From:
`To:
`Cc:
`Subject:
`Date:
`
`Ferenc, Christopher B.
`Trials
`Schwarz, Christina; Kallas, Nicholas N.; Clark, Shannon K.; Fishwick, Laura K.; Sodikoff, Brian
`IPR2020-01263
`Monday, November 30, 2020 4:05:22 PM
`
`Your Honors,
`I am lead counsel for Petitioner, Biocon Pharma Limited (“Biocon”), in IPR2020-01263. Biocon
`requests authorization to file a short 3 page Reply limited to the 325(d) issues raised in the POPR.
`Even when a Petitioner has preliminarily dealt with 325(d) in its opening Petition, after the Patent
`Owner has crystalized its 325(d) arguments in its POPR, and as the Board has done in other IPRs, the
`Petitioner is granted leave to respond. See IPR2020-00040 (Paper 1 at 66 (preliminarily dealing with
`325(d)); Paper 11) and IPR2019-00400 (Paper 3 at 64 (preliminarily dealing with 325(d)); Papers 12 &
`15). Biocon has no objection to Patent Owner receiving a 3 page Sur-Reply in response.
`Patent Owner objects to Biocon’s request, as Biocon has not established good cause, as required by
`37 C.F.R. § 42.108(c), and replies are not automatically granted absent such a showing. See, e.g.,
`IPR2017-01982, Paper 9 at 2; IPR2017-01526, Paper 9 at 4. Moreover, Biocon had the opportunity to
`and did address 35 U.S.C. § 325(d) in its Petition.
`Counsel for the parties are available this week for a telephone conference with the PTAB (if
`necessary) at the following times (Eastern):
`
`December 3: 10 a.m. – 4 p.m.
`December 4: 10 a.m. – 4 p.m.
`
`Regards,
`Chris Ferenc
`Counsel for Petitioner
`
`Christopher B. Ferenc
`Partner – Intellectual Property
`Katten
`Katten Muchin Rosenman LLP
`2900 K Street NW | Washington, DC 20007
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
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