Paper No. 61
`Filed: June 23, 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,
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`PETITIONER,
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`V.
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`CELGENE CORPORATION,
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`PATENT OWNER.
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`
`
`___________________
`
`Case IPR2015-01096
`Patent 6,315,720
`___________________
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`
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`PETITIONER’S MOTION TO EXCLUDE PATENT OWNER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`Filed: June 23, 2016
`
`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
`___________________
`
`
`
`PETITIONER’S MOTION TO EXCLUDE PATENT OWNER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
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`
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`Petitioner hereby moves pursuant to 37 C.F.R. § 42.64(c) and the Federal
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`Rules of Evidence to exclude certain testimony elicited in Patent Owner’s cross-
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`examination of Dr. Jeffrey Fudin on the basis that it is irrelevant due to the
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`confusing, misleading, and unfairly prejudicial nature of the questions posed. See
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`Fed. R. Evid. 401–403; 37 C.F.R. § 42.62(a). In particular, Petitioner moves to
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`exclude the deposition testimony of Dr. Jeffrey Fudin (Ex. 2061) (“Fudin Dep.”) at
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`199:8–201:11, 328:19–329:2, and Patent Owner’s arguments thereon in its
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`Response (Paper No. 40) at 15–16. Petitioner’s counsel timely objected to this
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`testimony at deposition. (See Fudin Dep. at 199:15, 200:7, 200:15, 201:4, 201:11,
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`328:21.)
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`In its Response, Patent Owner misleadingly asserts that Dr. Fudin “insisted
`
`that his POSA ‘doesn’t need to design [the claimed] systems.’” (Paper No. 40 at 15
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`(citing Fudin Dep. at 199:8–200:9).) Patent Owner’s argument, however, relies on
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`the false pretense that U.S. Patent No. 6,315,720 (“’720 Patent”) claims systems,
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`when in fact the ’720 Patent instead only claims methods for delivering a drug to a
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`patient. (See Ex. 1001 at claims; Petitioner’s Reply (Paper No. 52) at 6–7.) See
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`NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1302 (Fed. Cir. 2005) (“the
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`concept of ‘use’ of a patented method or process is fundamentally different from
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`the use of a patented system or device”) (emphasis added), citing In re Kollar, 286
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`F.3d 1326, 1332 (Fed. Cir. 2002) (recognizing “the distinction between a claim to a
`
`
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`1
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`
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`product, device, or apparatus, all of which are tangible items, and a claim to a
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`process, which consists of a series of acts or steps….”).
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`The confusing nature of Patent Owner’s undefined reference to “systems”
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`was apparent at Dr. Fudin’s deposition, and was even expressly noted by Dr.
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`Fudin:
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` 4 Q. Do you think the inquiry here is about how
` 5 to use systems or about how to come up with the
` 6 system in the first place?
` 7 MS. SPIRES: Object to form.
` 8 A. I'm not really sure what this inquiry is
` 9 about.
`10 Q. (By Mr. Chalson) You rendered opinions
`11 about whether or not claims are obvious, and you're
`12 not sure whether the inquiry is about how to use a
`13 system versus how to design a system?
`14 A. I'm not sure --
`15 MS. SPIRES: Object to form.
`16 A. I'm not sure why you're asking me this
`17 series of questions….
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`(Fudin Dep. at 200:4–17.) Patent Owner’s counsel did not attempt to cure the form
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`objections raised by Petitioner’s counsel.
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`
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`Dr. Fudin testified that his POSA would be a clinician who “could” design
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`successful methods for risk management in delivering medication by drawing upon
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`
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`2
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`
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`the support of a “multi-disciplinary team.” (Fudin Dep. at 190:15–18, 192:10–14;
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`Ex. 1002 ¶ 16; see also Paper No. 52 at 6-7.) Dr. Fudin did not testify that his
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`POSA would be a computer engineer or administrator without clinical experience.
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`(See Paper No. 52 at 6.) Patent Owner’s questions at Dr. Fudin’s deposition and
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`corresponding reliance thereon in its Response concerning the ability of Dr.
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`Fudin’s POSA to design undefined “systems,” are confusing and bear no relevance
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`to the ability of a POSA to practice the methods that are actually claimed by the
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`’720 Patent.
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`
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`Pursuant to Federal Rules of Evidence 401–403, the Board should exclude
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`the deposition testimony of Dr. Fudin at 199:8–201:11, 328:19–329:2, and Patent
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`Owner’s arguments thereon in its Response (Paper No. 40) at 15–16. All of this
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`evidence suffers from the same deficiency of form concerning Patent Owner’s
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`counsel’s questions regarding “systems” that are not claimed by the ’720 Patent.
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`None of the resulting testimony makes a fact of consequence to this proceeding
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`more or less probable. See Fed. R. Evid. 401–402. The irrelevant testimony and
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`Patent Owner’s arguments thereon are confusing, misleading, and unfairly
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`prejudicial. See Fed. R. Evid. 403.
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`
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`For all the foregoing reasons, Petitioner respectfully requests the Board grant
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`Petitioner’s motion to exclude certain cross-examination testimony from Dr. Fudin
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`and strike the portions of Patent Owner’s Response that make reference to it.
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`3
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`
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`Respectfully Submitted,
`
`/Sarah E. Spires/
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT DERBY LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Petitioner
`
`Dr. Parvathi Kota (Reg. No. 65,122)
`Paul J. Skiermont (pro hac vice)
`Sadaf R. Abdullah (pro hac vice)
`SKIERMONT DERBY LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Petitioner
`
`
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`4
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`June 23, 2016
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Patent Owner a true and correct copy of the foregoing Petitioner’s
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`Motion to Exclude Patent Owner’s Evidence Pursuant to 37 C.F.R. § 42.64(c) by
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`electronic means on June 23, 2016, at the following addresses of record:
`
`Francis Cerrito
`nickcerrito@quinnemanuel.com
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`Eric C. Stops
`ericstops@quinnemanuel.com
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`Frank C. Calvosa
`frankcalvosa@quinnemanuel.com
`
`Anthony Insogna
`aminsogna@jonesday.com
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`J. Patrick Elsevier
`jpelsevier@jonesday.com
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`Gasper J. LaRosa
`gjlarosa@jonesday.com
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`Dated: June 23, 2016
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`Respectfully submitted,
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`/Sarah E. Spires/
`Sarah E. Spires (Reg. No. 61,501)
`Counsel for Petitioner
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