IPR2015-00990; -01093
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
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`COALITION FOR AFFORDABLE DRUGS II LLC,
`
`Petitioner,
`
`v.
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`NPS PHARMACEUTICALS, INC.
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`Patent Owner.
`____________
`
`
`Cases IPR2015-00990 and IPR2015-01093
`(Patent 7,056,886 B2)1
`
`
`PATENT OWNER’S RESPONSE TO INTRODUCTION IN PETITIONER’S
`RESPONSE TO MOTION PRESENTING PATENT OWNER’S
`OBSERVATIONS REGARDING CROSS-EXAMINATION
`OF ANTHONY PALMIERI, Ph.D.
`
`
`
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`
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`1 Pursuant to the Board’s Scheduling Order in these IPRs, “the word-for-word
`identical paper is filed in each proceeding identified in the heading.” See, e.g.,
`IPR2015-00990, Paper 29, footnote 1.
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`28621181v1
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`IN THE 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
`
`
`PATENT OWNER’S RESPONSE TO INTRODUCTION IN PETITIONER’S
`RESPONSE TO MOTION PRESENTING PATENT OWNER’S
`OBSERVATIONS REGARDING CROSS-EXAMINATION
`OF ANTHONY PALMIERI, Ph.D.
`
`
`
`
`
`
`1 Pursuant to the Board’s Scheduling Order in these IPRs, “the word-for-word
`identical paper is filed in each proceeding identified in the heading.” See, e.g.,
`IPR2015-00990, Paper 29, footnote 1.
`
`28621181v1
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`IPR2015-00990; -01093
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`I.
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`Introduction
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`This is in response to Petitioner’s objections in the Introduction to its
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`Response to Patent Owner’s Observations Regarding Cross-Examination of
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`Anthony Palmieri, Ph.D. See, e.g., IPR2015-00990, Paper 58 (“Paper 58”) at 1-5.
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`Petitioner objects to the Observations because they are allegedly formatted
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`improperly, are too long, are argumentative, and introduce new exhibits. Petitioner
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`is incorrect because the Observations:
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`(1)
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` use a three-part format as suggested by the Board (i.e., identify the
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`witness and testimony, cite to Petitioner’s Reply and Reply Declaration, and
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`briefly explain the relevancy of the testimony to Petitioner’s submissions);
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`(2)
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`(3)
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`(4)
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`scrupulously avoid any argument;
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`refer to prior inconsistent testimony of Petitioner’s witnesses; and
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`do not introduce “new” evidence.
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`II. The Observations Identify the Exhibit, Testimony, and Relevant
`Portions of the Reply and Reply Declaration Completely and Succinctly
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`Each Observation meets all of the Board’s criteria for Observations. The
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`cross-examination transcript exhibit number (Ex. 2171) is identified in the first
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`paragraph of each paper. Pages and lines of the transcript are clearly identified by
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`“page:lines” citations. The witness is identified, and citations to the transcript are
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`given in each Observation. Patent Owner’s format avoids repetition of non-
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`substantive introductory recitals about the same Exhibit, while completely and
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`IPR2015-00990; -01093
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`succinctly providing everything the Board requires in form, order, and substance.
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`These Observations are for two IPRs and concern over 400 pages of Reply
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`cross-examination testimony by the witness, much of it inconsistent and disrupted
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`by baseless objections from Petitioner’s counsel. Patent Owner’s format allowed a
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`single, identical 15 page paper (rather than requesting more pages merely for
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`repetitive non-substantive recitals) to be filed in the two IPRs, as instructed by the
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`Board. Citations to entire passages rather than just several lines of testimony were
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`often needed due to the witness’ constant requests to have questions repeated, his
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`reluctance or refusal to give straight answers to simple questions, and his tendency
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`to give testimony unconnected to the questions asked. His testimony to a lack of
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`knowledge or memory about the substance of his declarations in these IPRs spans
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`many pages. Furthermore, the citations are appropriate to provide context for the
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`testimony to avoid objections that the testimony was misrepresented in the
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`Observations. The Board has accepted multiple citations in an Observation. See,
`
`e.g., Farmwald v. Parkervision, Corp, IPR2014-00947, Paper 55.
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`It should be noted that Petitioner also made multiple citations (see, e.g.,
`
`IPR2015-00990, Paper 57) and multi-page citations (see, e.g.,id. at II.2., II.4., II.5.,
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`II.7., II.9., II.12., II.14., II.19., II.20., II.21.; Paper 56, Resp. II.A.ii., II.A. iii.,
`
`II.D.iii., II.H.i.), and did not use the precise phrasing suggested by the Board. See,
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`e.g., id. at Resp. to Obs. 1, 4, 5, 6, 9, 10.
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`28621181v1
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`IPR2015-00990; -01093
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`III. Each Observation Explains Its Relevancy in only Several Sentences
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`Each observation includes three or fewer sentences that explain the
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`relevancy of the cited cross-examination testimony, i.e., a short paragraph. Each
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`Observation includes citations to Petitioner’s Reply or the Witness’s Reply
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`Declaration showing to what the Observation relates. Finally, each Observation
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`suitably groups the testimony citations according to a common issue of relevance.
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`For example, Observation 1 is about testimony concerning Dr. Palmieri’s
`
`expertise; Observation 3 is about Dr. Palmieri’s view of Dr. Carpenter’s testimony;
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`Observation 5 is about Dr. Palmieri’s opinions of the ‘886 patent, etc. The
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`Observations are brief paragraphs that average only one-half page each.
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`IV. Patent Owner’s Observations Are Not Argumentative
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`Petitioner complains that Observation 3 is argumentative because it says that
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`Dr. Palmieri “misstated” what Dr. Carpenter said. Paper 58 at 3. That is a
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`statement of relevance based in fact, as the citations show.
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`Observations 24 and 25 are deemed argumentative because they state that
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`the cited testimony “evidences [Dr. Palmieri’s] lack of expertise and his use of
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`hindsight.” Id. at 3. Lack of expertise and hindsight are relevant issues in these
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`IPRs. Argument would include application of facts to law with reasons why the
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`citations demonstrate a lack of expertise and use of hindsight. The Observations
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`deliberately avoid that.
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`IPR2015-00990; -01093
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`It should be noted that in Petitioner’s Response to Observations, Petitioner
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`argues relevancy to Dr. Palmieri’s expertise and qualifications (Paper 58 at 5, 6), to
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`obviousness of the claims (id. at 7-9), in that the ‘886 patent does not recognize
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`any of the ‘complexities’” (id. at 7-8), in that the results in Figures 5 and 6 are not
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`surprising and unexpected (id. at 9), a “logical” correlation that can be drawn (id.
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`at 10), and in that testimony “demonstrates that that [sic] optimum pH can be
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`easily ascertained” (id. at 13). Petitioner’s double standard shows its objections
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`are baseless.
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`V. Contradictory Prior Testimony of the Petitioner’s Own Witnesses Is
`Allowed
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`Petitioner complains that Patent Owner cited testimony from Dr. Palmieri’s
`
`first cross-examination. Id. at 5. The citations to the first cross-examination show
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`that Dr. Palmieri previously testified differently than he did at his second cross-
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`examination. This is precisely the reason and need for Observations, especially
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`when cross-examination comes after the last substantive submissions.
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`Medtronic, Inc. v. Nuvasive, Inc., IPR2013-00506, -00507, -00508, Paper
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`37, p. 4, n. 2 does not support Petitioner. The Medtronic Board did not expect
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`earlier testimony of a different witness under the circumstances in that case.
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`Medtronic does not prohibit impeachment of a witness by showing that he took
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`two different, irreconcilable positions on the same issue in the same proceeding.
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`Nor does Medtronic prohibit rebuttal exhibits that were introduced during cross-
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`examination. Petitioner has waived any objections to any such exhibits according
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`IPR2015-00990; -01093
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`to 37 CFR 42.53(f)(8).
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`VI. Conclusion
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`The Observations are proper and in good form and should be considered.
`
`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
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`Dated: June 14, 2016
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`IPR2015-00990; -01093
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S RESPONSE TO
`
`INTRODUCTION
`
`IN PETITIONER’S
`
`RESPONSE TO MOTION PRESENTING PATENT OWNER’S
`
`OBSERVATIONS REGARDING CROSS-EXAMINATION OF ANTHONY
`
`PALMIERI, Ph.D. has been on attorney for Petitioner, served via electronic mail
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`on June 14, 2016, to the following addresses provided by Petitioner:
`
`Jeffrey D. Blake, Esq.
`jblake@merchantgould.com
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`Dated: June 14, 2016
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`Respectfully submitted,
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`/Dustin B. Weeks/
`Dustin B. Weeks, PTO Reg. No. 67,466
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`28621181v1
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