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`Filed: October 7, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`MYLAN PHARMACEUTICALS INC.,
`SAWAI USA, INC., AND
`SAWAI PHARMACEUTICAL CO., LTD.
`Petitioner,
`
`
`v.
`
`
`BIOGEN MA INC.,
`Patent Owner.
`____________________________________________
`
`IPR2018-014031
`Patent No. 8,399,514
`____________________________________________
`
`
`PATENT OWNER’S REQUEST FOR ORAL HEARING
`
`
`1 Case IPR2019-00789 has been joined with this proceeding.
`
`
`
`U.S. Patent No. 8,399,514
`IPR2018-01403
`
`Patent Owner Biogen MA Inc. respectfully requests oral argument in
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`IPR2018-01403 under 37 C.F.R. § 42.70(a) on all of the grounds instituted in this
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`proceeding, including the following:
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` Patentability of claims 1-20 of U.S. Patent No. 8,399,514 under
`
`35 U.S.C. § 103(a) over the January Press Release (Ex. 1005) in view
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`of Schimrigk 2004 (Ex. 1006) (Ground 1);
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` Patentability of claims 1-20 of U.S. Patent No. 8,399,514 under
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`35 U.S.C. § 103(a) over Kappos 2006 (Ex. 1007) in view of Schimrigk
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`2004 (Ex. 1006) (Ground 2);
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` Patentability of claims 1-20 of U.S. Patent No. 8,399,514 under
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`35 U.S.C. § 103(a) over Kappos 2006 (Ex. 1007) in view of WO ’342
`
`(Ex. 1008) (Ground 3);
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` Patentability of claims 1-20 of U.S. Patent No. 8,399,514 under
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`35 U.S.C. § 103(a) over Kappos 2006 (Ex. 1007) in view of Joshi ’999
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`(Ex. 1009), Clinical Trials (Ex. 1010), and ICH Guidelines (Ex. 1011)
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`(Ground 4);
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` Any issues raised by the grant of the Motion to Join Sawai and the
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`underlying institution of Sawai’s Petition, the joinder of IPR2019-
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`00789 to this proceeding, Patent Owner’s related request for rehearing,
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`and any subsequent decisions regarding the request for rehearing; and
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`1
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`
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`U.S. Patent No. 8,399,514
`IPR2018-01403
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` Any additional issues raised by the parties in their papers, including but
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`not limited to issues raised by Petitioner in its Reply, a request for oral
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`argument, a motion to exclude (if any), or any other motion or paper
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`filed by Petitioner before oral argument.
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`Patent Owner requests one hour and fifteen minutes of time to address these
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`issues, including time for Patent Owner sur-rebuttal. To the extent the Board
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`schedules a different amount of time, Patent Owner requests an amount of time equal
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`to that granted to Petitioner. Patent Owner also requests the oral hearing be held at
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`the USPTO Headquarters in Alexandria, Virginia.
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`Biogen requests the ability to use audio-visual equipment to display
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`demonstrative exhibits, including a projector and screen to display PowerPoint
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`slides. If this request for oral hearing is granted, Biogen will direct its requests for
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`audio-visual equipment to Trials@uspto.gov.
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`Patent Owner also requests that ten spaces be reserved at the oral hearing to
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`accommodate counsel and corporate representatives. Patent Owner also requests
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`that two attorneys be allowed to use computers at the hearing.
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`
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`2
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`Dated: October 7, 2019
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`
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`
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`U.S. Patent No. 8,399,514
`IPR2018-01403
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`
`
`By: /Barbara C. McCurdy/
`Barbara C. McCurdy, Reg. No. 32,120
`Finnegan, Henderson, Farabow, Garrett
` & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`(202) 408-4047
`
`Counsel for Patent Owner Biogen MA Inc.
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`3
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`U.S. Patent No. 8,399,514
`IPR2018-01403
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Patent Owner’s
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`
`
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`Request for Oral Hearing was served electronically via the PTAB electronic filing
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`system and via email on October 7, 2019, in its entirety, on the following:
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`Brandon M. White
`Shannon M. Bloodworth
`Michael A. Chajon
`Maria A. Stubbings
`Perkins Coie LLP
`700 13th St., NW, Suite 600
`Washington, D.C. 20005
`Telephone: (202) 654-6206
`Email: bmwhite@perkinscoie.com
`Email: sbloodworth@perkinscoie.com
`Email: mchajon@perkinscoie.com
`Email: mstubbings@perkinscoie.com
`
`David L. Anstaett
`Emily J. Greb
`Perkins Coie LLP
`33 East Main St., Suite 201
`Madison, WI 53703
`Telephone: (608) 663-7494
`Email: egreb@perkinscoie.com
`Email: danstaett@perkinscoie.com
`
`Courtney M. Prochnow
`Perkins Coie LLP
`633 W. 5th St., Suite 5850
`Los Angeles, CA 90071
`Telephone: (310) 788-3284
`Email: cprochnow@perkinscoie.com
`
`
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`
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`U.S. Patent No. 8,399,514
`IPR2018-01403
`
`Brian Sodikoff
`Katten Muchin Rosenman LLP
`525 West Monroe Street
`Chicago, IL 60661-3693
`Telephone: (312) 902-5462
`E-mail: brian.sodikoff@kattenlaw.com
`
`Christopher B. Ferenc
`Katten Muchin Rosenman LLP
`2900 K Street NW
`North Tower - Suite 200
`Washington, DC 20007
`Telephone: (202) 625-3647
`E-mail: Christopher.ferenc@kattenlaw.com
`
`Petitioner has agreed to electronic service.
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`
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`Dated: October 7, 2019
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`
`
`
`
`By: / Catherine A. Sadler /
`Catherine A. Sadler
`Case Manager
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`
`
`
`
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