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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`MODERNA THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`PROTIVA BIOTHERAPEUTICS, INC.,
`Patent Owner.
`
`
`___________________
`
`Case No. IPR2018-00739
`Patent No. 9,364,435
`___________________
`
`
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`
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`PETITIONER’S REQUEST FOR ORAL ARGUMENT
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`
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`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`10678816
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`
`Case IPR2018-00739
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`Patent No. 9,364,435
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`Pursuant to 37 C.F.R. § 42.70(a) and Scheduling Order, Paper 16,
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`Moderna Therapeutics, Inc. (“Petitioner”) respectfully requests an oral hearing
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`in this matter. Petitioner requests that this hearing be consolidated and held
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`concurrently with the oral hearing in IPR2018-00680. Petitioner further
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`requests (without any intent to waive consideration of any issue not requested)
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`60 minutes of total argument time per side to address the following issues (and
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`that separate time be allotted for IPR2018-00680), with the opportunity to
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`reserve a portion of that time for rebuttal:
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`1. The proper construction of claim elements in U.S. Patent No.
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`9,364,435;
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`2. The unpatentability of claims 1-20 of U.S. Patent No. 9,364,435
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`under §103 in view of the WO2005/007196 (“’196 PCT”) and
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`US2006/0134189 (“’189 publication”);
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`3. The unpatentability of claims 1-20 of U.S. Patent No. 9,364,435
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`under §103 in view of each of the ’196 PCT and the ’189
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`publication in view of Lin and/or Ahmad;
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`4. The unpatentability of claims 1-20 of U.S. Patent No. 9,364,435
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`under §102/§103 in view of US2006/0240554 (’544 publication);
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`5. The unpatentability of the substitute claim in Patent Owner’s
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`contingent motion to amend in light of the foregoing, and issues
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`raised in the briefing relating thereto;
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`- 1 -
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`Case IPR2018-00739
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`Patent No. 9,364,435
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`6. Respond to any issues specified by Patent Owner in its request for
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`oral argument or otherwise presented by the Patent Owner; and,
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`7. Any additional issues on which the Board seeks clarification.
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`Petitioner understands that oral argument in IPR2018-00739 (Scheduling
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`Order, Paper 16) and IPR2018-00680 (Scheduling Order, Paper 14) will be
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`held on June 6, 2019.
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`Petitioner requests the ability to use audio/visual equipment to display
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`demonstrative exhibits, including the use of a computer, projector, and screen
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`for a PowerPoint display. In accordance with the Trial Practice Guide (77 Fed.
`
`Reg. at 48768) and Section II.M of the Trial Practice Guide Update (2018),
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`Petitioner will contact the Board Trial Division paralegal to discuss this
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`request.
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`Dated: May 10, 2019
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`Respectfully submitted,
`
`
`
`/Michael R. Fleming/
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`Michael R. Fleming, Reg. No. 67,933
`Maclain Wells, Reg. No. 48,991
`
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
`
`Attorney for Petitioner
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`- 2 -
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`Case IPR2018-00739
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`Patent No. 9,364,435
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, pursuant to 37 CFR § 42.6(e), a
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`copy of the foregoing PETITIONER’S REQUEST FOR ORAL
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`ARGUMENT was served electronically via electronic mail on counsel for the
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`Patent Owner as follows:
`
`
`WILSON SONSINI GOODRICH & ROSATI
`Michael T. Rosato, Reg. No. 52,182
`mrosato@wsgr.com
`
`Steven W. Parmelee, Reg. No. 31,990
`sparmelee@wsgr.com
`
`Sonja R. Gerrard, Reg. No. 72,802
`sgerrard@wsgr.com
`
`Edward R. Reines
`Edward.reines@weil.com
`
`Derek C. Walter
`Derek.Walter@weil.com
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`
`
`By: Susan M. Langworthy
`Susan M. Langworthy
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`- 3 -
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`May 10, 2019
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