UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`AMNEAL PHARMACUETICALS, LLC. and
`PAR PHARMACEUTICAL, INC.
`Petitioner
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`Patent Owner
`
`
`
`
`
`_____________________
`
`Case IPR2015-00554
`Patent 7,668,730
`_____________________
`
`PETITIONER PAR PHARMACEUTICAL, INC.’S OPPOSITION TO PATENT
`OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`PURSUANT TO 37 C.F.R. § 42.51
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`AMNEAL PHARMACUETICALS, LLC. and
`PAR PHARMACEUTICAL, INC.
`Petitioner
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`Patent Owner
`
`
`
`
`
`_____________________
`
`Case IPR2015-00554
`Patent 7,668,730
`_____________________
`
`PETITIONER PAR PHARMACEUTICAL, INC.’S OPPOSITION TO PATENT
`OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`PURSUANT TO 37 C.F.R. § 42.51
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`I.
`
`BACKGROUND
`
`IPR2015-00554
` Patent No. 7,668,730
`
`Petitioner Par Pharmaceutical, Inc. (“Par Pharm. Inc.”) submits this
`
`opposition to Patent Owner Jazz Pharmaceutical, Inc.’s (“Jazz”) motion for
`
`additional discovery (Paper No. 27). Jazz seeks discovery of billing records
`
`regarding the preparation and filing of the Petitions in IPR2015-00545, -00546, -
`
`00547, -00548, -00551, and -00554 (the “Petitions”), and any employment
`
`agreements for Par Pharm. Inc.’s in-house counsel, Dr. Lawrence Brown and Mr.
`
`David Silverstein. The Board should reject Jazz’s motion, however, as it fails to
`
`demonstrate why the interests of justice require production of these documents.
`
`II. LEGAL STANDARDS
`Under 35 U.S.C. § 316(a)(1)(5), discovery in inter partes review
`
`proceedings is limited to the deposition of witnesses submitting affidavits or
`
`declarations and “what is otherwise necessary in the interests of justice.” The party
`
`requesting additional discovery must show that they meet the five Garmin factors,
`
`which include showing that there is “more than a possibility and mere allegation”
`
`of finding useful information, and no “ability to generate equivalent information by
`
`other means.” See Garmin Int’l. v. Cuozzo Speed Techs., No. IPR2012-00001,
`
`2013 WL 2023626, at *4 (P.T.A.B., Mar. 5, 2013).
`
`III. ARGUMENT
`Jazz seeks discovery that is allegedly relevant only to the issue of whether
`
`
`
`- 1 -
`
`
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`IPR2015-00554
` Patent No. 7,668,730
`Par Pharmaceutical Companies, Inc., Sky Growth Holdings I Corp., Sky Growth
`
`Holdings II Corp., and Par Pharmaceutical Holdings, Inc. (collectively, the “Par
`
`Parents”) are real-parties-in-interest to the Petitions in addition to Par Pharm. Inc.
`
`(Paper No. 27 at 3–4). Specifically, Jazz seeks (1) billing records submitted by Par
`
`Pharm. Inc.’s attorneys or Dr. Valuck to any Par Pharm. Inc. or the Par Parents to
`
`the extent they relate to the Petitions; and (2) employment agreements between
`
`David Silverstein/Lawrence Brown and Par Pharm. Inc. or the Par Parents. (See
`
`Ex. 2039). But Jazz cannot demonstrate that the requested discovery meets all five
`
`Garmin factors.
`
`A.
`
`Production of Billing Records is not in the Interests of Justice.
`1.
`Jazz Had the Ability to Generate Equivalent Information.
`Jazz offers no new evidence showing that any billing records they receive in
`
`discovery will not be duplicative of the testimony of Barry Gilman, Par Pharm.
`
`Inc.’s deputy general counsel and secretary. Mr. Gilman declared that “[Par Pharm.
`
`Inc.] was the only Par entity that paid any filing or legal fees associated with the
`
`preparation of the [Petitions]…. None of the Par Parents… [provided] or other
`
`compensation for the preparation and filing of the [Petitions].” (Ex. 1040, ¶ 7).
`
`That directly answers the one question to which billing records would be relevant.
`
`Jazz had the opportunity to depose Mr. Gilman regarding the basis of this
`
`statement on June 4, 2015. During that deposition, Jazz’s attorney spent a great
`
`
`
`- 2 -
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`
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`IPR2015-00554
` Patent No. 7,668,730
`deal of time asking Mr. Gilman about irrelevant matters outside of the scope of his
`
`declaration, including which Par entity issues his paycheck (Ex. 2033., 17, 22–23,
`
`26–30), his personal LinkedIn account (Id., 17–18, 49–50), and abstract questions
`
`regarding whether Par Pharm. Inc.’s legal department had ever been authorized to
`
`act on behalf of the Par Parents. (Id., 58–63). Mr. Gilman was neither “unwilling or
`
`unable” to provide further evidence at his deposition, as Jazz claims; rather, the
`
`Board had ordered that his deposition was to be limited to the subject matter of his
`
`Declaration. (See Paper No. 10 at 4–5). Jazz’s attorney never asked about his basis
`
`for stating that Par Pharm. Inc. paid for the Petitions or whether he had reviewed
`
`billing records, despite having more than an hour of unused deposition time
`
`remaining when Jazz closed the deposition. (See Ex. 2033, 68).
`
`Jazz’s Request is Based on a Mere Allegation.
`
`2.
`Jazz has no basis for stating that the information sought will be inconsistent
`
`with Mr. Gilman’s testimony, other than making “the logical inference” that Par’s
`
`refusal to produce the records is that they “do not support Petitioner’s positions.”
`
`But the opposite is true: if Par Pharm. Inc. or its attorneys had submitted bills to
`
`any of the Par Parents, those would be inconsistent with positions Par took, and Par
`
`would have been obligated to produce them with its Reply of May 26, 2015. (See
`
`37 C.F.R. §42.51(b)(1)(iii)). Additionally, Par Pharm. Inc. and its attorneys have a
`
`duty of candor
`
`to
`
`the Board
`
`to
`
`identify real-parties-in-interest; Jazz’s
`
`
`
`- 3 -
`
`
`
`IPR2015-00554
` Patent No. 7,668,730
`unsubstantiated “inference” also infers that Par Pharm. Inc.’s attorneys violated
`
`that duty. (See 37 C.F.R. §42.11). Other reasons exist for not wanting to produce
`
`billing records: they contain sensitive yet irrelevant material and privileged
`
`information that Par Pharm. Inc. does not wish to waste money on reviewing,
`
`redacting, and producing to Jazz. Further, the engagement letter for Dr. Valuck
`
`could reveal work product or privileged information, e.g., whether Par Pharm. Inc.
`
`is working with him as a non-testifying consultant in the related litigation.
`
`B.
`
`Production of David Silverstein or Lawrence Brown’s
`Employment Agreements is not in the Interests of Justice.
`1.
`Mr. Silverstein and Dr. Brown’s employment agreements would be relevant
`
`Jazz Already Generated Equivalent Information.
`
`and not duplicative only if agreements with any of the Par Parents exist. Jazz has
`
`no basis to believe that is true. Mr. Gilman testified that both Dr. Brown and Mr.
`
`Silverstein were employed on behalf of Par Pharm. Inc. by a subsidiary called
`
`“Par, Inc.,” which renders corporate services to Par Pharm. Inc. (See Ex. 2033, 43–
`
`48). Mr. Gilman also declared that the Par Parents do not employ Dr. Brown and
`
`Mr. Silverstein (See Ex. 1040, ¶ 6) based on knowledge that they “generally do not
`
`have employees.” (Ex. 2033 at 44). Jazz thus has equivalent information.
`
`2.
`
`Jazz’s Request is Based on Inadmissible Evidence and Mere
`Allegations.
`
`Jazz has no basis for stating that the information sought will be inconsistent
`
`with Mr. Gilman’s testimony, other than evidence already raised:
`- 4 -
`
`
`
`
`
`
`
`IPR2015-00554
` Patent No. 7,668,730
`
`
`
`and Mr. Silverstein’s personal LinkedIn profile.
`
` The second
`
`piece of “evidence” is clearly inadmissible hearsay, as Jazz has not provided
`
`evidence that David Silverstein’s personal LinkedIn profile constitutes a “party
`
`admission” regarding his employment in response to Par Pharm. Inc.’s objection.
`
`Moreover, if employment agreements between Dr. Brown/Mr. Silverstein
`
`and the Par Parents existed, Par Pharm. Inc. would have produced them with its
`
`Reply
`
`to
`
`the Patent Owner’s Preliminary Response.
`
`(See 37 C.F.R.
`
`§42.51(b)(1)(iii)). The fact that it did not both indicates Jazz is speculating as to
`
`their existence, and Mr. Gilman’s testimony circumscribes the whole of the matter.
`
`IV. CONCLUSION
`For the foregoing reasons, the Board should deny Jazz’s request to seek
`
`production of the documents requested in Exhibit 2039.
`
`
`
`
`
`
`- 5 -
`
`
`
`Date: August 28, 2015
`ARENT FOX LLP
`1717 K Street, NW
`Washington, DC 20006
`202.857.6000
`XYREM@arentfox.com
`
`
`IPR2015-00554
` Patent No. 7,668,730
`Respectfully Submitted,
`
`Bradford Frese
`Registration No. 69,772
`Attorney for Petitioner
`
`
`
`- 6 -
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`
`IPR2015-00554
` Patent No. 7,668,730
`Certificate of Service
`
`
`The undersigned hereby certifies that the above-captioned PETITIONER
`
`PAR PHARMACEUTICAL, INC.’S OPPOSITION TO PATENT OWNER’S
`
`MOTION FOR ADDITIONAL DISCOVERY PURSUANT TO 37 C.F.R. § 42.51,
`
`was served in its entirety on August 28, 2015, upon the following parties via
`
`Electronic Mail:
`
`F. Dominic Cerrito
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue
`22nd Floor
`New York, NY 10010
`NickCerrito@quinnemanuel.com
`
`John V. Biernacki
`Jones Day
`North Point
`901 Lakeside Avenue
`Cleveland, OH 44114
`JVBiernacki@JonesDay.Com
`
`
`Date: August 28, 2015
`ARENT FOX LLP
`1717 K Street, NW
`Washington, DC 20006
`202.857.6000
`XYREM@arentfox.com
`
`
`
`
`
`Respectfully Submitted,
`
`Bradford Frese
`Registration No. 69,772
`Attorney for Petitioner
`
`- 1 -
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