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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SLAYBACK PHARMA LLC,
`Petitioner,
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`v.
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`SUMITOMO DAINIPPON PHARMA CO., LTD.,
`Patent Owner.
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`_________________
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`Case IPR2020-01053
`U.S. Patent 9,815,827
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`PATENT OWNER’S NOTICE OF APPEAL
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`Proceeding No.: IPR2020-01053
`Attorney Docket: 46094-0002IP1
`Pursuant to 35 U.S.C. §§ 141(c) and 142 and 37 C.F.R. § 90.2(a), Sumitomo
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`Pharma Co., Ltd.1 (“Patent Owner”) hereby respectfully appeals to the United
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`States Court of Appeals for the Federal Circuit from the Patent Trial and Appeal
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`Board’s (“Board’s”) Final Written Decision in Case No. IPR2020-01053, entered
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`on January 20, 2022 (Paper 32) and the Board’s Decision on Rehearing entered on
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`July 26, 2022 (Paper 35), as well as from all other underlying orders, decisions,
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`rulings, and opinions that are adverse to Patent Owner. This appeal is timely under
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`35 U.S.C. § 142, 37 C.F.R. § 90.3, Federal Rule of Appellate Procedure 15(a)(1),
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`and Federal Circuit Rule 15(a)(1).
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), the issues in Patent Owner’s appeal may
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`include, but are not limited to:
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`(1)
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` The Board’s legally erroneous institution, followed by its ultra vires
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`carrying on of a trial proceeding under a Section 112 theory that is
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`not permitted in IPRs, which led to its legally erroneous shift to a
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`basis for rejection in its final written decision that played no part in
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`its institution decision;
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`1 Patent Owner Sumitomo Dainippon Pharma Co., Ltd. changed its name to
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`Sumitomo Pharma Co., Ltd. effective April 1, 2022.
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`1
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`Proceeding No.: IPR2020-01053
`Attorney Docket: 46094-0002IP1
`the Board’s determination of the unpatentability of claims 1-75 of
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`(2)
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`U.S. Patent No. 9,815,827 over Saji, U.S. Patent No. 5,532,372; and
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`(3)
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`any and all findings or determinations supporting or related to the
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`aforementioned issues, as well as other issues decided adversely to
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`Patent Owner in any orders, decisions, rulings, or opinions.
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`Pursuant to 37 C.F.R. § 90.2(a) and 37 C.F.R. § 90.2(a)(1), Patent Owner is
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`filing a copy of this Notice of Appeal with the Director, and a copy of the Notice
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`of Appeal is being filed electronically with the Patent Trial and Appeal Board. In
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`addition, pursuant to Federal Circuit Rule 15(a)(1) and 37 C.F.R. § 90.2(a)(2), a
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`copy of this Notice of Appeal, along with the required docketing fees, is being
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`electronically filed with the Clerk’s Office for the United States Court of Appeals
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`for the Federal Circuit.
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`2
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`Date: September 26, 2022
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`Proceeding No.: IPR2020-01053
`Attorney Docket: 46094-0002IP1
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`Respectfully submitted,
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` /W. Chad Shear/
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`W. Chad Shear, Reg. No. 47,938
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` Attorney for Patent Owner
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`Proceeding No.: IPR2020-01053
`Attorney Docket: 46094-0002IP1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on September 26, 2022, a complete and entire copy of this Patent Owner’s
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`Notice of Appeal was provided via email to the Petitioner by serving the
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`correspondence address of record as follows:
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`Louis H. Weinstein
`Patrick G. Pollard
`Windels Marx Lane & Mittendorf, LLP
`1 Giralda Farms
`Madison, NJ 07940
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`E-mail: lweinstein@windelsmarx.com
`ppollard@windelsmarx.com
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`Proceeding No.: IPR2020-01053
`Attorney Docket: 46094-0002IP1
`I hereby certify that, in addition to being filed electronically through the
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`Board’s E2E System, the original version of the foregoing Notice of Appeal was
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`filed by hand on September 26, 2022, with the Director of the United States Patent
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`and Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 1 OB20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`I hereby certify that on September 26, 2022, a true and correct copy of the
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`foregoing Notice of Appeal, along with a copy of the Final Written Decision, was
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`filed electronically with the Clerk’s Office of the United States Court of Appeals
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`for the Federal Circuit, at the following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
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`Date: September 26, 2022
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` /W. Chad Shear/
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`W. Chad Shear, Reg. No. 47,938
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` Attorney for Patent Owner
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`5
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