`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
`
`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 REQUEST FOR ORAL ARGUMENT1
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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.
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`
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`
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`Patent Owner Allergan Industrie, SAS, (“Allergan”), respectfully requests
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`oral argument in the above-captioned IPR proceedings on issues related to U.S.
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`Patent Nos. 8,450,475; 8,357,795; 9,238,013; 9,358,322; 8,822,676; and
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`9,089,519. Patent Owner intends to present arguments on the following issues:
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`1. All grounds on which trials were instituted, including all issues raised by the
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`parties’ papers;
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`2. Any issue raised by either party in a motion to exclude, objections to
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`demonstrative exhibits, Patent Owner's Identification of Improper New
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`Arguments and Evidence, or any other motion or paper filed by either party
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`before oral argument;
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`3. Rebuttal to any issue raised by Petitioner during its presentation at oral
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`argument; and
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`4. Any additional issue on which the Board seeks information or clarification.
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`
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`The Board has scheduled Oral Argument in the above-captioned proceedings
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`to be held on January 12, 2021. See, e.g., IPR2019-01617, Paper 18. While the
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`parties and counsel are the same in all proceedings, the IPRs have been assigned to
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`two panels: a first panel (Administrative Patent Judges New, Snedden and Pollock)
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`for IPR2019-01505, IPR2019-01508, IPR2019-01509, IPR2019-01617 and
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`IPR2020-00084; and a second panel (Administrative Patent Judges Obermann,
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`Snedden and Pollock) for IPR2019-01506 and IPR2019-01632. Patent Owner
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`
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`1
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`
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`respectfully suggests that with 7 IPRs, 6 patents, 28 grounds, and 2 panels, a
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`combined, two-day hearing the week of January 12, 2021, for all proceedings is
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`appropriate.
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`
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`Patent Owner further requests that each party be given ninety (90) minutes
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`of time each day for its respective presentation, inclusive of any time reserved for
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`rebuttal. Since Prollenium has raised a variety of similar, though not identical,
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`grounds across these proceedings, Patent Owner has organized Petitioner’s
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`grounds across the seven IPRs into four related Groups. Group A comprises 12
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`total obviousness grounds—11 pertaining to Lebreton and Sadozai, plus 1 ground
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`based on the CTA Summary in the -1632 IPR—that appear in all seven petitions,
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`as do the 8 Group B grounds, pertaining to Kinney and Zhao. Group C grounds,
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`citing Reinmuller and Lebreton, are only raised in the -1506, -1508, and -1509
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`IPRs, and Group D grounds, which cite four different references for anticipation,
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`are only raised in the -0084 IPR. Appendix A attached provides further detail on
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`these Groups. For the sake of efficiency, Patent Owner suggests that the Board
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`divide the issues for presentation as follows:
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`DAY 1
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`DAY 2
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`
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`
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`State of the Art
`Group A: Lebreton + Sadozai (& CTA Summary in -1632 IPR)
`Group B: Kinney + Zhao
`Group C: Reinmuller + Lebreton (-1506, -1508, -1509 IPRs)
`Group D: Anticipation Grounds (-0084 IPR)
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`2
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`
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`On Day 1, the parties would address the State of the Art, which would be
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`common across all proceedings, and the Group A grounds. On Day 2, the three
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`remaining groups would be addressed in sequence. The parties would first argue
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`the Group B grounds, followed by Group C grounds and then Group D grounds.
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`
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`Petitioner and Patent Owner have met and conferred to discuss the oral
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`argument and while the parties currently disagree, they have agreed to continue
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`discussions further and to jointly request a pre-hearing conference call prior to oral
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`argument.
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`Dated: November 17, 2020
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`Respectfully submitted,
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`
`
`/s/ Anthony M. Insogna
`Anthony M. Insogna (Reg. No. 35,203)
`Tamera M. Weisser (Reg. No. 47,856)
`S. Christian Platt (Reg. No. 46,998)
`aminsogna@jonesday.com
`tweisser@jonesday.com
`cplatt@jonesday.com
`JONES DAY
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121
`Telephone: 858-314-1200
`Fax: 844-345-3178
`
`Sarah A. Geers (Reg. No. 69,123)
`sgeers@jonesday.com
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Telephone: 212-326-3939
`Fax: 212-755-7306
`
`
`
`3
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`
`
`Jennifer M. Hartjes (Reg. No. 77,687)
`jhartjes@jonesday.com
`JONES DAY
`90 South Seventh Street, Suite 4950
`Minneapolis, MN 55402
`Telephone: 612-217-8800
`Fax: 844-345-3178
`
`Attorneys for Patent Owner Allergan Industrie,
`SAS
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`
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on November
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`17, 2020, a true and correct copy of PATENT OWNER’S REQUEST FOR
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`ORAL ARGUMENT has been served in its entirety by e-mail on the following
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`counsel of record for Petitioner:
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`Lead Counsel:
`Christopher L. Curfman, Ph.D.
`(Reg. No. 52,787)
`MEUNIER CARLIN & CURFMAN LLC
`999 Peachtree Street NE, Suite 1300
`Atlanta, GA 30309
`ccurfman@mcciplaw.com
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`
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`Dated: November 17, 2020
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`
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`
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`Backup Counsel:
`William W. Cutchins (Reg. No. 63,451)
`Warren J. Thomas (Reg. No. 70,581)
`John Harbin (pro hac vice motion filed)
`MEUNIER CARLIN & CURFMAN LLC
`999 Peachtree Street NE, Suite 1300
`Atlanta, GA 30309
`wcutchins@mcciplaw.com
`wthomas@mcciplaw.com
`mcc.prollenium.ipr@mcciplaw.com
`
`
`
`/s/ Anthony M. Insogna
`Anthony M. Insogna (Reg. No. 35,203)
`JONES DAY
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121
`Telephone: 858-314-1200
`Fax: 844-345-3178
`
`Attorney for Patent Owner Allergan
`Industrie, SAS
`
`
`5
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`
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`APPENDIX A
`
`APPENDIX A
`
`
`
`IPR2019-01505
`’475
`Grounds
`Group A
`Ground 1:
`Lebreton in view of
`Sadozai and Monheit
`
`Ground 2:
`Lebreton in view of
`Sadozai and Clark
`Ground 3:
`Lebreton in view of
`Sadozai and Smith
`Group B
`Ground 4:
`Kinney in view of
`Zhao, Narins, and
`Monheit
`Ground 5:
`Kinney in view of
`Zhao, Narins, and Clark
`Ground 6:
`Kinney in view of
`Zhao, Narins, and
`Smith
`
`IPR2019-01506
`’795
`Grounds
`Group A
`Ground 1: Lebreton in
`view of Sadozai
`
`IPR2019-01508
`’013
`Grounds
`Group A
`Ground 1:
`Lebreton in view of
`Sadozai and Monheit
`
`IPR2019-01509
`’322
`Grounds
`Group A
`Ground 1:
`Lebreton in view of
`Sadozai and Monheit
`
`Ground 2:
`Lebreton in view of
`Sadozai and Clark
`
`IPR2019-01617
`’676
`Grounds
`Group A
`Ground 1:
`Lebreton in view of
`Sadozai and CTA
`Summary
`Ground 2:
`Lebreton in view of
`Sadozai , CTA
`Summary, and Monheit
`
`IPR2019-01632
`’795
`Grounds
`Group A
`Ground 1:
`CTA Summary
`
`Ground 2:
`Lebreton in view of
`Sadozai
`
`IPR2020-00084
`’519
`Grounds
`Group A
`Ground 4:
`Lebreton in view of
`Sadozai
`
`Group B
`Ground 2:
`Kinney in view of Zhao
`and Narins
`
`Group B
`Ground 2:
`Kinney in view of Zhao
`and Narins
`
`Group B
`Ground 3:
`Kinney in view of Zhao,
`Narins, and Monheit
`
`Group B
`Ground 3:
`Kinney in view of Zhao
`and Narins
`
`Group C
`Ground 3:
`Reinmuller in view of
`Lebreton
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`Group C
`Ground 3:
`Reinmuller in view of
`Lebreton and Monheit
`
`Ground 4:
`Kinney in view of Zhao,
`Narins, and Smith
`
`Group C
`Ground 5:
`Reinmuller in view of
`Lebreton and Monheit
`Ground 6:
`Reinmuller and
`Lebreton in view of
`Smith
`
`Group D
`Ground 1:
`PMA P050047/S005
`Ground 2:
`Weinkle
`Ground 3:
`U.S. 2010/0028438
`Ground 5:
`PMA P050047 in view
`of Kinney
`
`