UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`COALITION FOR AFFORDABLE DRUGS II LLC
`Petitioner
`
`v.
`
`NPS PHARMACEUTICALS, INC.
`Patent Owner
`____________
`
`Case IPR2015-01093
`Patent 7,056,886
`
`____________
`
`PATENT OWNER’S MOTION TO DEEM THE FILING OF PATENT
`OWNER’S EXHIBITS 2042-2055, 2057-2074, & 2076-2149 AS TIMELY
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`COALITION FOR AFFORDABLE DRUGS II LLC
`Petitioner
`
`v.
`
`NPS PHARMACEUTICALS, INC.
`Patent Owner
`____________
`
`Case IPR2015-01093
`Patent 7,056,886
`
`____________
`
`PATENT OWNER’S MOTION TO DEEM THE FILING OF PATENT
`OWNER’S EXHIBITS 2042-2055, 2057-2074, & 2076-2149 AS TIMELY
`
`
`
`I. Statement of Precise Relief Requested
`
`Patent Owner NPS Pharmaceuticals, Inc. (“NPS”) requests the Board to
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`deem the filing of Exhibits 2042-2055, 2057-2074, & 2076-2149 (“the Public
`
`Exhibits”) filed in support of Patent Owner’s Response (Paper 31) as timely.1
`
`Petitioner has advised that it does not oppose this motion.
`
`II. Statement of Material Facts
`
`1.
`
`Matthew Hu, NPS counsel’s paralegal, began filing NPS’s Response
`
`and Ex. 2040-2149 on January 20, 2016, at about 11:30 p.m.. Ex. 2161, ¶ 2.
`
`2.
`
`Realizing that the filing would not be completed prior to the 12:00
`
`a.m. deadline, NPS’s counsel instructed Mr. Hu to proceed first with filing, in
`
`IPR2015-00990, (1) the Response, (2) supporting expert declarations (Ex. 2040,
`
`2041 (unredacted) and Ex. 2148, 2149 (redacted), (3) confidential material filed
`
`under seal (Ex. 2056, 2075), (4) Patent Owner’s Combined Motion to File Under
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`Seal and for Entry of Protective Order, and (5) the Protective Order (Ex. 20502) so
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`1 Patent Owner is filing a similar motion in related proceeding IPR2015-00990. In
`
`this case, IPR2015-01093, the Public Exhibits include redacted expert declarations
`
`Ex. 2148-49, which were timely filed in IPR2015-00990.
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`2 Patent Owner has since realized that the Protective Order was inadvertently
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`labeled and filed as Ex. 2050, but it was referenced in the Motion as Ex. 2150.
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`Patent Owner, therefore, requests that the Board renumber Ex. 2050 as Ex. 2150.
`
`1
`
`
`
`that all non-public documents were timely filed. Id. at ¶ 3-4.
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`3.
`
`Mr. Hu completed filing the documents in ¶ 2 prior to 12:00 a.m. on
`
`January 21, 2016. Id. at ¶ 5; Ex. 2152; Ex. 2153; Ex. 2154.
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`4.
`
`NPS’s counsel then instructed Mr. Hu to file the corresponding
`
`documents in IPR2015-01093 to ensure timely filing there. Ex. 2161, ¶ 6.
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`5.
`
`Mr. Hu completed the filing of these documents prior to 12:00 a.m. on
`
`January 21, 2016, with the exception that the redacted declarations in IPR2015-
`
`01093 were filed at 12:02 a.m. Id. at ¶ 7; Ex. 2155; Ex. 2156; Ex. 2157.
`
`6.
`
`Once the documents described above in ¶ 2 & 4 were filed, NPS’s
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`counsel then instructed Mr. Hu to file the Public Exhibits in both IPRs. Id. at ¶ 8.
`
`7.
`
`Mr. Hu completed the filing of the Public Exhibits in IPR2015-00990,
`
`which took more than two hours and required separating certain exhibits into
`
`multiple parts due to size constraints at the Board’s site, at 2:25 a.m. on January
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`21, 2016. Id. at ¶ 9-10.; Ex. 2159.
`
`8.
`
`Mr. Hu completed the filing of the Public Exhibits in IPR2015-01093
`
`at approximately 3:50 a.m. on January 21, 2016; Id. at ¶ 12; Ex. 2158.
`
`9.
`
`Patent Owner has indicated it does not oppose the requested relief.
`
`III.
`
`Statement of Reasons for Relief Requested
`
`NPS began filing its Response, Motion, and associated exhibits prior to the
`
`filing deadline. Further, NPS timely filed its Response, Motion, and all non-
`
`2
`
`
`
`publicly available exhibits. Unfortunately, the filing of the Public Exhibits was not
`
`completed for approximately two and half hours in IPR2015-00990 and three hours
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`and fifty minutes in IPR2015-01093 after the filing deadline.
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`This late filing did not, result in any prejudice to Petitioner; indeed,
`
`Petitioner does not oppose this motion. On January 21, 2016, NPS provided
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`Petitioner with an electronic drop box containing copies of all filings and mailed
`
`via overnight delivery hard copies of all filings, after a discussion with Petitioner’s
`
`counsel, in order to mitigate any possibility of prejudice to Petitioner. Ex. 2161,
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`¶13-14; Ex. 2160, ¶ 2-3. NPS’s counsel also told Petitioner’s counsel that if
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`Petitioner perceived any prejudice, NPS would agree to an equivalent extension for
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`Petitioner’s responsive filing now due April 4, 2016. Ex. 2160, ¶ 4. Petitioner’s
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`counsel responded that such an extension may be requested since Petitioner’s
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`response is due the Monday after The 94th Annual Dinner in Honor of the Federal
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`Judiciary on Friday, April 1, 2016, at the Waldorf Astoria New York Hotel, which
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`will be likely attended by many members of the judiciary (including members of
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`the Board) and possibly Petitioner’s counsel. Id. at ¶ 5. On the other hand, the
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`Board’s failure to consider the Public Exhibits, which support arguments and
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`testimony in the Response and associated expert declarations, respectively, would
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`result in severe prejudice to NPS. Accordingly, NPS submits that it is in the
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`interest of justice for the Board to deem the Public Exhibits as being timely.
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`3
`
`
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`The filing deadline for a patent owner response is not a statutory
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`requirement but rather an intermediate one that was implemented by the Board’s
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`Scheduling Order and subsequently modified per the parties’ stipulation. See
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`Papers 29, 31. Accordingly, 37 C.F.R. § 42.5(c)(3) permits the Board to excuse
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`NPS’s late filing “upon a Board decision that consideration on the merits would be
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`in the interests of justice.” In considering the totality of the circumstances to
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`determine whether the interests of justice support excusing a late action, the Board
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`weighs the actual prejudice to the non-filing party with the prejudice to the filing
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`party by not considering the documents. See Universal Remote Control, Inc. v.
`
`Universal Electronics, Inc., IPR2014-1102, Paper 26, 2 (“Upon weighing the
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`prejudice to the Patent Owner of the one day late filing versus the prejudice to the
`
`Petitioner if we do not consider, on the merits, the replies and exhibits, we
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`determine that it is in the interests of justice to consider the late-filed documents”);
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`Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 19, 3
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`(granting opposed timeliness motion after weighing prejudice to petitioner from a
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`minimal filing delay against prejudice to patent owner of not considering its
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`response); Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00561,
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`Paper 40, 3-4 (granted timeliness motion after balancing the “severe prejudice” to
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`the filing party with “essentially no prejudice” to the other.); see also Callidus
`
`Software Inc. v. Versata Software, Inc. et al., CBM2013-00052, Paper 39, 2.
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`4
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`
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`Here, as in the cases above, Petitioner is not prejudiced by the late filing of
`
`the Public Exhibits. Further, NPS took steps to mitigate any potential prejudice by
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`ensuring the substantive and non-public documents were timely-filed and that only
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`public information was delayed by (1) immediately conferring with Petitioner’s
`
`counsel, (2) providing Petitioner with copies of the filings in electronic and hard
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`copy formats, and (3) agreeing to any request for an equivalent extension for
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`Petitioner’s Reply. NPS, however, would suffer severe prejudice if the Board does
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`not consider the Public Exhibits, which provide support for compelling arguments
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`and testimony in NPS’s Response, Motion, and accompanying declarations that are
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`directly relevant to the patentability of the claims at issue. These exhibits are
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`essential evidence that the Board should consider and upon which Patent Owner
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`has relied. Any inability of the Board to consider this evidence would contravene
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`justice, especially because Petitioner neither opposed this motion nor suffered any
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`prejudice by the delay a few hours of publicly available exhibits.
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`IV.
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`Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`deem the filing of the Public Exhibits as timely. NPS sincerely regrets any
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`inconvenience to the Board and the Petitioner caused by the brief delay and, in the
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`future, NPS will allocate ample time for filings.
`
`5
`
`
`
`Dated: January 29, 2016
`
`Respectfully submitted,
`/Joseph R. Robinson/
`Joseph R. Robinson, PTO Reg. No. 33,448
`Heather M. Ettinger, PTO Reg. No. 51,658
`Dustin B. Weeks, PTO Reg. No. 67,466
`Attorneys for Patent Owner
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Combined Motion to Deem the Filing of Patent Owner’s Exhibits 2042-
`
`2055, 2057-2074, & 2076-2149 as Timely, and associated exhibits were served via
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`electronic mail on January 29, 2015 on attorney for Petitioner:
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`Jeffrey D. Blake, Esq.
`jblake@merchantgould.com
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`Respectfully submitted,
`
`Dated: January 29, 2015
`
`/Dustin B. Weeks/
`Dustin B. Weeks, PTO Reg. No. 67,466
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