From:
`To:
`Cc:
`Subject:
`Date:
`
`Greb, Emily J. (Perkins Coie)
`Feldstein, Mark; White, Brandon (Perkins Coie); Tecfidera@perkinscoie.com
`Sommers, Erin; DeRoo, Pier; McCurdy, Barbara
`RE: Mylan v. Biogen, IPR2018-01403
`Monday, May 6, 2019 10:38:38 AM
`
`EXTERNAL Email:
`
`Mark,
`
` I
`
` address each of your questions in turn. First, with respect to Biogen’s request that Mylan seek a
`subpoena for Mr. Butler, given that Biogen is the party seeking to depose Mr. Butler, it is our view
`that Biogen should be the party responsible for seeking any subpoena to compel Mr. Butler to
`testify, not Mylan. Second, with respect to your request for Mylan’s position on a motion to exclude,
`it is our understanding that Biogen is permitted, under the scheduling order, to file any motion to
`exclude of its choosing on Due Date 4. To the extent Biogen is seeking to file an additional or
`different motion to exclude, Mylan opposes such a request and moreover will not agree to withdraw
`his affidavit. Third, while Biogen’s request below regarding a motion to compel is unclear, to the
`extent Biogen is seeking Mylan’s position regarding a motion to compel a deposition of Mr. Butler,
`Mylan opposes that request as well. Affidavits from Mr. Butler have been routinely accepted by the
`Board in inter partes review proceedings without any testimony from Mr. Butler and Biogen has not
`explained any specific need for it in this case.
`
`Regards,
`Emily
`
`
`Emily Greb | Perkins Coie LLP
`COUNSEL
`33 East Main Street Suite 201
`Madison, WI 53703-3095
`D. +1.608.663.7494
`F. +1.608.283.4494
`E. EGreb@perkinscoie.com
`
`From: Feldstein, Mark <mark.feldstein@finnegan.com>
`Sent: Wednesday, May 1, 2019 9:38 AM
`To: White, Brandon (WDC) <BMWhite@perkinscoie.com>; *Tecfidera
`<Tecfidera@perkinscoie.com>; Greb, Emily J. (MSN) <EGreb@perkinscoie.com>
`Cc: Sommers, Erin <Erin.Sommers@finnegan.com>; DeRoo, Pier <Pier.DeRoo@finnegan.com>;
`McCurdy, Barbara <barbara.mccurdy@finnegan.com>
`Subject: RE: Mylan v. Biogen, IPR2018-01403
`
`Counsel,
`
`We are writing to follow up on issues discussed with Emily Greb at the April 26, 2019, Corboy
`deposition.
`
`We had asked if Mylan would agree to seek a subpoena to compel Mr. Butler’s testimony, as we
`
`Biogen Exhibit 2126
`Mylan v. Biogen
`IPR2018-01403
`
`Page 1 of 4
`
`

`

`understand Mylan otherwise cannot make him available. We also asked, to the extent Mylan is not
`willing to seek a subpoena for Mr. Butler, whether Mylan would agree to withdraw his declaration or
`consent to Biogen filing a motion to exclude that declaration. Additionally, we would like Mylan’s
`position on whether it would oppose Biogen filing a motion to compel and/or exclude in regard to
`Mr. Butler’s declaration and cross-examination.
`
`Please advise at your earliest convenience so that we may respond to the Board’s April 23rd
`message and avoid any delays that could affect the schedule.
`
`Regards,
`
`
`Mark Feldstein
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.4092 | fax: 202.408.4400 | mark.feldstein@finnegan.com | www.finnegan.com
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Tuesday, April 23, 2019 12:52 PM
`To: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>
`Cc: Greb, Emily J. (Perkins Coie) <EGreb@perkinscoie.com>; Sommers, Erin
`<Erin.Sommers@finnegan.com>; Feldstein, Mark <mark.feldstein@finnegan.com>; DeRoo, Pier
`<Pier.DeRoo@finnegan.com>; McCurdy, Barbara <barbara.mccurdy@finnegan.com>;
`Tecfidera@perkinscoie.com
`Subject: RE: Mylan v. Biogen, IPR2018-01403
`
`EXTERNAL Email:
`
`Counsel:
`
`To the extent Patent Owner seeks authorization to file a Motion for Authorization to Compel
`Testimony of Mr. Christopher Butler under 37 C.F.R. § 42.52(a), the panel requests that the
`parties confer on the matter and indicate whether Petitioner will oppose the motion.
`
`To the extent Patent Owner seeks to address the proper weight the Board should give to the
`Christopher Butler Declaration (Ex. 1012), it may do so in its Patent Owner Response and/or
`Sur-Reply.
`
`Striking evidence subject to routine discovery is an exceptional remedy that the Board expects
`will be granted rarely. Nonetheless, if Patent Owner seeks authorization to file a Motion to
`Strike Ex. 1012, the panel requests that the parties confer on the matter and indicate whether
`Petitioner will oppose the motion.
`
`Page 2 of 4
`
`

`

`
`Best regards,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`
`From: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>
`Sent: Tuesday, April 23, 2019 7:43 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Greb, Emily J. (Perkins Coie) <EGreb@perkinscoie.com>; Sommers, Erin
`<Erin.Sommers@finnegan.com>; Feldstein, Mark <mark.feldstein@finnegan.com>; DeRoo, Pier
`<Pier.DeRoo@finnegan.com>; McCurdy, Barbara <barbara.mccurdy@finnegan.com>;
`Tecfidera@perkinscoie.com
`Subject: RE: Mylan v. Biogen, IPR2018-01403
`
`Dear Board,
`
`Counsel for Mylan is available except on Friday, April 26 to the extent a teleconference is required.
`We are also generally available next week.
`
`Respectfully,
`
`Brandon White
`Counsel for Petitioner
`
`Brandon White | Perkins Coie LLP
`PARTNER
`700 Thirteenth Street, N.W. Suite 600
`Washington, DC 20005-3960
`D. +1.202.654.6206
`F. +1.202.654.9681
`E. BMWhite@perkinscoie.com
`
`From: McCurdy, Barbara <barbara.mccurdy@finnegan.com>
`Sent: Monday, April 22, 2019 8:52 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: White, Brandon (WDC) <BMWhite@perkinscoie.com>; Greb, Emily J. (MSN)
`<EGreb@perkinscoie.com>; Sommers, Erin <Erin.Sommers@finnegan.com>; Feldstein, Mark
`<mark.feldstein@finnegan.com>; DeRoo, Pier <Pier.DeRoo@finnegan.com>
`Subject: Mylan v. Biogen, IPR2018-01403
`
`To the Honorable Board:
`
`Patent Owner Biogen writes to renew its request to compel the cross-examination testimony of Mr.
`Christopher Butler, a declarant relied upon by petitioner Mylan in Exhibit 1012. Today, Mylan
`
`Page 3 of 4
`
`

`

`represented to Biogen: “Mylan cannot make Mr. Butler available.”
`
`The Board authorized Patent Owner to renew this request during a conference call with the parties
`on April 12, 2019. See Biogen Ex. 2041, at 35-36 (Transcript of April 12, 2019, teleconference).
`Biogen wishes to discuss with the Board the process for compelling the cross-examination of Mr.
`Butler, striking his declaration, or according it no weight.
`
`Biogen is generally available for a call with the Board this week, other than Wednesday afternoon.
`We have inquired of Mylan’s availability and have not received a response.
`
`Sincerely,
`
`Barbara C. McCurdy
`Reg. No. 32,120
`
`Counsel for Patent Owner Biogen MA Inc.
`
`Barbara Clarke McCurdy
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`+1 202 408 4047 | fax +1 202 408 4400 | barbara.mccurdy@finnegan.com | www.finnegan.com
`
`
`
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`Page 4 of 4
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`