Ferenc, Christopher B.
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Brandon and Emily,
`
`Ferenc, Christopher B.
`Monday, April 8, 2019 10:01 AM
`White, Brandon (Perkins Coie); Greb, Emily J. (Perkins Coie)
`Sodikoff, Brian; USR-CHI DMF; Tecfidera@perkinscoie.com
`RE: IPR2019-00789
`
`Further to our numerous e-mails and voice mails, Sawai would like to know whether Mylan will agree to the expert
`sharing proposal outlined below. As you know, Biogen has opposed Sawai’s Motion for Joinder. Sawai will need to know
`Mylan’s position regarding the sharing of experts for its response. Thus, we kindly ask you to provide Mylan’s response
`no later than COB on Wednesday, April 10, 2019.
`
`Absent any response from Mylan, we will reach out the Board later this week requesting a conference with the panel in
`your IPR, and during that call we will request the Board Order Mylan to provide its response.
`
`Best regards,
`
`Chris
`
`Christopher B. Ferenc
`Associate
`Katten Muchin Rosenman LLP
`2900 K Street NW, North Tower - Suite 200 / Washington, DC 20007-5118
`p / +1.202.625.3647 f / +1.202.339.6044
`christopher.ferenc@kattenlaw.com / www.kattenlaw.com
`From: Ferenc, Christopher B. <christopher.ferenc@kattenlaw.com>
`Sent: Thursday, March 21, 2019 1:27 PM
`To: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>; Greb, Emily J. (Perkins Coie)
`<EGreb@perkinscoie.com>
`Cc: Sodikoff, Brian <brian.sodikoff@kattenlaw.com>; USR-CHI DMF <USR-CHIDMF@kattenlaw.com>;
`Tecfidera@perkinscoie.com
`Subject: RE: IPR2019-00789
`
`Brandon,
`
`Thank you for your e-mail. We have not spoken to Biogen yet regarding Sawai’s IPR. Part of the reason we have been
`trying to get a hold of you and your team for the past two weeks is to get Sawai and Mylan on the same page regarding
`experts before talking with Biogen. Given the upcoming deadlines to file oppositions to our motion for joinder, we
`cannot further delay that global meeting. Accordingly, we will be sending out an e-mail to all counsel later today to
`arrange a meet and confer next week to discuss any issues relating to Sawai’s motion. We think it would be best if Sawai
`and Mylan could represent during that call they have reached an agreement about sharing experts. As you note below,
`given the similarity between each party’s petition and accompanying declarations, this approach seems to make the
`most sense.
`
`If you have any questions, or would like to discuss these issues prior to the meet and confer next week, please feel free
`to reach out to us at your convenience.
`
`1
`
`Sawai (IPR2019-00789) Ex. 1061, p. 001
`
`

`

`Best regards,
`
`Chris
`
`Christopher B. Ferenc
`Associate
`Katten Muchin Rosenman LLP
`2900 K Street NW, North Tower - Suite 200 / Washington, DC 20007-5118
`p / +1.202.625.3647 f / +1.202.339.6044
`christopher.ferenc@kattenlaw.com / www.kattenlaw.com
`From: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>
`Sent: Thursday, March 21, 2019 12:56 PM
`To: Ferenc, Christopher B. <christopher.ferenc@kattenlaw.com>; Greb, Emily J. (Perkins Coie)
`<EGreb@perkinscoie.com>
`Cc: Sodikoff, Brian <brian.sodikoff@kattenlaw.com>; USR-CHI DMF <USR-CHIDMF@kattenlaw.com>;
`Tecfidera@perkinscoie.com
`Subject: RE: IPR2019-00789
`
`Chris and Brian,
`
`I have been in depositions this week and have not had a chance to get back to you before today. At the outset I note
`that Mylan was surprised this issue was not addressed before Sawai filed its IPR copying Mylan’s petition and expert
`declarations.
`
`Mylan would like to know whether Biogen has taken a position as to whether it will either waive its preliminary response
`or agree to expedite it? That will impact Mylan’s decision making regarding an agreement on Sawai’s use of Mylan’s
`experts.
`
`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: Ferenc, Christopher B. <christopher.ferenc@kattenlaw.com>
`Sent: Tuesday, March 19, 2019 6:20 PM
`To: White, Brandon (WDC) <BMWhite@perkinscoie.com>; Greb, Emily J. (MSN) <EGreb@perkinscoie.com>
`Cc: Sodikoff, Brian <brian.sodikoff@kattenlaw.com>; USR-CHI DMF <USR-CHIDMF@kattenlaw.com>
`Subject: RE: IPR2019-00789
`
`Emily & Brandon,
`
`I am following up on my e-mail from last week. Please let us know if Mylan will agree to the expert sharing proposal
`outlined below. We will be reaching out to all counsel in the IPR on Thursday morning to schedule a meet and confer
`early next week to discuss our motion for joinder.
`
`Best regards,
`
`Chris
`
`Christopher B. Ferenc
`Associate
`Katten Muchin Rosenman LLP
`
`2
`
`Sawai (IPR2019-00789) Ex. 1061, p. 002
`
`

`

`2900 K Street NW, North Tower - Suite 200 / Washington, DC 20007-5118
`p / +1.202.625.3647 f / +1.202.339.6044
`christopher.ferenc@kattenlaw.com / www.kattenlaw.com
`From: Ferenc, Christopher B.
`Sent: Tuesday, March 12, 2019 2:57 PM
`To: 'BMWhite@perkinscoie.com' <BMWhite@perkinscoie.com>; 'egreb@perkinscoie.com' <egreb@perkinscoie.com>
`Cc: Sodikoff, Brian <brian.sodikoff@kattenlaw.com>; USR-CHI DMF <USR-CHIDMF@kattenlaw.com>
`Subject: RE: IPR2019-00789
`
`Emily,
`
`Thank you for your time today. After you have had a chance to speak with your team, please let us know your thoughts
`on the e-mail below.
`
`Best regards,
`
`Chris
`
`Christopher B. Ferenc
`Associate
`Katten Muchin Rosenman LLP
`2900 K Street NW, North Tower - Suite 200 / Washington, DC 20007-5118
`p / +1.202.625.3647 f / +1.202.339.6044
`christopher.ferenc@kattenlaw.com / www.kattenlaw.com
`From: Ferenc, Christopher B.
`Sent: Wednesday, March 6, 2019 4:34 PM
`To: 'BMWhite@perkinscoie.com' <BMWhite@perkinscoie.com>; 'egreb@perkinscoie.com' <egreb@perkinscoie.com>
`Cc: Sodikoff, Brian <brian.sodikoff@kattenlaw.com>; USR-CHI DMF <USR-CHIDMF@kattenlaw.com>
`Subject: IPR2019-00789
`
`Brandon and Emily,
`
`I hope this e-mail finds you well. In view of Sawai USA, Inc.’s and Sawai Pharmaceutical Co., Ltd.’s Inter Partes Review of
`claims 1-20 of U.S. Patent No. 8,399,514 (IPR 2019-00789) and its Motion for Joinder with IPR2018-01403, please let
`Brian and I know when you are available for a conference call.
`
`During any such call, Petitioner Sawai would like to know whether Petitioner Mylan will allow Petitioner Sawai to directly
`rely on your declarations of Dr. Corboy, Dr. Benet, Ms. Rock, and Dr. McKeague. As explained in Sawai’s joinder motion,
`if Petitioner Mylan allows Sawai to retain Mylan’s declarants, then Sawai will withdraw its declarants. As an incentive,
`Petitioner Sawai is willing to share in the costs of retaining your declarants. During any such call, Petitioner Sawai would
`also like to know if Petitioner Mylan has any other objections to Petitioner Sawai’s joinder motion.
`
`Best regards,
`
`Chris
`
`Christopher B. Ferenc
`Associate
`Katten Muchin Rosenman LLP
`2900 K Street NW, North Tower - Suite 200 / Washington, DC 20007-5118
`p / +1.202.625.3647 f / +1.202.339.6044
`christopher.ferenc@kattenlaw.com / www.kattenlaw.com
`===========================================================
`CONFIDENTIALITY NOTICE:
`
`3
`
`Sawai (IPR2019-00789) Ex. 1061, p. 003
`
`

`

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`4
`
`Sawai (IPR2019-00789) Ex. 1061, p. 004
`
`