`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`HOPEWELL PHARMA VENTURES, LLC,
`Petitioner
`v.
`MERCK SERONO SA,
`Patent Owner
`
`___________________
`
`Case IPR2023-00481
`U.S. Patent No. 8,377,903
`___________________
`
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2023-00481
`U.S. Patent No. 8,377,903
`Pursuant to the Board’s September 22, 2023 Scheduling Order (Paper 11),
`
`Petitioner Hopewell Pharma Ventures, LLC (“Petitioner”), respectfully requests
`
`oral argument, currently scheduled for June 25, 2024. Counsel for Petitioner has
`
`met and conferred with Counsel for Patent Owner Merck Serono SA (“Patent
`
`Owner”), and the Parties have agreed to request a consolidated oral argument for
`
`related proceedings IPR2023-00480 (U.S. Patent No. 7,713,947) and IPR2023-
`
`00481 (U.S. Patent No. 8,377,903). Petitioner requests one hour in which to
`
`present its arguments, subject to any additional time allowed for participation in
`
`the LEAP program. Under 37 C.F.R. § 42.70, and without intending to waive any
`
`issue not specifically identified, Petitioner specifies the following issues to be
`
`argued:
`
`1. The unpatentability of claims 36, 38, 39, and 41–46 of U.S. Patent No.
`
`7,713,947 under 35 U.S.C. § 103 over Bodor and Stelmasiak (IPR2023-
`
`00480);
`
`2. The unpatentability of claims 17, 19, 20, and 22–27 of U.S. Patent No.
`
`8,377,903 under 35 U.S.C. § 103 over Bodor and Stelmasiak (IPR2023-
`
`00481);
`
`3. Any issues specified by Patent Owner in its Request for Oral Argument;
`
`and
`
`4. Any other issues the Board deems necessary for issuing a final written
`
`- 1 -
`
`
`
`Case IPR2023-00481
`U.S. Patent No. 8,377,903
`decision (e.g., any motion to exclude evidence and any motion to seal
`
`evidence).
`
`Petitioner also requests that the Board provide audio-visual equipment to
`
`display demonstrative exhibits, including a projector and screen for displaying
`
`documents from a computer.
`
`Further, Petitioner requests that the hearing be held at the USPTO’s
`
`Alexandria, Virginia office because that location will be more convenient, have
`
`simpler logistics, and be less costly for Petitioner. Petitioner notes that its Counsel
`
`are located in the Washington, DC area. Petitioner also notes that Counsel for
`
`Patent Owner also maintains an office in the Washington, DC area.
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`/Eldora L. Ellison/
`
`Eldora L. Ellison, Ph.D., Esq.
`Registration No. 39,967
`Lead Attorney for Petitioner
`
`Date: May 10, 2024
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`- 2 -
`
`
`
`Case IPR2023-00481
`U.S. Patent No. 8,377,903
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`I certify that the above-captioned PETITIONER’S REQUEST FOR
`
`ORAL ARGUMENT was served in its entirety on May 10, 2024, upon the
`
`following parties via electronic mail:
`
`
`
`Emily R. Whelan (Lead Counsel) Emily.Whelan@wilmerhale.com
`Deric Geng (Back-up Counsel) Deric.Geng@wilmerhale.com
`Cindy Kan (Back-up Counsel) Cindy.Kan@wilmerhale.com
`David B. Bassett (Back-up Counsel) David.Bassett@wilmerhale.com
`Vinita Ferrera (Back-up Counsel) Vinita.Ferrera@wilmerhale.com
`David Mlaver (Back-up Counsel) David.Mlaver@wilmerhale.com
`Mary.Pheng (Back-up Counsel) Mary.Pheng@wilmerhale.com
`Asher McGuffin (Back-up Counsel) Asher.McGuffin@wilmerhale.com
`Scott Bertulli (Back-up Counsel) Scott.Bertulli@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`WHMerckMavencladIPRs@wilmerhale.com
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`/Eldora L. Ellison/
`
`Eldora L. Ellison, Ph.D., Esq.
`Registration No. 39,967
`Lead Attorney for Petitioner
`
`Date: May 10, 2024
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`22215600.1
`
`
`
`
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