Trials
`Lu, John; Trials
`#Milbank-MiltenyiIPRs; Landry, Brian R.; Doyle, Kathryn; Behrooz, Alireza; Berniker, Jessamyn; Krinsky, David;
`Fletcher, Thomas
`RE: IPR2022-00853 and IPR2022-00855 - Petitioner’s request for authorization for Reply to Patent Owner"s
`Preliminary Response
`Friday, August 5, 2022 3:47:21 PM
`
`From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Counsel,
`
`Petitioner’s request for leave to file 5 page Replies addressing “(1) characterization of the Porter
`reference as prior art in view of a new fact declaration submitted with the POPRs (Ex. 2044); (2)
`claim construction of the preamble ‘treating cancer’ (in IPR2022-00853 only), and “anti-tumor
`effective amount” (in both IPRs); and (3) discretionary denial under Section 325(d)” is authorized
`because the panel believes that further briefing on these issues may be helpful. As proposed in
`Petitioner’s email, the Replies are due within 5 business days of this communication. Patent Owner
`may submit Sur-replies of equal length within 5 business days of Petitioner’s Reply.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Lu, John <JLu@milbank.com>
`Sent: Friday, August 5, 2022 2:32 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: #Milbank-MiltenyiIPRs <Milbank-MiltenyiIPRs@milbank.com>; Landry, Brian R.
`<Brian.Landry@saul.com>; Doyle, Kathryn <Kathryn.Doyle@saul.com>; Behrooz, Alireza
`<alireza.behrooz@saul.com>; Berniker, Jessamyn <JBerniker@wc.com>; Krinsky, David
`<DKrinsky@wc.com>; Fletcher, Thomas <TFletcher@wc.com>
`Subject: IPR2022-00853 and IPR2022-00855 - Petitioner’s request for authorization for Reply to
`Patent Owner's Preliminary Response
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`Petitioner respectfully requests authorization from the Board to file 5-page Replies to Patent
`Owner’s Preliminary Responses (“POPR”) in IPR2022-00853 and IPR2022-00855. Each Reply would
`address the following issues: (1) characterization of the Porter reference as prior art in view of a new
`fact declaration submitted with the POPRs (Ex. 2044); (2) claim construction of the preamble
`
`IPR2022-00853
`Ex. 3001
`
`

`

`“treating cancer” (in IPR2022-00853 only), and “anti-tumor effective amount” (in both IPRs); and (3)
`discretionary denial under Section 325(d). Petitioner does not oppose a Sur-Reply of equal length for
`Patent Owner. Petitioner submits that no new evidence should accompany either the Reply or Sur-
`Reply.
`
`Petitioner proposes the briefing scheduled provided below:
`
`
`IPR Proceeding
`
`Preliminary
`Response Filed
`
`Institution
`Deadline
`
`Petitioner’s Reply
`Deadline
`
`IPR2022-00853
`
`July 19, 2022
`
`IPR2022-00855
`
`July 19, 2022
`
`October 19,
`2022
`
`October 19,
`2022
`
`Within 5 business
`days of the
`Board’s
`authorization
`Within 5 business
`days of the
`Board’s
`authorization
`
`Patent Owner’s
`Sur-Reply
`Deadline
`Within 5 business
`days of Petitioner’s
`Reply
`
`Within 5 business
`days of Petitioner’s
`Reply
`
`
`
`Counsel for Petitioner and Patent owner met and conferred regarding this request. Patent Owner
`opposes this request, writing: “We would be willing to agree to a 3-page reply on the issue of Porter
`as prior art with a corresponding sur-reply for us. We view the other two issues you identify as
`points you were able to address adequately in your petitions. Please let us know if that proposal is
`agreeable to you. Otherwise, we oppose your request.”
`
`Should the Board wish to convene a call on this matter, the Parties are jointly available at the
`following times:
`Wednesday, August 10: 1:00 - 4:00 pm Eastern
`Friday, August 12: 1:00 - 4:00 pm Eastern
`
`If these times do not work for the Board, the parties will confer and offer additional times.
`
`Good Cause: On issue (1), Patent Owner’s new fact witness declaration disclaiming prior-art
`disclosures was unforeseeable, and further briefing will establish that this is a factual dispute that
`should not preclude institution. On issue (2), Patent Owner’s claim construction position was not
`foreseeable, and additional briefing will clarify the record and aid the Board’s deliberations. On issue
`(3), while the Petitions preemptively address aspects of Patent Owner’s arguments for discretionary
`denial (pp. 69-71, IPR2022-00853 and pp. 78-80, IPR2022-00855), Petitioner could not have
`predicted all of Patent Owner’s arguments, particularly those based on misreading of caselaw.
`
`
`Best Regards,
`
`John Lu
`
`

`

`Counsel for Petitioner
`
`John Lu | Milbank | Partner
`2029 Century Park East, 33rd Floor | Los Angeles, CA 90067-3019
`O: +1 424.386.4318 | M: +1 510.325.4415
`JLu@milbank.com | milbank.com
`
`
`
`
`