`571-272-7822
`
`
`
`
`
` Paper 7
`Entered: June 2, 2015
`
`
`
`
`
`
`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.
`____________
`
`Cases IPR2015-00990 and IPR2015-01093
`(Patent 7,056,886 B2)1
`_______________
`
`Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The parties
`are authorized to use this style heading when filing a single paper in each
`proceeding, provided that such heading includes a footnote attesting that “the
`word-for-word identical paper is filed in each proceeding identified in the
`heading.”
`
`
`
`IPR2015-00990 and IPR2015-01093
`Patent 7,056,886 B2
`
`
`On May 29, 2015, Judges Snedden, Green, and Bonilla conducted a
`
`conference call with respective counsel for Petitioner and Patent Owner.
`
` Patent Owner requested the call to seek authorization to file a motion
`
`for additional discovery. During the call, Patent Owner contended that the
`
`Petitioner failed to name all relevant investors and identify them as real
`
`parties-in-interest (RPI). Patent Owner contended that Petitioner’s
`
`undisclosed investors are real parties-in-interest because those undisclosed
`
`investors provided the funds for the Petitions and stand to gain or lose
`
`depending on an outcome in the cases.
`
`During the call, Petitioner responded that the Petitions identify a
`
`number of RPIs, and that no other entity has the authority to control the
`
`proceedings or is obligated to fund expenses associated with the Petitions.
`
`After hearing the respective positions of the parties, the panel conferred
`
`and concluded that additional briefing was warranted. The panel authorized
`
`Patent Owner to file a motion for additional discovery of no more than 15
`
`pages due by June 3, 2015. The panel also authorized Petitioner to file an
`
`opposition to the motion, also of no more than 15 pages due by June 10, 2015.
`
`Patent Owner was authorized to file a reply to the opposition of no more than
`
`5 pages due by June 15, 2015.
`
`In authorizing the filing of the motion, the panel cautioned Patent
`
`Owner that a motion for additional discovery is unlikely to be granted if it is
`
`unduly broad and encompasses numerous documents that are irrelevant to the
`
`RPI issue. We refer the parties to Garmin International, Inc. v. Cuozzo Speed
`
`Technologies LLC., Case No. IPR2012-00001 (PTAB March 5, 2013) (Paper
`
`26), as laying out factors that we will consider in deciding whether to grant
`
`Patent Owner’s motion for additional discovery. We also point the parties to
`
`
`
`2
`
`
`
`IPR2015-00990 and IPR2015-01093
`Patent 7,056,886 B2
`
`additional guidance in the following cases: Dr. Farmwald and RPX Corp. v.
`
`Parkervision, Inc., Case No. IPR2014-00946 (PTAB Feb. 20, 2015) (Paper
`
`25); VMware, Inc. v. Good Technology Software, Inc., Case No. IPR2014-
`
`01324 (PTAB Dec. 5, 2014) (Paper 25); Zerto, Inc. v. EMC Corp., Case No.
`
`IPR2014-01254 (PTAB Nov. 25, 2014) (Paper 15); Unified Patents Inc. v.
`
`Dragon Intellectual Property, LLC, Case No. IPR2014-01252 (PTAB Feb.
`
`17, 2015) (Paper 39). For additional guidance on real party-in-interest
`
`generally, see, e.g., Aruze Gaming Macau, LTD v. MGT Gaming, Inc., Case
`
`No. IPR2014-01288, slip op. at 5–20 (PTAB Feb. 20, 2015) (Paper 13); TRW
`
`Automotive US LLC v. Magna Electronics Inc., Case No. IPR2014-01497,
`
`slip op. at 6–11 (PTAB Mar. 19, 2015) (Paper 7); Shopkick Inc. v. Novitaz,
`
`Inc., Case IPR2015-00279, slip op. at 10–15 (PTAB May 29, 2015) (Paper 7).
`
`Patent Owner, in its motion, should identify specifically what discovery
`
`it requests and include a showing as to why the discovery of each item is in
`
`the interest of justice. Moreover, a party requesting discovery should already
`
`be in possession of some evidence to show beyond mere speculation that
`
`something useful will be uncovered. A request for additional discovery
`
`should not encompass publicly available information that the party has the
`
`ability to obtain without the need for discovery.
`
`
`
`It is:
`
` ORDERED, that Patent Owner is authorized to file a motion for
`
`additional discovery. The motion is to be no more than 15 pages, and is due
`
`no later than June 3, 2015;
`
`
`
`3
`
`
`
`IPR2015-00990 and IPR2015-01093
`Patent 7,056,886 B2
`
`
` FURTHER ORDERD, that Petitioner may file an opposition to the
`
`motion for additional discovery. The opposition is to be no more than 15
`
`pages, and is due no later than June 10, 2015; and
`
` FURTHER ORDERED, that Patent Owner is authorized to file a reply
`
`to the opposition. The reply is to be no more than 5 pages, and is due no later
`
`than June 15, 2015.
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2015-00990 and IPR2015-01093
`Patent 7,056,886 B2
`
`
`
`
`For PETITIONER:
`
`Jeffrey D. Blake
`Matthew L. Fedowitz
`MERCHANT & GOULD P.C.
`jblake@merchantgould.com
`mfedowitz@merchantgould.com
`
`For PATENT OWNER:
`
`Joseph R. Robinson
`Heather Morehouse Ettinger
`Dustin B. Weeks
`TROUTMAN SANDERS LLP
`joseph.robinson@troutmansanders.com
`heather.ettinger@troutmansanders.com
`dustin.weeks@troutmansanders.com
`
`
`
`5
`
`