`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`SANDOZ INC.,
`Petitioner,
`
`v.
`
`PHARMACYCLICS LLC,
`Patent Owner.
`
`__________________
`
`Case IPR2019-00865
`U.S. Patent No. 9,795,604
`__________________
`
`PATENT OWNER’S REPLY IN SUPPORT
`OF MOTION TO STRIKE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`
`
`IPR2019-00865
`U.S. Patent No. 9,795,604
`The Reply improperly raised new anticipation theories based on newly cited
`
`evidence. See PTAB Trial Practice Guide, 48767. While the Petition acknowledged
`
`that anticipation can be shown explicitly or inherently (Pet., 32), Petitioner presented
`
`only a legally incorrect anticipation theory for claims 4, 13, and 15 (id., 38-39) and
`
`relied solely on inherency for claims with efficacy limitations (id., 39-40). Patent
`
`Owner’s debunking of Petitioner’s original arguments (POR, 16-21) does not justify
`
`entirely new theories. See Henny Penny, 938 F.3d at 1329.
`
`Petitioner’s cited cases do not compel a different conclusion. None of these
`
`cases involved new theories of unpatentability. For example, in Unified Patents, the
`
`Board stated (Paper 51, 50) that each allegedly new argument aligned directly with
`
`the Petition. Petitioner here makes no such showing—at best pointing only to an
`
`argument about a different “base” claim. Paper 26, 3. Further, while the reply
`
`arguments and evidence in Juniper, Idemitsu, and Hynix were not formally struck,
`
`they were given little to no weight. Juniper, 77-78; Idemistu, 1381; Hynix, 30-31.
`
`The Board should strike, or at a minimum disregard, Petitioner’s new arguments.
`
`Finally, Patent Owner is prejudiced—counsel could not prepare to cross Dr.
`
`Ferrara on these issues, and Dr. Koreth had no opportunity to specifically address
`
`Petitioner’s new theories of anticipation. EX2055, ¶90 (referencing newly-cited
`
`¶¶[0121] and [0124] only in passing). The Board should not engage in fact-finding
`
`without proper expert analysis. See Idemitsu, 870 F.3d at 1381.
`
`1
`
`
`
`IPR2019-00865
`U.S. Patent No. 9,795,604
`
`
`Date: June 12, 2020
`
`
`
`
`Respectfully submitted,
`
`By: / William B. Raich /
`William B. Raich, Reg. No. 54,386
`
`
`
`2
`
`
`
`IPR2019-00865
`U.S. Patent No. 9,795,604
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Patent Owner’s
`
`Reply in Support of Motion to Strike was served electronically via email on
`
`June 12, 2020, in its entirety on the following:
`
`Kirk T. Bradley
`Alston & Bird LLP
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
`kirk.bradley@alston.com
`
`Siraj M. Abhyankar
`Alston & Bird LLP
`1201 W. Peachtree Street NE #4900
`Atlanta, GA 30309
`shri.abhyankar@alston.com
`
`Christopher L. McArdle
`Alston & Bird LLP
`90 Park Avenue, Suite 1200
`New York, NY 10016
`chris.mcardle@alston.com
`
`
`Petitioner has consented to service by email.
`
`
`Date: June 12, 2020
`
`
`
`
`
`
`
`
`
`
`
`By: / William Esper /
`William Esper
`Legal Assistant
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
