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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PROLLENIUM US INC.,
`Petitioner,
`v.
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner.
`_____________
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`_____________
`
`PATENT OWNER’S AMENDED OBJECTIONS UNDER 37 C.F.R.
`§ 42.64(b)(1)
`TO PETITIONER’S EVIDENCE 1
`
`
`
`
`
`
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`
`
`
`
`1 Authorization for the use of a joint caption page was received on April 27, 2020.
`Neither party opposes the use of a joint caption page. An identical paper has been
`filed in each case recited in the consolidated caption.
`
`
`
`IPR2019-01505, Patent 8,450,475 B2; IPR2019-01506, Patent 8,357,795 B2;
`IPR2019-01508, Patent 9,238,013 B2; IPR2019-01509, Patent 9,358,322 B2;
`IPR2019-01617, Patent 8,822,676 B2; IPR2019-01632, Patent 8,357,795 B2;
`IPR2020-00084, Patent 9,089,519 B2
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Allergan Industrie, SAS
`
`(“Patent Owner”) hereby submits these objections to Petitioner’s evidence served
`
`with its Reply to Patent Owner’s Response on November 4, 2020 in each of the
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`above-captioned IPR proceedings. This notice is being timely filed within 5
`
`business days (excluding weekends and federal holidays) of Petitioner’s Service of
`
`its Reply.
`
`I.
`
`Exhibits 1077, 1086 (“Maleki”)2, 1102, 1103, 1116, 1117, 1202
`Patent Owner objects to the admissibility of Exhibits 10773, 1086
`
`(“Maleki”), 1102, 1103, 1116, 1117 and 1202 under Fed. R. Evid. 402 and 403 as
`
`lacking relevance to the issues before the Board and/or because each exhibit’s
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`probative value is outweighed by a danger of unfair prejudice, confusing the
`
`issues, undue delay, wasting time, or needlessly presenting cumulative evidence.
`
`These exhibits do not reflect the knowledge and level of skill of a person of
`
`
`2 Petitioner has identified two different documents as Exhibit 1086. The first
`exhibit is “Transcript of January 10, 2020, Conference Call with Board.” The
`second exhibit is “Atoosa Maleki et al., Effect of pH on the Behavior of
`Hyaluronic Acid in Dilute and Semidilute Aqueous Solutions, Macromolecular
`Symposia, Vol. 274, 131-140 (Dec. 29, 2008).” This objection refers to the Maleki
`reference.
`3 Patent Owner files its objections to Exhibit 1077 for all above-captioned
`IPR proceedings with the exception of IPR2020-00084.
`
`
`
`1
`
`
`
`IPR2019-01505, Patent 8,450,475 B2; IPR2019-01506, Patent 8,357,795 B2;
`IPR2019-01508, Patent 9,238,013 B2; IPR2019-01509, Patent 9,358,322 B2;
`IPR2019-01617, Patent 8,822,676 B2; IPR2019-01632, Patent 8,357,795 B2;
`IPR2020-00084, Patent 9,089,519 B2
`
`ordinary skill in the art at or around the time of the alleged invention and are not
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`relevant.
`
`II. Exhibit 1104
`Patent Owner objects to the admissibility of Exhibit 1104 under Fed. R.
`
`Evid. 801-805 (hearsay and hearsay within hearsay) to the extent the declarants’
`
`statements are offered for the truth of the matter asserted and do not fall within a
`
`recognized exception under Fed. R. Evid. 803.
`
`Patent Owner further objects to the admissibility of Exhibit 1104 under Fed.
`
`R. Evid. 106, Fed. R. Evid. 402/403 and under 37 C.F.R. § 42.63(b) as lacking
`
`relevance and/or prejudicial and confusing because the document was not available
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`to public at the time of the priority date, is an incomplete document, and because
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`no translation has been provided for the foreign language text.
`
`III. Exhibits 1085 (“EPO Response”)4, 1108, and 1109
`Patent Owner objects to the admissibility of Exhibits 1085, 1108, and 1109
`
`under Fed. R. Evid. 801-805 (hearsay and hearsay within hearsay) to the extent the
`
`
`4 Petitioner has identified two exhibits as Exhibit 1085. The first is
`“Renewed Declaration of John W. Harbin In Support of Motion for Admission Pro
`Hac Vice (Jan. 21, 2020).” “The second is Allergan Industrie, SAS’s September
`12, 2019 Response to European Patent Office Opposition Division Preliminary
`Opinion in proceeding against European Patent 2 323 617 B1, available at
`2
`
`
`
`
`
`IPR2019-01505, Patent 8,450,475 B2; IPR2019-01506, Patent 8,357,795 B2;
`IPR2019-01508, Patent 9,238,013 B2; IPR2019-01509, Patent 9,358,322 B2;
`IPR2019-01617, Patent 8,822,676 B2; IPR2019-01632, Patent 8,357,795 B2;
`IPR2020-00084, Patent 9,089,519 B2
`
`declarants’ statements are offered for the truth of the matter asserted and do not fall
`
`within a recognized exception under Fed. R. Evid. 803.
`
`To the extent Petitioner maintains its objections over Exhibits 2083 and
`
`2084, Patent Owner further objects to the admissibility of Exhibits 1085, 1108, and
`
`1109 under Fed. R. Evid. 402 and 403 as lacking relevance to the issues before the
`
`Board and/or because each exhibit’s probative value is outweighed by a danger of
`
`unfair prejudice, confusing the issues, undue delay, wasting time, or needlessly
`
`presenting cumulative evidence as Exhibits 1085, 1108, and 1109 are about patents
`
`not at issue in this proceeding and do not reflect the knowledge and level of skill of
`
`a person of ordinary skill in the art at or around the time of the alleged invention
`
`and are not relevant.
`
`IV. Exhibits 1083, 1088, 1107, 1111, 1114, 1115, 1116, 1117,
`Patent Owner objects to Exhibits 10835, 1088, 1107, 1111, 1114, 1115,
`
`1116, and 1117 under 37 C.F.R. § 42.6(a)(3) (improper incorporation by
`
`reference). These exhibits are not cited to or discussed anywhere in the
`
`
`https://register.epo.org/application?number=EP09785852&lng=en&tab=doclist.”
`This objection refers to the EPO response.
`5 Patent Owner files its objections to Exhibit 1083 for all above-captioned
`IPR proceedings with the exception of IPR2020-00084.
`
`
`
`3
`
`
`
`IPR2019-01505, Patent 8,450,475 B2; IPR2019-01506, Patent 8,357,795 B2;
`IPR2019-01508, Patent 9,238,013 B2; IPR2019-01509, Patent 9,358,322 B2;
`IPR2019-01617, Patent 8,822,676 B2; IPR2019-01632, Patent 8,357,795 B2;
`IPR2020-00084, Patent 9,089,519 B2
`
`Petitioner’s Reply. Instead, these exhibits are cited in a declaration submitted in
`
`support of the Petitioner’s Reply. Accordingly, these Exhibits are improperly
`
`incorporated by reference.
`
`V. Exhibits 1076, 1081, 1085 (“EPO Response”), 1086 (“Maleki”), 1087,
`1089, 1090, 1202
`Patent Owner objects to Exhibits 1076, 1081, 1087, and 1202 under Fed. R.
`
`Evid. 402 and 403 as lacking relevance to the issues before the Board and/or
`
`because each exhibit’s probative value is outweighed by a danger of unfair
`
`prejudice, confusing the issues, undue delay, wasting time, or needlessly
`
`presenting cumulative evidence. Although these exhibits were identified as “filed”
`
`in at least one of Petitioner’s Exhibit Lists for the above-captioned IPRs, these
`
`exhibits are not cited to or discussed anywhere in the reply or in any declaration
`
`submitted in support of Petitioner’s Reply.
`
`Petitioner further objects to Exhibits 1085 (“EPO Response”), 1086
`
`(“Maleki”), 1089, and 1090 under Fed. R. Evid. 402 and 403 as lacking relevance
`
`to the issues before the Board and/or because each exhibit’s probative value is
`
`outweighed by a danger of unfair prejudice, confusing the issues, undue delay,
`
`wasting time, or needlessly presenting cumulative evidence. Although identified
`
`in at least one of Petitioner’s Exhibit Lists for the above-captioned IPRs, the
`
`
`
`4
`
`
`
`IPR2019-01505, Patent 8,450,475 B2; IPR2019-01506, Patent 8,357,795 B2;
`IPR2019-01508, Patent 9,238,013 B2; IPR2019-01509, Patent 9,358,322 B2;
`IPR2019-01617, Patent 8,822,676 B2; IPR2019-01632, Patent 8,357,795 B2;
`IPR2020-00084, Patent 9,089,519 B2
`
`documents have not be filed in any of the captioned IPRs and are not cited to or
`
`discussed anywhere in the reply or in any declaration submitted.
`
`VI. Exhibits 1088 and 1200
`Patent Owner objects to Exhibits 1088 and 1200 under 37 C.F.R. § 42.6(c)
`
`as Patent Owner has not filed an Exhibit 1088 or an Exhibit 1200 in any of the
`
`above-captioned IPRs. Patent Owner also objects to Exhibits 1088 and 1200 under
`
`Fed. R. Evid. 901 for failure to properly identify the cited evidence.
`
`VII. Exhibit 1201
`Patent Owner objects to Exhibit 1201 under Fed. R. Evid. 402 and 403 as
`
`lacking relevance to the issues before the Board and/or because the probative value
`
`is outweighed by a danger of unfair prejudice, confusing the issues, undue delay,
`
`wasting time, or needlessly presenting cumulative evidence because, although
`
`identified as “filed” in at least one of the captioned IPRs, this exhibit are is not
`
`cited to or discussed anywhere in the reply or in any declaration submitted in
`
`support of Petitioner’s Reply.
`
`Patent Owner objects to the admissibility of Exhibit 1201 under Fed. R.
`
`Evid. 801-805 (hearsay and hearsay within hearsay) to the extent the declarant’s
`
`statements are offered for the truth of the matter asserted and do not fall within a
`
`recognized exception under Fed. R. Evid. 803.
`
`
`
`5
`
`
`
`IPR2019-01505, Patent 8,450,475 B2; IPR2019-01506, Patent 8,357,795 B2;
`IPR2019-01508, Patent 9,238,013 B2; IPR2019-01509, Patent 9,358,322 B2;
`IPR2019-01617, Patent 8,822,676 B2; IPR2019-01632, Patent 8,357,795 B2;
`IPR2020-00084, Patent 9,089,519 B2
`
`VIII. Exhibit 1105
`Dr. Prestwich’s testimony in Exhibit 1105 relating to the above exhibits is
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`inadmissible for the grounds set forth above with respect to the specific exhibits.
`
`Dr. Prestwich’s testimony that is not supported by objective admissible evidence is
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`inadmissible as well.
`
`Patent Owner objects to the admissibility of Exhibit 1105 pursuant to Fed.
`
`R. Evid. 702/703 to the extent the declarant is offering purported expert testimony
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`on matters which the expert lacks sufficient qualifications to render such opinions
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`and/or the opinions lack a sufficient foundation or basis.
`
`Patent Owner further objects to Exhibit 1105 under Fed. R. Evid. 402 and
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`403 as lacking relevance to the issues before the Board and/or because each
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`exhibit’s probative value is outweighed by a danger of unfair prejudice, confusing
`
`the issues, undue delay, wasting time, or needlessly presenting cumulative
`
`evidence as Exhibit 1105 exceeds the scope of a proper Reply and proper Reply
`
`evidence and including without providing Patent Owner a fair opportunity to
`
`respond.
`
`Patent Owner further objects to Exhibit 1105 under 37 C.F.R. § 42.6(a)(3)
`
`(improper incorporation by reference) and under 37 C.F.R. § 42.24(a)(1)(i)
`
`(attempt to circumvent word count). Petitioner’s attempts to incorporate nearly
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`
`
`6
`
`
`
`IPR2019-01505, Patent 8,450,475 B2; IPR2019-01506, Patent 8,357,795 B2;
`IPR2019-01508, Patent 9,238,013 B2; IPR2019-01509, Patent 9,358,322 B2;
`IPR2019-01617, Patent 8,822,676 B2; IPR2019-01632, Patent 8,357,795 B2;
`IPR2020-00084, Patent 9,089,519 B2
`
`100 pages of argument, set forth in Exhibit 1105, into its Patent Owner Response.
`
`In some instances, the Patent Owner Response provided one or two sentences of
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`argument and cited to several paragraphs, or even several pages, of Exhibit 1105 in
`
`support of its positions. “Arguments must not be incorporated by reference from
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`one document into another document,” including arguments set forth only in an
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`expert declaration. 37 C.F.R. § 42.6(a)(3).
`
`Patent Owner further objects to Exhibit 1105 under 37 C.F.R. § 42.6(c), as
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`the declarations cites “evidence” that has not been filed in the form of an exhibit.
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`Specifically, the declaration cites evidence in paragraphs 59, 62, 86, 161, and 177
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`of Exhibit 1105 that have not been included as exhibits. Patent Owner also objects
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`to the evidence cited in these paragraphs under Fed. R. Evid. 901 for failure to
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`identify the evidence.
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`
`
`Dated: November 12, 2020
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Anthony M. Insogna
`Anthony M. Insogna (Reg. No. 35,203)
`Jones Day
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121-3134
`Tel.: (858) 314-1200
`Fax.: (844) 345-3178
`
`Attorney for Patent Owner
`
`7
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`
`
`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of Patent Owner’s Objections to
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`Petitioner’s Evidence by electronic means at the following address of record:
`
`mcc.prollenium.ipr@mcciplaw.com
`
`Dated: November 12, 2020
`
`
`/s/ Anthony M. Insogna
`Anthony M. Insogna (Reg. No. 35,203)
`Jones Day
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121-3134
`Tel.: (858) 314-1200
`Fax.: (844) 345-3178
`
`Attorney for Patent Owner
`
`
`
`
`
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`
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