`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`METRICS, INC.
`Petitioner
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner
`_____________________
`
`U.S. Patent No. 8,129,431 to Sawa et al.
`Issue Date: March 6, 2012
`Title: Aqueous Liquid Preparation Containing 2-Amino-3-(4-bromobenzoyl)
`Phenylacetic Acid
`_____________________
`
`Inter Partes Review Nos.: IPR2014-01041
` _____________________
`
`PETITIONER’S OPPOSITION BRIEF
`ADDRESSING REAL PARTY-IN-INTEREST ISSUES RAISED IN
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`RELIEF REQUESTED ................................................................................. 1
`
`II. DISCUSSION ................................................................................................. 2
`
`A. Coastal is an Assumed Name of Petitioner Metrics and Not
`a Separate Legal Entity ....................................................................... 5
`
`B.
`
`The Legal Authority Does Not Treat a Business Name as a
`Separate Legal Entity that Would Require Listing Coastal
`as a RPI ................................................................................................. 7
`
`III. CONCLUSION ............................................................................................ 10
`
`
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`La Familia v. The Inspiration Networks, No. 13 CVS 1079, 2014 WL
`5342583 (N.C. Super. October 20, 2014) ............................................................... 9
`Pinkerton’s, Inc. v. Superior Court, 57 Cal. Rptr 2d 356 (Cal. Ct. of
`Appeal 1996) ...................................................................................................... 8-9
`Snowden v. Checkpoint Check Cashing, 290 F.3d 631 (4th Cir. 2002) ................. 8-9
`
`PATENT AND TRADEMARK OFFICE CASES
`In re Guan, No. 95/001,045, Decision Vacating Filing Date
`(P.T.A.B. Aug. 25, 2008).…………………………………………………..9-10
`
`FEDERAL STATUTES
`35 U.S.C. § 312(a)(2) ……………………………………………………………1,3
`35 U.S.C. § 312(e) ……………………………………………………………...….2
`
`REGULATIONS
`Patent Office Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012)……….2-3
`37 C.F.R. §42.1(b)…………………………………………………………………4
`
`
`
`ii
`
`
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to the Board’s e-mail of January 16, 2015, Petitioner Metrics, Inc.
`
`(“Metrics”) submits this Opposition Brief addressing the real party-in-interest
`
`(“RPI”) issues raised in Patent Owner’s Preliminary Responses (Paper 13,
`
`“Preliminary Response”).1 Patent Owner requests that the Board revoke the filing
`
`dates for Metrics’ Petitions for failure to comply with 35 U.S.C. § 312(a)(2),
`
`because “Metrics failed to identify Coastal as a real-party-in-interest.” (Paper 13 at
`
`2).2 This request has no merit because it is premised on the fiction that Metrics and
`
`Coastal are two separate legal entities. As the record plainly shows, “Coastal
`
`Pharmaceuticals” is solely a business name for Metrics—nothing more—and
`
`therefore does not need to be identified as a RPI.
`
`Accordingly, and for the reasons set forth below, the Board should reject
`
`Patent Owner’s request and grant institution of trial on the merits.
`
`
`1 Patent Owner raised identical RPI issues in each of IPR Nos. 2014-01041 and -
`
`01043. In this Opposition Brief, Petitioner will refer to the record in IPR 2014-
`
`01041, with the understanding that a corresponding reference appears in IPR 2014-
`
`01043. This Opposition is accompanied by four additional exhibits (EX1054 –
`
`EX1057), for which an updated Exhibit List will be separately filed.
`
`2 Other than the status of Coastal as a RPI, there are no material facts in dispute.
`
`DM2\5379951.1
`
`
`
`
`
`
`
`II. DISCUSSION
`Whether a party who is not a named participant in a given proceeding
`
`nonetheless constitutes a RPI to that proceeding is “a highly fact-dependent
`
`question.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug.
`
`14, 2012). The USPTO will apply traditional common-law principles and may
`
`consider certain factors, such as control over a party’s participation in a
`
`proceeding, when determining whether a party is a RPI. Id.
`
`The law is clear and consistent across many jurisdictions that a corporate
`
`entity using a business name, or a d/b/a (“doing business as”) name, does not
`
`create a legal entity in the name separate from the underlying corporate entity. For
`
`this reason, a business name or d/b/a, named as a separate party in litigation in
`
`addition to its underlying corporate entity, is routinely dismissed because the d/b/a
`
`name is not a separate legal entity from its underlying corporate entity. It follows,
`
`then, that a business name cannot be a RPI separate from its corporate entity.
`
`Indeed, as a registered business name for Metrics, Coastal Pharmaceuticals3
`
`(“Coastal”) could not, as Patent Owner contends, provide prior art to Metrics, or
`
`
`3 “Coastal Pharmaceuticals” and “Coastal Pharmaceuticals, Inc.” are both
`
`sometimes used as business names for Metrics. Neither is a separate legal entity
`
`from Metrics and together they are referred to herein as “Coastal.”
`
`2
`
`
`
`
`
`control or direct the arguments Metrics made in its Petitions. Coastal and Metrics
`
`share a single identical legal entity and are not “two parties.” Thus, they could not
`
`have “shared references and arguments, and acted in coordination, one on behalf of
`
`the other, each for the benefit of the other” (paper 13 at 16) because they are one
`
`and the same.
`
`A petition for inter partes review may be considered only if, inter alia, “the
`
`petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The PTO has
`
`explained that the purpose of identifying the RPI is twofold: (1) it ensures that the
`
`parties are properly identified to enforce compliance with the estoppel provision of
`
`35 U.S.C. § 315(e); and (2) it allows the Board to identify potential conflicts of
`
`interest. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. Here, listing
`
`Metrics’ business name, “Coastal,” as a RPI would not serve this purpose. As a
`
`trade name of Metrics, Coastal is inextricably linked to Metrics. Therefore, any
`
`decision or estoppel applied to Metrics will apply equally to Coastal, and there is
`
`no risk that Coastal could file a future petition for IPR or appear in court without
`
`Metrics.
`
`In its Preliminary Patent Owner Response, the Patent Owner failed to inform
`
`the Board that this same issue was addressed and resolved in the identified related
`
`litigation in New Jersey. In fact, a month before filing its Preliminary Response,
`
`Patent Owner conceded that Metrics and Coastal are “one and the same.”
`
`3
`
`
`
`
`
`(EX1056, “10/3/2014 Transcript of Proceedings” at 30:19). The Court then
`
`dismissed and terminated the case against Coastal as a d/b/a.4 Surprisingly, Patent
`
`Owner is now attempting to use this forum to reargue this very same issue,
`
`advancing a contrary position for the improper purpose of manufacturing a defect
`
`in Metrics’ Petitions in an effort to deny Petitioner of its rightful filing date. This
`
`is a tremendous waste of resources for Metrics and the Board, which undermines
`
`the purpose of the AIA (“just, speedy, and inexpensive resolution of every
`
`proceeding.”) 37 C.F.R. § 42.1(b).
`
`While not required, and in an effort to promptly resolve this issue, should the
`
`Board prefer, Petitioner agrees to amend the caption to read “Metrics, Inc. d/b/a
`
`Coastal Pharmaceuticals” provided that the Petitions are still afforded their original
`
`filing date, as it would be manifestly unfair to revoke the filing date of these
`
`Petitions. At most, amending the caption to reflect Metrics’ d/b/a name, without
`
`revoking the filing date, would not only be sufficient to clarify the record, it would
`
`also be consistent with the other IPR petitions identified in the Patent Owner’s
`
`Preliminary Response. (See Paper 13 at footnote 3).
`
`
`
`
`4 In a second-filed New Jersey action, Patent Owner again consented to dismiss
`
`Coastal because it is a d/b/a name of Metrics. (See EX1057)
`
`4
`
`
`
`
`
`A. Coastal is an Assumed Name of Petitioner Metrics and Not a
`Separate Legal Entity
`
`Coastal is a d/b/a “assumed name” of Metrics, as evidenced by documents
`
`filed in Metrics’ home state of North Carolina. (EX1054, “Corporate Certificate of
`
`Assumed Name”). In the related New Jersey litigation, before Patent Owner raised
`
`this issue to the Board, Metrics submitted a sworn affidavit from Stefan Cross,
`
`President of Metrics, attached herein as EX1055, clearly stating that Coastal is not
`
`a recognized separate entity and is used in the marketplace to distinguish Metrics’
`
`contract services business segment from its pharmaceutical products business. Id.
`
`at ¶¶ 12-13.
`
`The issue of whether Coastal could be named as a separate entity in the New
`
`Jersey litigation was resolved when Patent Owner consented to dismissing Coastal
`
`because Coastal is not anything other than a trade name for Metrics, agreeing that
`
`Coastal and Metrics are “one and the same.”
`
`THE COURT: Well, I think that the defendants are
`saying, Mr. Gaudet, correct me if I am wrong, that
`Coastal Pharmaceuticals is not a juridical party, it's not
`anything other than a trade name. Is that right?
`
`MR. GAUDET5: That's correct, your Honor. The only
`type of registration that we're aware of is a registration to
`
`
`5 Counsel for Defendants, including Petitioner Metrics.
`
`5
`
`
`
`
`
`do business in certain states under the trade name but
`referencing back
`to Metrics,
`Inc., which
`is
`the
`jurisdictional capable party, so to speak, and so our view
`is simply Coastal Pharmaceuticals would necessarily rise
`and fall with Metrics, Inc.
`
`THE COURT: And you're
`incorporated in any state?
`
`representing
`
`it's not
`
`MR. GAUDET: Yes, your Honor.
`
`MR. HASFORD6: So we're fine with that, your Honor.
`They've represented that Coastal is a d/b/a of Metrics
`and we're fine with that representation as being one
`and the same.
`
`THE COURT: So may I enter an Order that dismisses
`without
`prejudice
`the
`claims
`against Coastal
`Pharmaceuticals without prejudice to pursuing any such
`claims against Metrics?
`
`MR. HASFORD: Of course.
`(EX1056 at 30:2-23).
`
`Patent Owner relies on Metrics’ statements to the New Jersey court that
`
`Coastal and Metrics are privies and that any judgment binding one would bind the
`
`other. (Paper 13 at 17-18). But naturally Coastal would be bound by any
`
`judgment against Metrics because Coastal is just an assumed business name for
`
`
`6 Counsel for Plaintiffs, including Patent Owner Senju.
`
`6
`
`
`
`
`
`Metrics, and not a separate entity. Metrics’ statements in court are not an
`
`admission that Metrics and Coastal are two different entities, but exactly the
`
`opposite. It is precisely because Coastal is just a d/b/a that Metrics was
`
`comfortable (as the Court suggested) agreeing that Coastal would be bound by any
`
`judgment against Metrics to eliminate any potential doubt or prejudice because
`
`Metrics knew—as it told the Court—that there was no other entity out there that
`
`was being left out of the case. (EX1056 at 31:5-12).
`
`Furthermore, the fact that Metrics chose to file its ANDA in the name of
`
`Coastal is consistent with Mr. Cross’s declaration that Metrics uses the name
`
`Coastal to distinguish its pharmaceutical business from its Metric Contract
`
`Services business. (EX1055 at ¶12). Patent Owner’s arguments asserting that
`
`Coastal is “a straw man” for Metrics and allegations that Coastal “controlled the
`
`references and arguments” in the petition (paper 13 at 18) have no merit and ignore
`
`the basic fact that Coastal is just a name and couldn’t have played a “role” in, or
`
`“exercised control” over, anything. This is not a situation, as Patent Owner
`
`implies, where another unidentified entity is controlling Metrics’ IPR Petition,
`
`acting behind the scenes to identify prior art and make arguments for Metrics.
`
`B.
`
`The Legal Authority Does Not Treat a Business Name as a
`Separate Legal Entity that Would Require Listing Coastal as a
`RPI
`It is well established that the use of d/b/a or ‘doing business as’ to associate
`
`7
`
`
`
`
`
`a trade name with a corporation does not create a legal entity in the trade name
`
`separate from the corporation. See, e.g., Snowden v. Checkpoint Check
`
`Cashing, 290 F.3d 631, 634-35, n.2 (4th Cir. 2002); Pinkerton’s, Inc. v. Superior
`
`Court, 57 Cal. Rptr 2d 356, 360 n.1 (Cal. Ct. of Appeal 1996)(citing to consistent
`
`treatment of assumed/trade names from nearly a dozen different jurisdictions).7
`
`Rather, a trade name is merely descriptive of the corporation. Id. As a matter of
`
`law, therefore, Coastal cannot be a RPI because it is nothing more than a d/b/a
`
`trade name of Metrics and, therefore, is not its own separate legal entity.
`
`Pinkerton, 57 Cal. Rptr. 2d. at 360.
`
`For this reason, courts have routinely held that it would be “nonsensical” to
`
`maintain an action against both a legal entity and its assumed name. Id. (holding
`
`that an action dismissed as to a corporation under its legal name must also be
`
`dismissed against its fictitious name).8 Indeed, as explained in Pinkerton: “[i]f a
`
`
`7 In Pinkerton, the Court provided a summary of the case law from several other
`
`jurisdictions and found that other jurisdictions have reached the same conclusion.
`
`See, Pinkerton, 57 Cal. Rptr. 2d at 360-361.
`
`8 See also, e.g., Snowden, 290 F.3d at 634-35, n.2 (“[P]laintiffs also named
`
`CheckPoint as a defendant. As previously explained, CheckPoint is merely a trade
`
`name for Elite. As such, CheckPoint is not a separate legal entity capable of being
`
`8
`
`
`
`
`
`plaintiff sued “Mark Twain” for money damages, and Samuel Clemens appeared in
`
`court, explained “Mark Twain” was the fictitious name he used for publishing
`
`purposes, responded to the complaint as Samuel Clemens, and obtained Samuel
`
`Clemens’ dismissal from the case, could the plaintiff then continue to pursue the
`
`action against “Mark Twain”? Of course not!” Pinkerton, 57 Cal. Rptr. 2d. at 357.
`
`Metrics’ use of the trade name “Coastal” is no different than Samuel
`
`Clemens’ use of the pen name “Mark Twain,” because in both cases the real actor
`
`is identified without reference to the assumed name. Metrics’ decision to conduct
`
`certain business activities under the Coastal trade name does not change the fact
`
`that it is Metrics, not some other legal entity named Coastal, who is the RPI.
`
`In support of its position, Patent Owner cites to In re Guan, Control No.
`
`95/001,045, Decision Vacating Filing Date, at 8 (“Guan”). Guan is inapplicable
`
`here and is easily distinguishable from the instant matter. In Guan, Petitioner Troll
`
`Busters established a website where it identified its primary function to be the
`
`
`sued.”); La Familia Cosmovision, Inc. v. The Inspiration Networks, No. 13 CVS
`
`1079, 2014 WL 5342583, at *5 (N.C. Super. October 20, 2014) (“For the same
`
`reason that it would be nonsensical to name the same entity or individual twice as a
`
`party to an action, a plaintiff cannot maintain an action against both a legal entity
`
`and its assumed name.”).
`
`9
`
`
`
`
`
`filing of requests for inter partes reexamination in its own name to maintain the
`
`anonymous nature of the real party or parties behind the filing. Guan, at pp. 2, 8.
`
`As a result, the Board vacated Petitioner’s filing date based, in part, on the fact that
`
`Troll Busters could not act as a “shill” to shield the identity of the real party or
`
`parties in interest. Id. Here, Metrics is not acting as a “shill” to conceal the
`
`identity of Coastal. Patent Owner was fully aware, prior to filing its Preliminary
`
`Responses in these IPRs, that Coastal is a business name for Metrics and even
`
`agreed that that Metrics and Coastal are “one and the same.” EX1056 at 30:19.
`
`III. Conclusion
`For the reasons discussed herein, Petitioner respectfully requests that the
`
`Board reject Patent Owner’s request to revoke the filing date of Metrics’ IPR
`
`Petitions. As an alternative, Petitioner agrees to amend the caption of its Petitions
`
`to reflect that Coastal is a d/b/a name for Metrics, provided that doing so does not
`
`impact the filing date for the Petitions.
`
`
`
` RESPECTFULLY SUBMITTED,
`DUANE MORRIS LLP
`
`Date: January 21, 2015
`
`
`
`/Patrick D. McPherson/
`Patrick D. McPherson
`Registration No. 46,255
`Duane Morris LLP
`505 9th Street, Suite 1000
`Washington, DC 2004
`(202) 776-7800
`
`Attorney for Petitioner Metrics, Inc.
`
`10
`
`
`
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 21st day
`
`of January 2015, a complete copy of the foregoing Petitioner’s Opposition Brief
`
`Addressing Real Party-In-Interest Issues Raised In Patent Owner’s Preliminary
`
`Response, along with all supporting exhibits and Petitioner’s Updated Exhibit List,
`
`were served via e-mail on counsel for Patent Owner at:
`
`M. Andrew Holtman
`Andy.Holtman@finnegan.com
`Jonathan R.K. Stroud
`Jonathan.Stroud@finnegan.com
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`
`
`
` By:
`
`
`
`
`
`
`
`
`
`
`
` /Josh Staples /
`Josh Staples
`Duane Morris LLP
`505 9th Street, N.W., Suite 1000
`Washington, D.C. 20004
`(202) 776-7800
`
`
`
`
`
`
`
`
`
`
`
`
`
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