From: Trials
`To: Tobin, David; Trials
`Cc: Corey Casey; Sitzman, Mike; Best, Timothy; Raymond.Miller; Endejann, Nicole; Chad Landmon;
`mdeming@polsinelli.com; James Murphy
`Subject: RE: IPR2025-00464, -465, -466: Petitioner"s Request for Authorization to File a Motion to Strike
`Date: Monday, April 13, 2026 2:01:31 PM
`Attachments: image001.png
`Counsel,
`
`Patent Owner’s request for authorization to file a motion to strike pursuant to its
`email below is granted. The due dates and page limits for briefing are provided below.
`
`-- Patent Owner’s opening brief in support of the motion (due no later than 4/20/2026,
`and limited to 10 pages)
`-- Petitioner’s opposition to the motion (due no later than 4/27/2026, and limited to 10
`pages)
`-- Patent Owner’s reply in support of the motion (due no later than 5/4/2026, and
`limited to 5 pages)
`
`Regards,
`
`Andrew Kellogg,
`Deputy Chief Clerk, Trials
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571) 272-5366
`
`
`
`
`From: Tobin, David <dtobin@mcdermottlaw.com>
`Sent: Tuesday, April 7, 2026 7:21 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Corey Casey <CCasey@Polsinelli.com>; Sitzman, Mike <msitzman@mcdermottlaw.com>; Best,
`Timothy <tbest@mcdermottlaw.com>; Raymond.Miller <Raymond.Miller@us.dlapiper.com>; Endejann,
`Nicole <Nicole.Endejann@us.dlapiper.com>; Tobin, David <dtobin@mcdermottlaw.com>; Chad Landmon
`<clandmon@polsinelli.com>; mdeming@polsinelli.com; James Murphy <jpmurphy@polsinelli.com>
`Subject: IPR2025-00464, -465, -466: Petitioner's Request for Authorization to File a Motion to Strike
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding,
`clicking on links, or opening attachments.
`
`
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`
`
`
`
`
`Dear Honorable Board,
`
`Patent Owner requests authorization to file a motion to strike in the above-captioned
`proceedings regarding: (a) exhibits filed with Petitioner’s Reply briefs, but not cited or
`discussed in the briefs; and (b) new theories of invalidity that exceed the permissible scope of
`reply. See Trial Practice Guide §§ II.I, II.K (last updated 12/12/2025).
`
`Exhibits not cited in Petitioner’s Reply: Exhibits 1072-1075, 1079, and 1080 were filed on
`March 31, 2026, with Petitioner’s Reply, but were not cited or discussed in the brief itself. See
`37 C.F.R. §§ 42.6(a)(3); see also 37 C.F.R. §§ 42.22(a)(2), 42.23(a); Cisco Sys., Inc. v. C-Cation
`Techs., LLC, IPR2024-00454, Paper 12 at 9-10 (P.T.A.B. Aug. 29, 2014) (informative).
`
`New theories of invalidity: Patent Owner seeks to strike Exhibits 1075-1076 and 1079, as
`well as a portion of Dr. Donovan’s declaration (Exhibit 1078) and portion of Petitioner’s Reply,
`for raising new theories of invalidity that should have been addressed in the petition. This
`includes: (a) new theories of why the prior art discloses the claimed species, i.e., the linear
`(“n”) isomer of the claimed n-dodecyl beta-D-maltoside; and (b) prosecution histories of the
`prior-art references to rewrite the disclosures of the prior art.
`
`Consistent with the schedule from the Board’s email on other issues (Ex. 3004), Patent
`Owner requests an opening brief of 10 pages, a Petitioner’s opposition brief of 10 pages, and
`a Patent Owner reply in support of its motion of 5 pages.
`
`Petitioner was provided with a draft of this email and states its position as follows: “Petitioner
`opposes Patent Owner’s requests. All arguments in the Petitioner Reply brief are proper as
`they provide rebuttal to the Patent Owner’s response and rely on the same legal theories
`raised in the petition. The exhibits identified by Patent Owner were submitted to support the
`arguments in Petitioner’s Reply. Exhibits not cited directly in Petitioner’s Reply brief but that
`are cited in expert declarations or depositions provide context and are properly considered by
`the Board.”
`
`If the Board requests a conference call, Petitioner and Patent Owner could be available:
`Friday, April 10 from 11 am-2pm Eastern; and Monday, April 13 any time after 1pm Eastern.
`
`
`Respectfully,
`
`David Tobin
`Counsel for Patent Owner Neurelis, Inc.
`
`David Tobin
`Partner
`
`
`
`
`
`
`
`T: +1 214 210 2793
`dtobin@mcdermottlaw.com | LinkedIn
`McDermott Will & Schulte LLP | mcdermottlaw.com
`2801 North Harwood Street | Suite 2600 | Dallas, TX 75201 | USA
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