From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Attachments:
`
`To the Board:
`
`Alexander E. Gasser <agasser@skiermontderby.com>
`Thursday, June 6, 2019 1:16 AM
`Precedential_Opinion_Panel_Request
`DMinion@Venable.com; DConde@Venable.com; WSolander@Venable.com;
`MRRoberts@Venable.com; Jevtana_team
`Subject: IPR2019-00136, Neptune Generics, LLC v. Aventis Pharma S.A.; Request for
`Precedential Opinion Panel
`Final Request for Rehearing.pdf
`
`Based on my professional judgment, I believe that the Board panel Decision Denying Institution
`(IPR2019-00136, Paper 15) is contrary to 35 U.S.C. § 325(d). Based on my professional judgment, I
`also believe the Board panel decision is contrary to the following decisions of the United States Court
`of Appeals for the Federal Circuit governing obviousness determinations for new chemical
`compounds: Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280 (Fed. Cir. 2012) and Takeda Chem.
`Indus. Ltd. v. Alphapharma Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007); and the following precedents of
`the Board: Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 (Dec.
`15, 2017) (informative).
`
`The Board panel’s Decision Denying Institution rests on the mistaken and erroneous belief and
`finding that Petitioner’s obviousness challenge filed against a patent’s claims directed to a new
`chemical compound is “substantially similar” to a previous petition filed by a different petitioner, where
`institution was denied based on the lack of evidence presented in support of the lead compound
`selected, even though the instant Petition denied under 325(d) presented:
`
` a different lead compound and different reasons for selecting the lead compound than the prior
`petition;
`
` a different lead reference applied to both select and modify the different lead compound than
`the prior petition applied to select and modify its different lead compound;
`
`
`
`two different primary references in support of modifications to its lead compound than the prior
`petition applied in support of modifications for its different lead compound;
`
` different arguments and motivations for applying the only reference in common between the
`two petitions; and
`
` a different expert declarant starting with a different lead compound, that applied different
`primary references to make different modifications for different reasons than were presented in
`the previous petition.
`
`Based on my professional judgment, I also believe that this case requires an answer to a precedent‐
`
`setting question of exceptional importance:
`
`Whether “substantially similar” under 35 U.S.C. § 325(d) can be invoked for discretionary
`denial of institution in a new chemical compound obviousness challenge, where the both the
`1
`
`IPR2019-00136
`Ex. 3001 p. 1 of 2
`
`

`

`lead compound, and two of the three primary references applied to select and modify the lead
`compound, are different than the lead compound and primary references presented in a
`previous petition and have never been presented to or considered by the Patent Office.
`
`Petitioner therefore respectfully requests that the Board convene a Precedential Opinion Panel to
`consider the accompanying rehearing request (timely filed earlier this evening), and all other matters
`that it chooses to consider.
`
`Respectfully submitted,
`
`/s/ Alexander E. Gasser
`
`Reg. No. 48,760
`
`ATTORNEY OF RECORD FOR PETITIONER NEPTUNE GENERICS, LLC
`
`Cc: All Counsel of Record
`
`___________________________________________
`Alexander E. Gasser | SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400, Dallas, Texas 75201
`P: 214.978.6600 | F: 214.978.6601 | skiermontderby.com
`
`This message is the property of SKIERMONT DERBY LLP and may contain privileged information or attorney
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`
`2
`
`IPR2019-00136
`Ex. 3001 p. 1 of 2
`
`