`United States Patent No. 9,815,827
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SLAYBACK PHARMA LLC
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`Petitioner
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`v.
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`SUMITOMO DAINIPPON PHARMA CO., LTD
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`Patent Owner
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`Case No. IPR2020-01053
`U.S. Patent 9,815,827
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`PETITIONER’S REQUEST FOR ORAL ARGUMENT
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`{80268632:1}
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`1
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`IPR2020-01053
`United States Patent No. 9,815,827
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`Pursuant to 37 C.F.R. § 42.70(a) and the Board’s Scheduling Order
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`(Paper 8), Petitioner requests oral argument in IPR2020-001053 on U.S. Patent No.
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`9,815,827 (“the ‘827 patent”).
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`The parties conferred and agreed it would be appropriate for each side to be
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`allocated a total of 1 hour at the Oral Hearing.
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`Petitioner requests (without waiving consideration of any issue not listed
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`here) that the following issues be argued:
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`For Grounds 1 and 2
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`1. Whether the “manic depressive claims” have written description support
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`in the ‘927 Provisional;
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`2. Whether Patent Owner’s Response (Paper 15) failed to address written
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`description support in the ‘927 Provisional of a method with all the
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`limitations of “the specific regimens recited in representative claim 8 and
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`the other manic depressive claims.” See, Paper 2 (Petition) pp. 27-28,
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`Paper 20 (Petitioner’s Reply) pp. 16-17;
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`3. Whether the single mention of “manic depressive psychoses” in the
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`Background Section of the ‘927 Provisional is merely a passing reference
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`in a complex field. See Paper 20 (Petitioner’s Reply) p. 14.
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`{80268632:1}
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`2
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`IPR2020-01053
`United States Patent No. 9,815,827
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`For Ground 3
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`4. Whether claims 1-75 of the ‘827 Patent are obvious over Saji Patent
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`(EX-1009) in light of the prior art;
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`5. Whether Patent Owner failed to establish a nexus between alleged
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`objective indicia of non-obviousness and anything novel in the claims of
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`the ‘827 Patent. See Paper 20 (Petitioner’s Reply) pp. 27-29;
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`6. The difference between lack of weight gain “on average” and in
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`“a patient”. See Paper 20 (Petitioner’s Reply) p. 31;
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`7. Whether Patent Owner conceded that the prior art knew that “SM-13496”
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`was lurasidone. See Paper 20 (Petitioner’s Reply) pp. 26-27;
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`For Grounds 1, 2 and 3
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`8. Whether Dr. Stahl’s opinion regarding what Wong (EX-2032) taught to
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`be “necessary” (EX-2131 (Stahl) § 177) undermines Dr. Stahl’s
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`credibility as an expert witness. See Paper 20 (Petitioner’s Reply) p. 30;
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`9. Any Motions to Exclude or Motions to Strike.
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`{80268632:1}
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`3
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`IPR2020-01053
`United States Patent No. 9,815,827
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`Finally, Petitioner notes that Petitioner has not yet seen Patent Owner’s Sur-
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`Reply because it is not due until July 8, 2021. Therefore, at the Oral Argument
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`Petitioner may want to discuss matters included in Petitioner’s Sur-Reply.
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`Dated: July 1, 2021
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` By: /s/ Louis H. Weinstein
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`Louis H. Weinstein
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`Reg. No. 45,205
`Counsel for Petitioner Slayback
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`Pharma LLC
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`CERTIFICATE OF SERVICE
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`I, Louis H. Weinstein, certify that I caused to be served true and correct
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`copies of public versions of Petitioner’s Request for Oral Argument by e-mail,
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`as follows:
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`Chad Shear
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`shear@fr.com
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`Dorothy Whelan whelan@fr.com
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`Michael Kane
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`kane@fr.com
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`IPR46094-0002IP1 IPR46094-0002IP1@fr.com
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`Dated: July 1, 2021
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` By: /s/ Louis H. Weinstein
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` Louis H. Weinstein
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` Reg. No. 45,205
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`{80268632:1}
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`4
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