Hill, Kyle
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Rosato, Michael
`Thursday, May 12, 2016 11:22 AM
`Trials
`Parmelee, Steve; Brown, Andrew; Doshi, Dipu; England, Jonathan; Thronson, Mark
`PGR2015-00011
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Completed
`
`Dear Trials,
`
`On May 6, 2016, Petitioner (Altaire) filed its Reply brief to the Patent Owner’s Response. Patent Owner (Paragon
`Bioteck) respectfully requests a conference call with the Board to discuss the issues identified below.
`
`[Issue 1] New argument and evidence in Reply
`
`Petitioner’s reply advances new argument and evidence exceeding the proper scope of reply, per 37 CFR §42.23 and the
`Trial Practice Guide (e.g., 77 Fed. Reg. 48,756, 48,767). The new evidence includes the following:
`• Three newly submitted witness declarations: Exhibit 1025 (Third Declaration of Assad Sawaya), Exhibit 1029
`(Zaman Declaration), Exhibit 1032 (Second Declaration of M. Sawaya)
`• Three newly submitted test reports with experimental protocols and data not previously made of record: Exhibit
`1027 (TMQC-247-01), Exhibit 1028 (TMQC-247-00), Exhibit 1030 (STU0346)
`
`
`The new argument and evidence is believed an untimely attempt to cure (1) the lack of any expert testimony submitted
`with the petition; and (2) failure to disclose test methodology and information corresponding to the original test data
`submitted with the petition, as required per 37 CFR 42.65(b). Paragon is concerned that the remaining schedule in this
`proceeding lacks the requisite time and opportunity for Paragon to address the insufficiency of the new material. As
`such, Paragon seeks the following corresponding relief from the Board:
`
`
`• Motion to Strike: Because the new argument/evidence effectively amounts to a new petition, all materials
`(Reply brief and corresponding exhibits) should be struck and expunged from the record. If a motion is deemed
`necessary, Paragon requests authorization to file a motion to strike, which may be decided on an expedited
`basis.
`• Surreply: As an alternative to striking the new argument/evidence, Paragon requests authorization to file a
`surreply together with new testimonial evidence and/or experimental evidence.
`• Extension of the Board’s deadline to issue a Final Written Decision: If new argument/evidence is not struck,
`Paragon requests extending the Board’s deadline for issuing a Final Written Decision for up to 6 months per 35
`USC §316(a)(11). Such an extension would be critical to accommodating briefing and discovery related to
`addressing the new argument/evidence.
`
`
`[Issue 2] Motion to Terminate for Failure to Name all Real Parties-In-Interest
`
`Following post-institution discovery, Paragon again raised the issue of unnamed real parties-in-interest in its Patent
`Owner’s Response. Paper 20 at 14-27. In its Reply brief, Petitioner asserts that the proper vehicle for raising this issue
`is a motion to terminate, not the Patent Owner’s Response. Paper 36 at 17-18. Paragon respectfully
`disagrees. However, to the extent the Board deems a motion to terminate to be the proper vehicle in this instance,
`Paragon seeks authorization to present such a motion.
`
`
`1
`
`PARAGON - EXHIBIT 2042
`ALTAIRE PHARMACEUTICALS, INC. v. PARAGON BIOTECK, INC.
`PGR2015-00011
`
`

`
`Counsel for the parties have conferred. Parties are mutually available for a conference call with the Board during the
`following times:
`• Friday 5/13/2016: Noon to 3:30 EST
`• Monday 5/16/2016: Noon to 1pm EST; 2-5pm EST
`
`
`Sincerely,
`
`Michael T Rosato (Lead Counsel for Patent Owner)
`Wilson Sonsini Goodrich & Rosati
`[o] 206.883.2529 | [f] 206.883.2699
`mrosato@wsgr.com
`
`
`
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