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`IPR2019-00400
`Patent 8,633,194
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`APOTEX INC.
`Petitioner,
`
`v.
`
`UCB BIOPHARMA SPRL,
`Patent Owner.
`______________
`
`Case IPR2019-00400
`Patent 8,633,194
`______________
`
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`UNDER 37 C.F.R. § 42.70(a)
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`IPR2019-00400
`Patent 8,633,194
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`Pursuant to 37 C.F.R. § 42.70(a) and the Board’s October 7, 2020 Revised
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`
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`Scheduling Order (Paper 21), Patent Owner UCB Biopharma Sprl (“Patent Owner”)
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`respectfully requests oral argument in IPR2019-00400, which Patent Owner
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`understands is currently scheduled for April 22, 2020.
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`Pursuant to 37 C.F.R. § 42.70(a), Patent Owner respectfully requests up to
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`thirty (30) minutes of oral argument per side on all issues raised. These issues
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`include, but are not limited to, the following:
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`1.
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`2.
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`The scope and content of the prior art.
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`The patentability of claims 1-11 of U.S. Patent No. 8,633,194 in view
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`of Ground 1: The combination of WO 2004/050094 (“WO ’094”) in
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`view of the Handbook of Pharmaceutical Excipients, Third Edition
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`(the “Handbook”) under 35 U.S.C. § 103.
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`3.
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`The patentability of claims 1-11 of U.S. Patent No. 8,633,194 in view
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`of Ground 2: The combination of European Patent Application No.
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`0605203 A2 (“EP ’203”) in view of the Handbook and U.S. Patent No.
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`5,698,558 (“the ’558 patent”) under 35 U.S.C. § 103.
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`4.
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`5.
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`The issues raised in Petitioner’s Request for Oral Argument (Paper 39).
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`Any issues raised by the Petitioner at the oral argument.
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`1
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`IPR2019-00400
`Patent 8,633,194
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`Any other issues raised in papers filed in this proceeding, including
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`6.
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`issues to be raised in papers not yet filed or filed concurrently, such as
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`Motions to Exclude or Strike.
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`7.
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`Additional issues on which the Board seeks information or clarification.
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`Subject to the Board’s approval, Patent Owner intends to use demonstrative
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`exhibits during the oral argument. Such demonstrative exhibits will be served in due
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`course according to 37 C.F.R. § 42.70(b). Patent Owner also requests the use of
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`audio-visual equipment during its presentation, including a computer, projector, and
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`screen on which to display demonstrative exhibits. Patent Owner does not anticipate
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`that more than five (5) individuals will attend the argument on its behalf.
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`Dated: March 5, 2020
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`Respectfully submitted,
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`FENWICK & WEST LLP
`/s/ Robert E. Counihan (electronically
`signed)
`James S. Trainor, Reg. No. 52,297
`Lead Counsel
`
`Robert E. Counihan, Reg. No. 61,382
`Back-Up Counsel
`
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 430-2600
`jtrainor@fenwick.com
`rcounihan@fenwick.com
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`2
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`IPR2019-00400
`Patent 8,633,194
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`
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`Erica R. Sutter, Reg. No. 77,450
`Back-Up Counsel
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`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
`esutter@fenwick.com
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`Counsel for Patent Owner UCB Biopharma
`Sprl
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`3
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`CERTIFICATE OF SERVICE
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`IPR2019-00400
`Patent 8,633,194
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on March 5, 2020, the
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`foregoing document is being served by filing this document through the Patent Trial
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`and Appeal Board End to End System, as well as by delivering a copy via electronic
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`mail upon the following counsel of record for the Petitioner:
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`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`joe.janusz@kattenlaw.com
`lance.soderstrom@kattenlaw.com
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`Date: March 5, 2020
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`Respectfully submitted,
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`/Robert E. Counihan/
`Robert E. Counihan
`Reg. No. 61,382
`Phone: (212) 430-2600
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`
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`4
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