From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Trials
`Mitchell, Susan; Snedden, Sheridan; Smith, Richard J. (PTAB)
`Trials
`FW: IPR2018-00739
`Thursday, April 25, 2019 6:48:29 AM
`RE IPR2018-00739 -00680--Marked Up Exhibits.msg
`
`Please see the below two e-mails
`
`Thanks
`Andrew
`
`From: Rosato, Michael <mrosato@wsgr.com>
`Sent: Wednesday, April 24, 2019 8:39 PM
`To: Wells, Maclain <MWells@irell.com>; Trials <Trials@USPTO.GOV>
`Cc: Fleming, Michael <MFleming@irell.com>; Parmelee, Steve <sparmelee@wsgr.com>; Gerrard,
`Sonja <sgerrard@wsgr.com>
`Subject: RE: IPR2018-00739
`
`Dear Trials,
`
`Patent Owner opposes the requested relief, as neither the basis nor the specific relief (e.g., length of
`briefing, timing, etc.) has been identified (see also, attached email). The request is also confusing in
`that the same materials are addressed in Patent Owner’s Reply to the Opposition to the Motion to
`Amend—and their entry in the record in that regard is unopposed.
`
`In any event, the identified material directly addresses new arguments raised in Petitioner’s Reply
`and, therefore, is properly responsive in Sur-Reply. Indeed, Petitioner does not contest that the
`identified material is properly responsive, just that is “new.” Moreover, the identified material
`primarily addresses Petitioner’s own publications, which also were properly introduced during cross-
`examination of Petitioner’s witness for impeachment.
`
`If Petitioner is authorized to file a motion to strike, Patent Owner requests authorization to file an
`opposition. Both briefs should be limited to 3 pages, with no reply.
`
`Patent Owner further requests authorization to file a motion for sanctions (e.g., 37 CFR 42.12(a)(1)-
`(3), (6)) for Petitioner’s failure to comply with discovery requirements (see 37 CFR 42.51(b)(1)(iii))
`and its corresponding argument in the Reply materials directly contradicted by Petitioner’s own
`publications—which it now seeks to strike.
`
`Patent Owner is available for conference call 4/29 or 4/30 between 2-5pm Eastern.
`
`Respectfully submitted,
`
`Michael T Rosato (Lead Counsel for Protiva/Patent Owner)
`Wilson Sonsini Goodrich & Rosati
`[o] 206.883.2529 | [f] 206.883.2699
`
`1
`Exhibit 3001
`
`

`

`mrosato@wsgr.com
`
`
`From: Wells, Maclain [mailto:MWells@irell.com]
`Sent: Wednesday, April 24, 2019 2:52 PM
`To: Trials
`Cc: Fleming, Michael; Rosato, Michael; Parmelee, Steve; Gerrard, Sonja
`Subject: IPR2018-00739
`
`Dear Trials,
`
`Following Patent Owner’s recent sur-reply filing on April 17, 2019, Petitioner (Moderna
`Therapeutics) respectfully requests the following relief:
`
`
`Authorization to file a motion to strike new evidence, new arguments and related portions of
`Patent Owner’s sur-reply in IPR2018-00739: The sur-reply materials attempt to introduce
`new evidence for the ’435 patent on which trial was instituted, including new exhibits 2046-
`2052 and related discussions in the sur-reply at pages 19-20 & 25-29. The sur-reply materials
`also attempt to introduce new arguments regarding the ‘554 publication at page 11, footnote
`7 and test data from Examples 7-11 in the ‘435 patent that was not previously referenced.
`
`
`Respectfully submitted,
`C. Maclain Wells
`
`Counsel for Moderna Therapeutics
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Tuesday, April 2, 2019 7:45 AM
`To: Fleming, Michael <MFleming@irell.com>
`Cc: Parmelee, Steve <sparmelee@wsgr.com>; Gerrard, Sonja <sgerrard@wsgr.com>; Rosato,
`Michael <mrosato@wsgr.com>; Wells, Maclain <MWells@irell.com>
`Subject: RE: IPR2018-00680 and IPR2018-00739
`
`Counsel,
`
` A
`
` conference call is not deemed necessary. Patent Owner’s request to file a motion to strike
`in IPR2018-00680, Patent Owner’s request for an additional 1500 words in its Sur-reply in
`IPR2018-00739, and Patent Owner’s request for an extension of time for Due Date 3 (from
`April 10th to April 17th) in both IPR2018-00680 and IPR2018-00739, are GRANTED.
`
`Counsel are strongly encouraged to resolve these types of matters by agreement without
`involving the Board. However, if the parties are unable to resolve their differences after
`thorough consultation, the Board is available to resolve outstanding issues.
`
`Best regards,
`
`2
`Exhibit 3001
`
`

`

`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`From: Fleming, Michael <MFleming@irell.com>
`Sent: Sunday, March 31, 2019 11:27 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Parmelee, Steve <sparmelee@wsgr.com>; Gerrard, Sonja <sgerrard@wsgr.com>; Rosato,
`Michael <mrosato@wsgr.com>; Wells, Maclain <MWells@irell.com>
`Subject: RE: IPR2018-00680 and IPR2018-00739
`
`Dear Board,
`
`Petitioner’s counsel is available for a conference call as follows:
`
`Monday, April 1st, from 2:30 PM to 5:00 PM Eastern (11:30 AM to 2:00 PM
`Pacific) or
`Tuesday, April 2nd, from 1:00 PM to 5:00 PM Eastern (10:00 AM to 2:00 PM
`Pacific).
`
`Many thanks
`
`Mike Fleming
`
`
`Michael R. Fleming
`Irell & Manella
`Attorney
`Phone Number: 310-203-7915
`
`
`
`From: Wells, Maclain <MWells@irell.com>
`Sent: Friday, March 29, 2019 10:11 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Parmelee, Steve <sparmelee@wsgr.com>; Gerrard, Sonja <sgerrard@wsgr.com>; Fleming,
`Michael <MFleming@irell.com>; Rosato, Michael <mrosato@wsgr.com>
`Subject: RE: IPR2018-00680 and IPR2018-00739
`
`Dear Trials,
`
`3
`Exhibit 3001
`
`

`

`
`On Friday morning, we met and conferred with counsel for Patent Owner on the issues below.
`Petitioner opposes the requested relief. Included in Patent Owner’s hearing request is improper
`argument regarding the issues to be addressed at the hearing. In accordance with the applicable
`rules, Petitioner will not reply to such arguments here.
`
`Respectfully submitted,
`C. Maclain Wells
`
`From: Rosato, Michael <mrosato@wsgr.com>
`Sent: Thursday, March 28, 2019 10:46 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Parmelee, Steve <sparmelee@wsgr.com>; Gerrard, Sonja <sgerrard@wsgr.com>; Wells, Maclain
`<MWells@irell.com>; Fleming, Michael <MFleming@irell.com>
`Subject: IPR2018-00680 and IPR2018-00739
`
`Dear Trials,
`
`Following Petitioner’s filings (Reply briefs, Opposition to Motion to Amend) on March 22, 2018,
`Patent Owner (Protiva Biotherapeutics) respectfully requests the following relief:
`Authorization to file a motion to strike in IPR2018-00680: The reply materials attempt to
`substitute a newly introduced reference (US 2010/0130588 submitted as EX1027) for the ‘069
`patent on which trial was instituted. Also, the reply materials (e.g., Reply at 21-23) submit
`belated new argument and claim charts in attempt to cure previously identified deficiencies
`for Ground 4. See Institution Decision (paper 13), 27-28.
`Authorization for an additional 1500 words in the Surreply in IPR2018-00739: This is
`necessary to identify improper new argument and theories, including the theory that certain
`cationic lipids are non-toxic (e.g., Reply 6-8), new argument regarding motivation to combine
`variables (e.g., Reply 11), and reference to various citations and lipid formulations not
`previously cited or relied upon (e.g., Reply 17-18).
`Extension of time for Due Date 3 in both cases: Protiva seeks a one week extension of DD3
`from April 10th, 2019 to April 17th, 2019. The extension is necessary to address, inter alia,
`three new declarations submitted by Petitioner and accommodate corresponding discovery.
`Parties have discussed the issue but were unable to reach agreement.
`
`
`Petitioner has indicated it opposes the requested relief. Counsel for both parties are mutually
`available for a conference call with the Board either Monday, April 1st or Tuesday, April 2nd between
`1pm and 5pm Eastern (10am-2pm Pacific) on either day.
`
`Respectfully submitted,
`
`Michael T Rosato (Lead Counsel for Protiva)
`Wilson Sonsini Goodrich & Rosati
`[o] 206.883.2529 | [f] 206.883.2699
`mrosato@wsgr.com
`
`4
`Exhibit 3001
`
`

`

`
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`5
`Exhibit 3001
`
`