EXHIBIT 3002
`
`
`Counsel,
`
`Petitioner’s request to submit a third paper (in addition to its Petition and Reply) on the printed
`publication issue is denied. The documents sought to be submitted pre-date the filing of the Petition by
`several years and Petitioner provides no persuasive reason why this information could not have been
`raised in the Petition. Petitioner is reminded that emails to the Board shall not include substantive
`arguments.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Smith, Jason A. [mailto:jsmith@slk-law.com]
`Sent: Tuesday, February 27, 2018 10:31 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Bernard, Jeffrey S. <jbernard@slk-law.com>; Long, Alex <along@slk-law.com>; Michael Kane
`<kane@fr.com>; whelan@fr.com
`Subject: RE: Request Seeking Motion For Leave to File Reply to Patent Owner's Preliminary Response(s)
`and Sur-Reply for IPR2017-02002 and IP2007-01906
`
`Dear Board:
`
`Counsel for Patentee is mistaken. The printed publications were identified and cited by Patentee in one
`or more Continuation Applications claiming priority from the challenged U.S. Patents but were not cited
`in the instantly challenged U.S. Patents.
`
`Further, the purpose of Petitioner’s instant Motion is to alert the board of recently discovered
`admissions made by Patentee in the Continuation Applications that the disputed references constitute
`printed publications and are cited by Patentee in these Continuation Applications as such.
`
`Best regards,
`
`Jason A. Smith
`Counsel for Petitioner
`
`
`
`Jason A. Smith | Shumaker
`Attorney at Law
`101 South Tryon Street, Suite 2200 | Charlotte, North Carolina 28280
`
`
`
`1
`
`

`

`Direct 704.945.2957 | Fax 704.332.1197
`jsmith@slk-law.com | bio | LinkedIn
`
`Confidentiality Statement: This electronic message contains information from the law firm of Shumaker, Loop & Kendrick, LLP, and may be
`confidential or privileged. The information is intended to be for the use of the individual or entity named above. If you are not the intended
`recipient, be aware that any disclosure, copying, distribution or use of the contents of this message is prohibited. If you have received this
`electronic message in error, please notify the sender immediately by reply e-mail or telephone 800.444.6659.
`From: Dorothy Whelan [mailto:whelan@fr.com]
`Sent: Tuesday, February 27, 2018 10:07 AM
`To: Smith, Jason A.; trials@uspto.gov
`Cc: Bernard, Jeffrey S.; Long, Alex; Michael Kane
`Subject: RE: Request Seeking Motion For Leave to File Reply to Patent Owner's Preliminary Response(s)
`and Sur-Reply for IPR2017-02002 and IP2007-01906
`
`
`
`
`
`Patent Owner objects to Petitioner’s request to file yet another reply. Once again, Petitioner has failed
`to confer with Patent Owner prior to seeking leave. There are no inconsistent positions. It is well-
`known that submission of a reference in an IDS is not an admission that it is prior art. As to timing, an
`institution decision is due shortly. If Petitioner had wanted to submit the IDS’s and briefing, it had
`ample opportunity to do so earlier, either in its Petition or in its first Reply. It is difficult to see how a
`recognition that documents were cited in an IDS during prosecution of the challenged patents
`constitutes a “new factual discovery.” Patent Owner requests that the Board reject Petitioner’s belated
`and continued efforts to supplement what is a clearly defective petition.
`
`
`Regards,
`Dorothy P. Whelan
`Attorney for Patent Owner
`
`
`From: Smith, Jason A. [mailto:jsmith@slk-law.com]
`Sent: Tuesday, February 27, 2018 8:53 AM
`To: trials@uspto.gov
`Cc: Bernard, Jeffrey S. <jbernard@slk-law.com>; Long, Alex <along@slk-law.com>; Dorothy Whelan
`<whelan@fr.com>; Michael Kane <kane@fr.com>
`Subject: Request Seeking Motion For Leave to File Reply to Patent Owner's Preliminary Response(s) and
`Sur-Reply for IPR2017-02002 and IP2007-01906
`
`
`Dear Board,
`
`
`Petitioner respectfully seeks a Motion for Leave To File A Preliminary Reply To Patent Owner’s
`Preliminary Response(s) and Sur-Reply(s) for IPR2017-02002 and IP2007-01906.
`
`
`Petitioner’s counsel is available for a telephonic conference call on February 27, 28, or March 1 if the
`Boards deems it necessary.
`
`
`Specifically, to facilitate a just outcome in a forthcoming decision on institution and in view of a new
`factual discovery, Petitioner seeks to address the below evidentiary issue(s) raised by Patentee in its
`Preliminary Response and Sur-Reply:
`
`
`
`
`2
`
`

`

`1. In its Preliminary Response, Patentee (Allergan) asserts that Lupo (Ex. 1015), Toth (Ex. 1019),
`Levy (Ex. 1007), and Elevess Summary (Ex. 1017) do not constitute printed
`publications. However, Patentee’s instant position is (i) in direct contrast to Patentee’s
`(Allergan’s) positions asserted before the USPTO while prosecuting various Continuation Patent
`Applications (claiming priority from U.S. Patent No. 8,357,795) and (ii) directly evidenced by the
`Patentee’s own IDS submissions to the USPTO. Accordingly, Petitioner respectfully seeks the
`following:
`
`
`a. To submit the April 4, 2014 Information Disclosure Statement (IDS) submitted by
`Patentee (Allergan) in U.S. Patent App. No. 13/419,079 (i.e., a continuation application
`claiming direct priority from U.S. Patent No. 8,357,795). Within the “Non-Patent
`Literature” section of the April 4, 2014 IDS, Patentee cites Lupo, Levy, and Toth as Non-
`Patent Literature Reference 1, 14, and 15 therein. Lupo, Levy, and Toth cited in the April
`4, 2014 IDS (and the citations included therein) are identical to Lupo (Ex. 1015), Toth (Ex.
`1019), and Levy (Ex. 1007) within the Petitions for IPR2017-02002 and IP2007-01906.
`
`b. To further submit the April 16, 2014 Information Disclosure Statement (IDS) submitted
`by Patentee (Allergan) in U.S. Patent App. No. 13/746,170 (i.e., a continuation
`application claiming direct priority from U.S. Patent No. 8,357,795). Within the “Non-
`Patent Literature” section of the April 16, 2014 IDS, Patentee cites Lupo, Levy, and Toth
`as Non-Patent Literature Reference 1, 14, and 15 therein. Lupo, Levy, and Toth cited in
`the April 4, 2014 IDS (and the citations included therein) are identical to Lupo (Ex. 1015),
`Toth (Ex. 1019), and Levy (Ex. 1007) within the Petitions for IPR2017-02002 and IP2007-
`01906.
`
`c. In response to Patentee’s Sur-Reply maintaining that Elevess Summary (Ex. 1017) does
`not constitute a printed publication, to further submit the above mentioned April 4,
`2014 IDS submitted by Patentee (Allergan) in U.S. Patent App. No. 13/419,079 and April
`16, 2014 IDS submitted by Patentee (Allergan) in U.S. Patent App. No. 13/746,170 that
`each cite Elevess Summary as reference 5 therein. Elevess Summary cited therein is
`identical to Ex. 1017 submitted in Petition for IPR2017-02002 and IP2007-01906. The
`Patentee’s IDSs further include accession data (i.e., URL and publication) consistent with
`the citation(s) provided in Petitioner’s Petitions for IPR2017-02002 and IP2007-01906
`and directly contradict assertions within Patentee’s Sur-Reply.
`
`
`
`
`
`Petitioner’s Reply would be legal and factual arguments responding only to the above evidentiary issues
`raised in the Patent Owner’s Preliminary Response and Sur-Reply and is clearly warranted to facilitate a
`just outcome in a forthcoming decision on institution.
`
`In view of the Patentee’s above mentioned inconsistent positions, Petitioner did not confer with Counsel
`for Patentee prior to contacting the Board.
`
`
`Best regards,
`
`
`Jason A. Smith
`Counsel for Petitioner
`
`
`
`
`3
`
`

`

`Jason A. Smith | Shumaker
`Attorney at Law
`101 South Tryon Street, Suite 2200 | Charlotte, North Carolina 28280
`Direct 704.945.2957 | Fax 704.332.1197
`jsmith@slk-law.com | bio | LinkedIn
`
`Confidentiality Statement: This electronic message contains information from the law firm of Shumaker, Loop & Kendrick, LLP, and may be
`confidential or privileged. The information is intended to be for the use of the individual or entity named above. If you are not the intended
`recipient, be aware that any disclosure, copying, distribution or use of the contents of this message is prohibited. If you have received this
`electronic message in error, please notify the sender immediately by reply e-mail or telephone 800.444.6659.
`
`
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`4
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