From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Michelle O"Brien; LSilva@foley.com; Trials
`BOST-F-UMass327IPR@foley.com; BOST-F-UMass513IPR@foley.com; MLowrie@foley.com; LShine@foley.com;
`TJ Murphy; Joanna Cohn; 327IPR; SMaebius@foley.com
`RE: IPR Nos. 2018-00778, 2018-00779
`Wednesday, August 29, 2018 10:46:13 AM
`
`Counsel:
`
`Petitioner’s request for leave to file a Reply to Patent Owner’s Preliminary Response is denied. The panel
`does not require further briefing, and no conference call is necessary at this time. Counsel for Patent
`Owner is cautioned against submitting substantive arguments by email. See
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/patent-trial-
`and-appeal-board-end (stating the parties should not use the Trials@uspto.gov email address for
`substantive communications to the Board).
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Michelle O'Brien <mobrien@marburylaw.com>
`Sent: Tuesday, August 28, 2018 12:49 PM
`To: LSilva@foley.com; Trials <Trials@USPTO.GOV>
`Cc: BOST-F-UMass327IPR@foley.com; BOST-F-UMass513IPR@foley.com; MLowrie@foley.com;
`LShine@foley.com; TJ Murphy <TJMurphy@MARBURYLAW.COM>; Joanna Cohn
`<JCohn@MARBURYLAW.COM>; 327IPR <327IPR@MARBURYLAW.COM>; SMaebius@foley.com
`Subject: RE: IPR Nos. 2018-00778, 2018-00779
`
`Petitioner is writing in response to Patent Owner’s email. Petitioner has been conferring with Patent
`Owner regarding the issues raised in the email below and was going to seek a short reply to address
`these issues, if necessary. Given Patent Owner’s improper email, which includes argument,
`Petitioner would like an opportunity to be heard on at least the second issue so the record is
`complete, should the Board desire. Petitioner is available for a call with the Board at the Board’s
`convenience.
`
`Kind regards,
`Michelle E. O’Brien
`Reg. No. 46,203
`Lead Counsel for Petitioner
`
`
`From: LSilva@foley.com [mailto:LSilva@foley.com]
`Sent: Tuesday, August 28, 2018 10:47 AM
`To: 'trials@uspto.gov'
`
`

`

`Cc: BOST-F-UMass327IPR@foley.com; BOST-F-UMass513IPR@foley.com; MLowrie@foley.com;
`LSilva@foley.com; LShine@foley.com; TJ Murphy; Joanna Cohn; 327IPR; Michelle O'Brien;
`SMaebius@foley.com
`Subject: IPR Nos. 2018-00778, 2018-00779
`
`Dear Board:
`
`On Sunday, August 19, 2018, the Patent Owner received the attached email from the Petitioner,
`asserting that Patent Owner made two misstatements in its Preliminary Responses in the above-
`referenced IPRs, and requesting that the Patent Owner contact the Board. The first alleged
`misstatement concerns whether the Petitioner has brought invalidity counterclaims in the co-
`pending litigation between the parties. The second alleged misstatement is that Patent Owner did
`not disclose in its Preliminary Responses certain prosecution arguments made in 2005 (years after
`the patents in these IPRs issued).
`
`Regarding the first, The Patent Owner did state in its Preliminary Responses that L’Oreal has filed its
`invalidity counterclaims in the co-pending litigation. That statement was an error. L’Oreal has not yet
`answered the Complaint in that case. However, the error was inadvertent, and the point being made
`in the Preliminary Responses was that all of the arguments Petitioner made in Petitions can be made
`in the co-pending litigation. (See IPR2018-00778 Paper 7 at 52; IPR2018-00779 Paper 7 at 52.) That
`is true.
`
`Also, the statement does not concern any invalidity argument being made. It appears in the
`sovereign immunity sections at the end of the Preliminary Responses where the Patent Owner is
`explaining that it would intend to move to dismiss in the future if the trials are instituted. (See id.)
`Nonetheless, although the statement is not material to any issue before the Board, Patent Owner is
`sending this email to identify the error.
`
`The other issue raised in Petitioner’s email is already before the Board. Petitioner claims in its email
`that the Patent Owner argued during the prosecution of a different patent in 2005 that prior art
`“compositions” were outside of the claimed concentration range. But, in both Petitions, Petitioner
`argued that during prosecution (in 2001) the Patent Owner distinguished prior art based on the
`concentration in “compositions,” and the Patent Owner explained in the Preliminary Responses why
`this did not support Petitioner’s proposed claim construction. (See, e.g., IPR2018-00778 Paper 2 at
`35-36 (“Thus, the applicant argued that the pending claims were patentable over Hartzshtark
`because the concentration of adenosine in the Hartzshtark compositions were higher than the
`concentration recited in the claims.”); Id. Paper 7 at 18 (“[T]o the extent that the applicant could
`have distinguished the reference based on epidermal versus dermal layer as well as concentration,
`the prosecution as a whole nevertheless strongly supports giving dermal its ordinary meaning.”).)
`
`The Petitioner did not cite this prosecution from 2005, presumably because the issue was already
`before the Board. Even so, the Preliminary Responses address the argument, and provide many
`other reasons why the Petitioner’s proposed claim construction is contrary to the plain language of
`the claims, and it is inconsistent with the specification and the prosecution history.
`
`It appears that the Petitioner is seeking to advance additional arguments outside of its Petitions, and
`
`

`

`possibly to secure a telephone conference to that end. The Patent Owner believes that neither of
`the above issues merited the Board’s attention, but has raised them here in an effort to address the
`Petitioner’s email with minimal inconvenience to the Board or disruption to these proceedings. The
`Patent Owner does not believe that additional argument would be proper, or that a telephone
`conference would be a productive use of the Board’s time.
`
`Sincerely,
`
`Lucas I. Silva
`
`Counsel for Patent Owner
`
`
`Lucas I. Silva
`
`Foley & Lardner LLP
`111 Huntington Avenue | Suite 2500
`Boston, MA 02199-7610
`P 617.342.4021
`
`View My Bio
`Visit Foley.com
`
`
`
`
`
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`

`

`Silva, Lucas I.
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Michelle O'Brien <mobrien@marburylaw.com>
`Sunday, August 19, 2018 6:04 PM
`Lowrie, Matt; Maebius, Steve; Silva, Lucas I.; BOST - F - UMass 513 IPR
`Linda Kenah; TJ Murphy
`IPR2018-00778 and IPR2018-00779
`
`Counsel,
`
`Our review of Patent Owner’s Preliminary Response filed in both IPR2018-00778 and IPR2018-00779 (“POPRs”) reveals
`misstatements which Patent Owner needs to bring to the attention of the Board. Specifically, Patent Owner alleged that
`“Petitioner has brought invalidity counterclaims in the co-pending litigation, and all of the arguments made in its
`Petition could be made in that litigation.” In fact, as you know, Petitioner has not served any invalidity contentions or
`counterclaims in the co-pending litigation. Accordingly, we expect that you will notify the Board of the misstatements
`immediately.
`
`Furthermore, your duty of candor (37 C.F.R. §42.11(a)) requires you to bring to the Board’s attention positions that were
`argued by Patent Owner in continuation applications claiming priority to the ‘327 and ‘513 patents, which are contrary
`to the positions Patent Owner now takes in the POPRs. For example, in U.S. Patent Application No. 10/680,370, Patent
`Owner amended the claims to include the limitation “wherein the adenosine analog concentration applied to the dermal
`cells is about 10-4 M to 10-7” and argued that the concentration of ATP in a prior art composition (the ‘649 patent) was
`outside the claimed concentration range of adenosine analog “applied to the dermal cells.” (See Amendment dated
`June 13, 2005, page 7.) We note that this position is contrary to Patent Owner’s position in the POPRs that the claimed
`concentration is the concentration that reaches the dermal cells, rather than the concentration in the composition. Our
`review of the POPRs reveals that these contrary positions were not identified. As such, your duty of candor requires
`that you bring this inconsistency to the Board’s attention at this time.
`
`Regards,
`Michelle
`
`
`Michelle E. O'Brien, Esq.
`The Marbury Law Group, PLLC
`11800 Sunrise Valley Drive
`15th Floor
`Reston, VA 20191-5302
`
`(703) 391-2900
`(571) 267-7000 (direct)
`(703) 391-2901 (fax)
`mobrien@marburylaw.com
`
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