Paper No. __
`Filed: February 25, 2016
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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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`COALITION FOR AFFORDABLE DRUGS VI LLC
`Petitioner,
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`v.
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`CELGENE CORPORATION
`Patent Owner
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`________________
`
`Case IPR2015-01096
`Patent 6,315,720
`________________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO SUBMIT SUPPLEMENTAL INFORMATION
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`Filed: February 25, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`COALITION FOR AFFORDABLE DRUGS VI LLC
`Petitioner,
`
`v.
`
`CELGENE CORPORATION
`Patent Owner
`
`________________
`
`Case IPR2015-01096
`Patent 6,315,720
`________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`
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`Patent Owner Supplemental Information Opposition Motion
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`IPR2015-01096
`Patent 6,315,720
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`Coalition for Affordable Drugs VI LLC (“CFAD”) seeks to introduce three
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`documents as supplemental information. It alleges that these documents
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`“confirm[] public accessibility/availability of FDA Meeting Transcripts (Ex. 1013,
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`1014) and CDC Minutes (Ex. 1015) . . . .” Paper 36 at 2-3. Two documents are
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`information disclosure statements (“IDS”) that were submitted to the Patent and
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`Trademark Office (“PTO”) in 2011—more than a decade after the patent at issue in
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`this IPR, U.S. Patent No. 6,315,720 (the “’720 patent”), was filed—in connection
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`with other patents that are not at issue in this IPR. The other is a Federal Register
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`notice announcing a meeting held by the Centers for Disease Control (“CDC”).
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`None of the documents are proper supplemental information. CFAD’s motion
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`should be denied for two reasons.
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`First, CFAD fails to allege, let alone establish, that the supplemental
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`information meets the requirements of 37 C.F.R. § 42.123(a). A party seeking to
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`submit supplemental information under 37 C.F.R. § 42.123(a) must show that it is
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`“relevant to a claim for which the trial has been instituted.” CFAD acknowledges
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`in a co-pending motion to submit supplemental information that, for supplemental
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`information regarding the alleged public availability of a reference to be “relevant
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`to a claim for which the trial has been instituted,” the Board must have actually
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`instituted trial on that reference. See IPR2015-01102, Paper 37 at 1 (“The Board
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`included this Menill reference in the ground on which it instituted the trial. . . . As
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`- 1 -
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`Patent Owner Supplemental Information Opposition Motion
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`IPR2015-01096
`Patent 6,315,720
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`such, the supplemental information for Menill . . . is relevant to a claim for which
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`the trial has been instituted.”).
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`CFAD does not and cannot make any similar assertion here. Instead, CFAD
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`expressly admits that its supplemental information relates to references upon which
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`“trial has not been instituted.” Paper 36 at 1 (“In this proceeding, trial has not
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`been instituted . . . based on FDA Meeting Transcripts . . . or CDC minutes.”)
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`(emphasis added).
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`Thus, CFAD’s request to submit supplemental information regarding the
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`alleged public accessibility/availability of non-instituted references in this case is
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`much different than where the Board has allowed the same type of supplemental
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`information for instituted references in other cases. See, e.g., Crestron Elecs. v.
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`Intuitive Bldg. Controls, Inc., IPR2015-01379, Paper 27 at 3-4 (Feb. 2, 2016)
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`(permitting supplemental information relevant to the public availability of
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`“references upon which trial was instituted”); Palo Alto Networks, Inc. v. Juniper
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`Networks, Inc., IPR2013-00369, Paper 37 at 3 (Feb. 5, 2015) (finding supplemental
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`information regarding alleged public availability of certain references was related
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`to a claim for which trial had been instituted because those “references serve[d] as
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`the basis for the grounds of unpatentability authorized in this proceeding”).
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`Because the supplemental information at issue in this motion is unrelated to
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`a claim for which trial has been instituted, CFAD’s motion should be denied.
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`- 2 -
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`Patent Owner Supplemental Information Opposition Motion
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`IPR2015-01096
`Patent 6,315,720
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`Second, CFAD’s motion lacks merit because the supplemental information
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`cannot “confirm[] public accessibility/availability,” as CFAD mistakenly alleges.
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`See Paper 36 at 3. Indeed, the Federal Circuit has repeatedly held that the
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`submission of a reference as part of an IDS does not constitute an admission that a
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`cited reference is prior art. See, e.g., ResQNet.com, Inc. v. Lansa Inc., 594 F.3d
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`860, 866 (Fed. Cir. 2010); Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d
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`1274, 1279 (Fed. Cir. 2003). The Board has held the same. See, e.g., L-3
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`Commc’n Holdings v. Power Survey, LLC, IPR2014-00832, Paper 9 at 16-17 (Nov.
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`14, 2014). Further, in this case, the IDS’s that CFAD seeks to introduce as
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`supplemental information were submitted to the PTO during prosecution of patents
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`other than the ’720 patent, and in 2011—more than a decade after the
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`’720 patent’s October 2000 filing date. The IDS’s are simply not relevant to the
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`’720 patent’s validity.
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`The Board has also held that a Federal Register (“FR”) notice announcing a
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`meeting is insufficient to show that any alleged minutes from or transcript of that
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`meeting “actually was made available to the extent that interested, ordinarily
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`skilled persons, exercising reasonable diligence, could have located it [before the
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`patent-at-issue’s critical date].” Coal. for Affordable Drugs III LLC v. Jazz
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`Pharms., Inc., IPR2015-01018, Paper 17 at 14-15 (Oct. 15, 2015) (emphasis
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`original). Here, the “CDC Minutes” that CFAD submitted as Ex. 1015 appear to
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`- 3 -
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`Patent Owner Supplemental Information Opposition Motion
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`IPR2015-01096
`Patent 6,315,720
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`have been obtained through a Freedom of Information Act request that was made
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`in October 2003 (Ex. 1015 at 1-2)—three years after the ’720 patent’s filing date.
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`The FR notice does not show that the “CDC Minutes” were actually available any
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`earlier and, thus, both the FR notice and the “CDC Minutes” are irrelevant to a
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`claim for which trial has been instituted for this additional reason.
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`*
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`*
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`*
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`For the foregoing reasons, the Board should deny CFAD’s motion.
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`Patent Owner Supplemental Information Opposition Motion
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`IPR2015-01096
`Patent 6,315,720
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`Date: February 25, 2016
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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)
` Andrew S. Chalson (pro hac vice)
` Eric C. Stops (Reg. No. 51,163)
` Frank C. Calvosa (Reg. No. 69,064)
` QUINN EMANUEL URQUHART &
` SULLIVAN, LLP
` 51 Madison Avenue, 22nd Floor
` New York, NY 10010
` Tel: (212) 849-7000
` Fax: (212) 849-7100
` nickcerrito@quinnemanuel.com
` ericstops@quinnemanuel.com
` andrewchalson@quinnemanuel.com
` frankcalvosa@quinnemanuel.com
`
`Anthony M. Insogna (Reg. No. 35,203)
`J. Patrick Elsevier (Reg. No. 44,668)
`JONES DAY
`12265 El Camino Real
`Suite 200
`San Diego, CA 92130
`Tel: (858) 314-1200
`Fax: (858) 314-1150
`aminsogna@jonesday.com
`jpelsevier@jonesday.com
`
`Gasper J. LaRosa
`JONES DAY
`222 E 41st Street
`New York, NY 10017
`Tel: (212) 326-3939
`Fax: (212) 755-7306
`gjlarosa@jonesday.com
`
`Attorneys for Celgene Corporation
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`- 5 -
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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
`
`________________
`
`COALITION FOR AFFORDABLE DRUGS VI LLC
`Petitioner,
`
`v.
`
`CELGENE CORPORATION
`Patent Owner
`
`________________
`
`Case IPR2015-01096
`Patent 6,315,720
`________________
`
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`CERTIFICATE OF SERVICE
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
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`TO SUBMIT SUPPLEMENTAL INFORMATION was served on February 25,
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`2016, by filing this documents through the Patent Review Processing System, as
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`well as e-mailing a copy to sarah.spires@skiermontderby.com,
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`parvathi.kota@skiermontderby.com, and paul.skiermont@skiermontderby.com.
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`Date: February 25, 2016
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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)
` 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
`
`Lead Counsel for Celgene Corporation
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