`Patent 8,633,194
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APOTEX INC.
`Petitioner,
`
`v.
`
`UCB BIOPHARMA SPRL,
`Patent Owner.
`______________
`
`Case IPR2019-00400
`Patent 8,633,194
`______________
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S OBJECTIONS TO
`EVIDENCE
`
`
`
`
`IPR2019-00400
`Patent 8,633,194
`
`Patent Owner UCB Biopharma Sprl (“Patent Owner”) submits the following
`
`in response to Petitioner Apotex Inc.’s (“Apotex”) Objections to Evidence (Paper
`
`23), dated and served on October 21, 2019. Patent Owner reserves all rights to
`
`respond to Petitioner’s objections to Exhibits not specifically referenced below and
`
`to respond further to Petitioner’s objections to Exhibits that are referenced below.
`
`Section 42.64(b)(1) requires that evidentiary objections “must identify the
`
`grounds for the objection with sufficient particularity to allow correction in the form
`
`of supplemental evidence.” 37 C.F.R. § 42.64(b)(1); 77 Fed. Reg. 48767 (Aug. 14,
`
`2012). Petitioner’s objections, including its objections to Exhibits 2030 and 2031
`
`under Federal Rules of Evidence 801 and/or 802, contain conclusory references to
`
`the Federal Rules of Evidence, and do not provide the required particularity.
`
`All of Patent Owner’s Exhibits were cited by Patent Owner in its Response or
`
`by Patent Owner’s declarant, Dr. Sarfaraz K. Niazi, in his supporting declaration.
`
`As explained therein, none lack relevance under Federal Rules of Evidence 402 or
`
`403. Petitioner’s relevance objections to Exhibits 2024, 2030, 2031 and paragraphs
`
`6, 71-73, 191-193, and 196-197 of the Declaration of Dr. Sarfaraz K. Niazi (Exhibit
`
`2034) mischaracterize the purpose of these Exhibits. Exhibits 2030 and 2031, and
`
`the related portions of Dr. Niazi’s declaration, demonstrate the difficulty of
`
`predicting antibacterial properties of chemical compounds, even after the priority
`
`date. Similarly, Exhibit 2024, and the related portions of Dr. Niazi’s declaration, are
`
`
`
`1
`
`
`
`IPR2019-00400
`Patent 8,633,194
`
`presented to inform that preservatives are still today generally classified into six
`
`categories. See EX2034 at ¶ 56. Petitioner’s expert, Dr. Laskar, previously agreed
`
`that these categories of preservatives were used in 2004. See EX2034 at ¶ 56;
`
`EX2010 43:2-44:1. Exhibits 2024, 2030, and 2031 were not presented as prior art.
`
`Patent Owner reserves all rights to respond to any further explanations
`
`Petitioner is allowed to provide regarding its evidentiary objections.
`
`
`Dated: November 4, 2019
`
`
`
`Respectfully submitted,
`
`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
`
`Erica R. Sutter, Reg. No. 77,450
`Back-Up Counsel
`
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
`
`2
`
`
`
`
`IPR2019-00400
`Patent 8,633,194
`
`
`esutter@fenwick.com
`
`Counsel for Patent Owner UCB Biopharma
`Sprl
`
`
`
`
`
`3
`
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2019-00400
`Patent 8,633,194
`
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on November 4, 2019,
`
`the foregoing document is being served by filing this document through the Patent
`
`Trial and Appeal Board End to End System, as well as by delivering a copy via
`
`electronic mail upon the following counsel of record for the Petitioner:
`
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`joe.janusz@kattenlaw.com
`lance.soderstrom@kattenlaw.com
`
`
`Date: November 4, 2019
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Robert E. Counihan (electronically
`signed)
`Robert E. Counihan
`Reg. No. 61,382
`Phone: (212) 430-2600
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
