Paper No. __
`Filed: August 25, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`AMNEAL PHARMACEUTICALS LLC and PAR PHARMACEUTICAL, INC.
`
`Petitioners,
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`v.
`
`JAZZ PHARMACEUTICALS, INC.
`
`Patent Owner
`
`________________
`
`Case IPR2015-00554
`
`Patent 7,668,730
`________________
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`PURSUANT TO 37 C.F.R. § 42.51(b)(2)
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`PROTECTIVE ORDER MATERIAL
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`Filed: August 25, 2015
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`AMNEAL PHARMACEUTICALS LLC and PAR PHARMACEUTICAL, INC.
`
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`
`Patent Owner
`
`________________
`
`Case IPR2015-00554
`
`Patent 7,668,730
`________________
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`PURSUANT TO 37 C.F.R. § 42.51(b)(2)
`
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`PROTECTIVE ORDER MATERIAL
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`TABLE OF CONTENTS
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`Page
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`I.
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`BACKGROUND ............................................................................................. 1
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`II.
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`THE DISCOVERY SOUGHT IS IN THE INTERESTS OF JUSTICE ......... 2
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`A. More Than A Mere Allegation or Possibility ....................................... 2
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`B. Not Seeking Litigation Positions Or Underlying Bases........................ 4
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`C. No Ability To Generate Equivalent Discovery By Other Means ......... 5
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`D.
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`The Requested Discovery Is Easily Understandable ............................ 5
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`E.
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`The Requested Discovery Is Not Overly Burdensome ......................... 5
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`III. CONCLUSION ................................................................................................ 5
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`PROTECTIVE ORDER MATERIAL
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`Patent Owner Motion for Additional Discovery
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`I.
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`BACKGROUND
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`IPR2015-00554
` Patent 7,668,730
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`Pursuant to 37 C.F.R. § 42.51 (b)(2) and the Board’s August 20, 2015 email
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`(Ex. 2038), Jazz Pharmaceuticals, Inc. (“Jazz”) submits this motion for additional
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`discovery regarding Petitioners’ failure to name all real parties in interest (“RPI”).
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`In its April 30, 2015 Preliminary Response, Jazz argued inter alia, that the
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`Petition should not be considered due to Petitioners’ failure to identify all RPI.
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`Paper 10 at 9-23. Pursuant to the Board’s Order, Petitioners responded to that
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`argument on May 26 and Jazz replied on June 9. Papers 11, 13, 17. On July 29,
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`the Board instituted trial based on the then-current evidence of record, relying on
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`Par Pharmaceutical, Inc. (“Par Inc.”) representative Barry Gilman’s declaration for
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`many of its RPI findings. Paper 20 at 13-19 (citing Ex. 1040).
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`Mr. Gilman’s declaration, however, was unsupported by any underlying
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`documentation and relied, in part, on “information and belief.” See Ex. 1040. And
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`Mr. Gilman was unable and/or unwilling to provide further evidence at his
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`deposition. See generally Ex. 2033. Therefore, on August 6, Jazz requested that
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`Petitioners provide a narrow set of specific documents to clarify the RPI issue: (1)
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`specific billing records for this Petition and (2) employment agreements for Mr.
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`Silverstein and Mr. Brown—the two individuals that Mr. Gilman testified are
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`responsible for this Petition. See Ex. 2039 at 3. The parties exchanged emails
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`regarding Jazz’s request, but Petitioners refused to produce anything. On August
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`PROTECTIVE ORDER MATERIAL
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`Patent Owner Motion for Additional Discovery
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`IPR2015-00554
`Patent 7,668,730
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`19, Jazz sought the Board’s intervention, which authorized this motion.
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`II. THE DISCOVERY SOUGHT IS IN THE INTERESTS OF JUSTICE
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`The Board may authorize additional discovery if it is shown to be in the
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`“interests of justice.” 37 C.F.R. § 42.51(b)(2). As shown below, Jazz’s discovery
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`requests satisfy the five Garmin factors applied by the Board. See Garmin Int’l,
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`Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6-7 (Mar. 5, 2013).
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`A. More Than A Mere Allegation or Possibility
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`Jazz satisfies the first Garmin factor, which requires “more than a mere
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`allegation or possibility that something useful will be discovered.” Id. As
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`discussed below, based on Mr. Gilman’s testimony, and evidence showing that Mr.
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`Brown and Mr. Silverstein are employed by Par Inc.’s parent companies, it is
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`beyond speculation that useful information exists in the requested records.
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`Petitioners do not deny that the requested billing and employment records
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`exist. Instead, they oppose the discovery by asserting that Mr. Gilman already
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`testified to these issues and that “Jazz simply cannot seek discovery on the mere
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`possibility that it might find something inconsistent with Mr. Gilman’s declaration
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`or testimony. . . .” Ex. 2040 at 1. But Mr. Gilman’s declaration did not address
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`billing or employment records (Ex. 1040), and he was evasive when asked
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`questions he perceived to be outside the scope of his declaration. Further, neither
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`Petitioners nor Mr. Gilman relied on billing or employment records when claiming
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`PROTECTIVE ORDER MATERIAL
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`Patent Owner Motion for Additional Discovery
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`IPR2015-00554
`Patent 7,668,730
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`that Mr. Silverstein and Mr. Brown are employed by only Par Inc., and that Par
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`Inc. is the “sole Par entity responsible for directing, controlling, and funding” the
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`IPR. Ex. 1040 at ¶7; see also Paper 13 at 4, 7. The logical inference is that the
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`withheld records do not support Petitioners’ assertions.
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`Billing records relating to this IPR will clearly be useful for determining the
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`RPI. See Paper 20 at 17-18 (discussing who funded the IPR); Corning Optical
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`Commn’cs v. PPC Broadband, IPR2014-00440, Paper 68 at 17, 20-21 (Aug. 18,
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`2015) (documents showing funding of IPR useful for RPI determination). At his
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`deposition, Mr. Gilman was either unwilling or unable to provide definitive
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`answers regarding any questions related to payment, revenues, and authorization to
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`perform work on behalf of Par Inc.’s parent companies. See Ex. 2033 at 15-22, 26-
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`30, 39-40, 53-56, 58-61.
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`The employment agreements will also provide useful information regarding
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`which Par entity is employing the individuals “call[ing] the shots as it pertains to
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`the [IPR].” Paper 20 at 17; see also Corning, IPR2014-00440, Paper 68 at 18
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`(employer of attorney directing RPI is useful for IPR determination). Jazz
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`presented evidence that Mr. Silverstein holds himself out as an employee of only
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`unnamed RPI Par Pharmaceutical Companies, Inc. (“Par Co.”) on LinkedIn (Ex.
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`2025),
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`PROTECTIVE ORDER MATERIAL
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`Patent Owner Motion for Additional Discovery
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`IPR2015-00554
`Patent 7,668,730
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`1
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` Moreover, Mr. Gilman’s declaration did not include or refer to
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`employment agreements or any documentary evidence of Mr. Silverstein’s and Mr.
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`Brown’s employment. Indeed, Mr. Gilman specifically testified that he did not
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`speak to Mr. Silverstein or Mr. Brown, or look at employment records, to confirm
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`his assertions. Ex. 2033 at 44-45, 48-49, 65-68.
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`B. Not Seeking Litigation Positions Or Underlying Bases
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`Jazz is not seeking discovery prohibited by the second Garmin factor. To
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`the extent that Petitioners claim that the billing records are privileged, that
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`privilege is applicable only to the extent that the bills “reveal something about the
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`[legal] advice sought or given.” Avgoustis v. Shinseki, 639 F.3d 1340, 1345 (Fed.
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`Cir. 2011). “[T]he identity of the client, the case name for which payment was
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`made, the amount of the fee, and the general nature of the services performed . . .
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`[are] not privileged.” Clarke v. Am. Commerce Nat'l Bank, 974 F.2d 127, 129-30
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`(9th Cir. 1992) (reversing privilege finding). Jazz seeks only information
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`regarding who was billed for the IPRs; any privileged information can be redacted.
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`1 Petitioners erroneously objected to Ex. 2025 as irrelevant, prejudicial, and
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`hearsay. Paper 23, ¶ 9. It is relevant and non-prejudicial to the RPI issue, and is a
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`party admission. FRE 801(d)(2)(D).
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`PROTECTIVE ORDER MATERIAL
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`IPR2015-00554
`Patent Owner Motion for Additional Discovery
`Patent 7,668,730
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`C. No Ability To Generate Equivalent Discovery By Other Means
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`
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`Jazz does not have the ability to generate equivalent discovery by any other
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`means. Petitioners are the only ones in possession of the discovery sought. As
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`discussed above, Mr. Gilman did not or would not provide this information during
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`his deposition; readily available documents will provide the RPI evidence.
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`D. The Requested Discovery Is Easily Understandable
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`Jazz’s requests are easily understandable. They seek production of a narrow
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`set of specifically identified documents, and the instructions accompanying those
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`requests are similar to those approved by the Board in IPR2014-00735, Ex. 2002.
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`E.
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`The Requested Discovery Is Not Overly Burdensome
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`Jazz seeks only a narrow set of specifically identified documents that would
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`be expected to be kept in very specific locations. For example, employment
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`agreements in the human resources department and billing records in the legal or
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`accounting department. Compliance would not require substantial time, effort, or
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`financial resources, and would not adversely impact the schedule in this review.
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`The requested materials likely encompass no more than a handful of documents.
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`III. CONCLUSION
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`For the foregoing reasons, the Board should grant Patent Owner’s motion.
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`The discovery is in the interests of justice. It would be unjust and prejudicial to
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`Jazz to be required to defend the validity of its patents in an IPR when Petitioners
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`have not satisfied the RPI threshold requirement for consideration of the Petition.
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`PROTECTIVE ORDER MATERIAL
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`Patent Owner Motion for Additional Discovery
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`IPR2015-00554
`Patent 7,668,730
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`Date: August 25, 2015
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` Respectfully submitted,
`
`By: /F. Dominic Cerrito (Reg. No. 38,100)/
` F. Dominic Cerrito (Reg. No. 38,100)
` Evangeline Shih (Reg. No. 50,170)
` Frank C. Calvosa (Reg. No. 69,064)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`General Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`
`John V. Biernacki
`Reg. No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`General Tel: (216) 586-3939
`Direct Tel: (216) 586-7747
`Fax: (216) 579-0212
`jvbiernacki@jonesday.com
`
`Attorneys for Jazz Pharmaceuticals, Inc.
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`PROTECTIVE ORDER MATERIAL
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`AMNEAL PHARMACEUTICALS LLC and PAR PHARMACEUTICAL, INC.
`
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`
`Patent Owner
`
`________________
`
`Case IPR2015-00554
`
`Patent 7,668,730
`________________
`
`
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`CERTIFICATE OF SERVICE
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`PROTECTIVE ORDER MATERIAL
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`
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`Patent Owner Motion for Additional Discovery
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`IPR2015-00554
` Patent 7,668,730
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that
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`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY PURSUANT
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`TO 37 C.F.R. § 42.51(b)(2) and accompany exhibits (Exhibits 2038-2040) were
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`served on August 25, 2015 by filing these documents through the Patent Review
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`Processing System, as well as e-mailing copies to aziz.burgy@arentfox.com,
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`bradford.frese@arentfox.com, and XYREM@arentfox.com.
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`Date: August 25, 2015
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` Respectfully submitted,
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`By: /F. Dominic Cerrito (Reg. No. 38,100)/
` F. Dominic Cerrito (Reg. No. 38,100)
` Evangeline Shih (Reg. No. 50,170)
` Frank C. Calvosa (Reg. No. 69,064)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`General Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`
`John V. Biernacki
`Reg. No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`General Tel: (216) 586-3939
`Direct Tel: (216) 586-7747
`Fax: (216) 579-0212
`jvbiernacki@jonesday.com
`Attorneys for Jazz Pharmaceuticals, Inc.
`
`
`
`PROTECTIVE ORDER MATERIAL
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