishwick
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`T 212-218-2318
`F 212-218-2200
`LFishwick@FCHS.COM
`http://www.fitzpatrickcella.com
`Bio
`
`
`
`

`

`From: Daniel R. Evans [mailto:DEvans@merchantgould.com]
`Sent: Monday, January 22, 2018 6:51 PM
`To: Trials
`Cc: Kallas,Nicholas; #ZortressAfinitorIPR; Jeffrey Blake; Melissa M. Hayworth;
`BreckenridgeAfinitor_131_IPR
`Subject: IPR2017-01592 -- Petitioner requests permission to file motion for Board to grant
`authorization to file Declaration of Fu. L. Luan, M.D.
`
`Dear Board,
`
` I
`
` am lead counsel for Breckenridge Pharmaceutical, Inc. in Inter Partes Review No.
`IPR2017-01592. I respectfully request permission from the Board to file a motion
`seeking authorization to file the Declaration of Fu. L. Luan, M.D. (“the Luan
`Declaration”).
`
`As a point of reference, this IPR was instituted on January 3, 2018. (See Paper 12.) One
`of the references cited in instituted Grounds 3-5 is “Sirolimus Prevents Tumor
`Progression: mTOR Targeting For The Inhibition Of Neoplastic Progression,” authored
`by Luan et al (“the Luan Abstract,” see Ex. 1005 at Page 001). In its Patent Owner
`Preliminary Response, Patent Owner raised an issue as to the publication date of the
`Luan Abstract and the documents included in Petitioner’s Ex. 1005. (See Paper 9 at 46-
`49.) In the Institution Decision, the Board stated its desire to evaluate the grounds
`involving Luan on the merits and authorized Breckenridge to “file one or more
`declarations explaining the relevance of the documents appended to the Luan abstract,
`which Patent Owner may address in the Patent Owner Response.” (Paper 12 at 22-23,
`35.) The declarations were due by January 18, 2018. (Paper 12 at 23, 35.)
`
`After receiving the Institution Decision, Breckenridge timely sought a declaration from
`Dr. Luan to file as part of Breckenridge’s response. (Breckenridge’s response included
`two other declarations, see Exs. 1112-1118.) Dr. Luan ultimately agreed that he would
`provide a declaration, but he did not agree until the night of January 18, 2018 (the due
`date). Breckenridge received the Luan Declaration on January 19, 2018. Dr. Luan is the
`first named author of the Luan Abstract, and his declaration specifically addresses the
`publication date issue of the Luan Abstract raised by the Patent Owner.
`
`Breckenridge therefore respectfully requests for permission from the Board to file a
`motion seeking authorization to file the Luan Declaration.
`
`Breckenridge contacted Patent Owner with this request on January 19, 2018.
`Breckenridge followed up by sending Patent Owner a draft of this email and a copy of
`the Luan Declaration on January 22, 2018. Patent Owner opposes Breckenridge’s
`request.
`
`Respectfully submitted,
`
`Daniel Evans
`(Reg. No. 55,868)
`
`

`

`Counsel for Breckenridge
`
`
`Daniel R. Evans
`Merchant & Gould P.C.
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`USA
`
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