`Patent 8,633,194
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`APOTEX INC.
`Petitioner,
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`v.
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`UCB BIOPHARMA SPRL,
`Patent Owner.
`______________
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`Case IPR2019-00400
`Patent 8,633,194
`______________
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`PATENT OWNER’S
`OBJECTIONS TO PETITIONER’S DEMONSTRATIVES
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`IPR2019-00400
`Patent 8,633,194
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`Pursuant to the Board’s March 11, 2020 Order (Paper No. 41), Patent Owner
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`respectively submits notice of its objections to Petitioner’s Demonstratives:
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`Slides 12, 13, 30, and 33: These slides reference Exhibits 1031-1037 which
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`are subject to Patent Owner’s pending Motion to Exclude Evidence (Paper No. 44).
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`Slide 19: The third and fourth callouts mischaracterize Dr. Niazi’s deposition
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`testimony and Patent Owner’s Preliminary Response, respectively, as explained in
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`Patent Owner’s Sur-Reply (Paper No. 38). Id. at 5.
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`The third callout omits context from Patent Owner’s expert’s explanation that
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`the term “necessary amount” refers to an amount to perform a particular function,
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`not an absolute minimum. Id.
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`The fourth callout mischaracterizes Patent Owner’s summation of Petitioner’s
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`argument by implying that a Table heading is an admission by Patent Owner. Id.
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`Slide 32: This slide seeks to improperly incorporate argument presented only
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`in Petitioner’s expert declaration to imply that it was presented in the Petition.
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`Slide 35: The first callout is incomplete and therefore mischaracterizes Patent
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`Owner’s Complete Response as it omits the remainder of the footnote cited, which
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`explains how Applicant did not concede to the Examiner’s view of synergism.
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`The last callout is a mischaracterization of Patent Owner’s Preliminary
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`Response. As explained in Patent Owner’s Sur-Reply, the callout is Patent Owner’s
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`summation of the Examiner’s prosecution statements, and Petitioner portrays it as
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`1
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`an admission by Patent Owner. See id. at 18.
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`IPR2019-00400
`Patent 8,633,194
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`Patent Owner submits that it is not necessary to have a pre-hearing call or
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`additional time at the hearing to address Patent Owner’s objections.
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`Dated: April 17, 2020
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`Respectfully submitted,
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`FENWICK & WEST LLP
`/Robert E. Counihan/ (electronically signed)
`James S. Trainor, Reg. No. 52,297
`Lead Counsel
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`Robert E. Counihan, Reg. No. 61,382
`Back-Up Counsel
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`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 430-2600
`jtrainor@fenwick.com
`rcounihan@fenwick.com
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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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`2
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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 April 17, 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: April 17, 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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