`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`
`_____________________
`
`Case IPR2017-01767
`Patent 9,254,278
`_____________________
`
`PETITIONER’S LIST OF PROPOSED MOTIONS
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Pursuant to the Patent Trial and Appeal Board’s Office Patent Trial Practice
`
`IPR2017-01767 (Patent 9,254,278)
`Par’s List of Proposed Motions
`
`
`
`Guide, Petitioner Par Pharmaceutical, Inc. (“Par”) hereby provides a list of the
`
`proposed motions it presently anticipates filing in the above-captioned inter partes
`
`review (“IPR”) proceeding in addition to those that are automatically authorized by
`
`the Board such as motions for observations on cross-examination and motions to
`
`exclude evidence. The “[s]ubmission of [this] list [does] not preclude the filing of
`
`additional motions not contained in the list.” See 77 Fed. Reg. 48,756, 48,765
`
`(Aug. 14, 2012).
`
`List of Proposed Motions
`
`1.
`
`A motion to exclude evidence pursuant to 37 C.F.R. § 42.64(c) based
`
`at least on the grounds set forth in Petitioner’s Objections to Evidence Pursuant to
`
`37 C.F.R. 42.64 (IPR2017-01767, Paper No. 12), exhibits submitted by Patent
`
`Owner Horizon Therapeutics, LLC (“Patent Owner”) on November 6, 2017 in
`
`connection with Patent Owner’s Preliminary Response (IPR2017-01767, Paper
`
`No. 7) to Par’s Petition for Inter Partes Review of U.S. Patent No. 9,254,278 (“the
`
`’278 patent”);
`
`2.
`
`A contingent motion for additional discovery pursuant to 37 C.F.R.
`
`§ 42.51(b)(2) concerning relevant information inconsistent with a position
`
`advanced by Patent Owner during this proceeding;
`
`3.
`
`A motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2)
`
`1
`
`
`
`
`concerning relevant information from related IPRs (e.g., IPR2016-00829,
`
`IPR2017-01767 (Patent 9,254,278)
`Par’s List of Proposed Motions
`
`IPR2017-1159, IPR2017-01160);
`
`4.
`
`A contingent motion for a protective order and motion(s) to seal
`
`confidential information pursuant to 37 C.F.R. § 42.54;
`
`5.
`
`A motion to permit video-recording of depositions and submission of
`
`video-recorded testimony pursuant to 37 C.F.R. § 42.53(a);
`
`6.
`
`A contingent motion for a briefing, oral argument and decision on
`
`claim construction in this proceeding prior to the oral hearing;
`
`7.
`
`A motion to conduct a technology tutorial in this proceeding prior to
`
`the oral hearing pursuant to 37 C.F.R. § 42.70;
`
`8.
`
`A contingent motion to cross-examine any witness or declarant relied
`
`upon by Patent Owner in this proceeding pursuant to 37 C.F.R. § 42.51(b)(1)(ii);
`
`and
`
`9.
`
`A contingent motion to cross-examine any source of supplemental
`
`information and/or evidence submitted in this proceeding.
`
`
`Dated: February 28, 2018
`
`
`
`
`David H. Silverstein (Reg. No. 61,948)
`AXINN, VELTROP & HARKRIDER LLP
`114 West 47th Street, 22nd Floor
`New York, NY 10036
`(212) 261-5651
`
`Attorney for Petitioner
`Par Pharmaceutical, Inc.
`
`2
`
`
`
`
`
`IPR2017-01767 (Patent 9,254,278)
`Certificate of Service
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the above-captioned “Petitioner’s List
`
`of Proposed Motions” was served in its entirety on February 28, 2018 through the
`
`Patent Trial and Appeal Board End to End (PTAB E2E) system, and additionally
`
`upon the following parties via Electronic Mail, as agreed to by counsel:
`
`
`
`Robert Green: rgreen@greengriffith.com
`Matthew Phillips: mphillips@lpiplaw.com
`Emer Simic: esimic@greengriffith.com
`Dennis Bennett: dennisbennett@globalpatentgroup.com
`
`
`
`Dated: February 28, 2018
`
`
`
`
`David H. Silverstein (Reg. No. 61,948)
`AXINN, VELTROP & HARKRIDER LLP
`114 West 47th Street, 22nd Floor
`New York, NY 10036
`(212) 261-5651
`
`Attorney for Petitioner
`Par Pharmaceutical, Inc.
`
`
`1
`
`
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