Paper No. 47
`Filed: March 25, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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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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`CELEGENE CORPORATION
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`PATENT OWNER
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`___________________
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`Case IPR2015-01102
`Patent 6,315,720
`___________________
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION PURUSUANT TO 37 C.F.R. § 42.123(a)
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`Filed: March 25, 2016
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`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 VI LLC
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`PETITIONER
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`V.
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`CELEGENE CORPORATION
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`PATENT OWNER
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`
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`___________________
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`Case IPR2015-01102
`Patent 6,315,720
`___________________
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`
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION PURUSUANT TO 37 C.F.R. § 42.123(a)
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`Where a party has sought to submit information that confirms the public
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`Case IPR2015-01102
`Patent 6,315,720
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`accessibility of a prior art reference at issue in the trial, the Board has repeatedly
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`found such evidence to be proper supplemental information. See, e.g., Biomarin,
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`IPR2013-00534, Paper 80 at 5 (granting motion under stricter standard of §
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`42.123(b)); Valeo North Am., Inc. v. Magna Elecs, Inc., IPR2014-01204, Paper 26
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`at 2-5 (Apr. 10, 2015); Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
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`IPR2013-00369, Paper 37 at 2-5 (Feb. 5, 2014); Motorola Sol’ns, Inc. v. Mobile
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`Scanning Techs, LLC, IPR2013-00093, Paper 39 at 2 (Jul. 16, 2013). As the Board
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`has recognized, “a trial is, first and foremost, a search for the truth.” Edmund
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`Optics, Inc., v. Semrock, Inc., IPR2014-00599, Paper 44 at 4 (May 5, 2015)
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`(granting motion to submit supplemental information) (citing TechSearch LLC v.
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`Intel Corp., 286 F.3d 1360, 1378 (Fed. Cir. 2002)).
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`A party seeking to submit supplemental information under 37 C.F.R. §
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`42.123(a) must show that it is “relevant to a claim for which the trial has been
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`instituted.” Patent Owner incorrectly argues that “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.” (Paper 43 at 1.) To the contrary, the Board has
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`repeatedly granted motions to submit supplemental information regarding the
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`public availability or reliability of background references upon which the Board
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`1
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`did not actually institute trial. See Apple Inc. v. VirnetX, Inc., IPR2015-00810,
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`Case IPR2015-01102
`Patent 6,315,720
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`Paper 21 at 6 (Nov. 2, 2015) (granting motion to submit supplemental information
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`“proffered solely on the limited issue of whether Aventail Connect was publicly
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`available prior to the effective date,” where the Aventail Connect reference was not
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`a reference upon which the Board instituted trial in that IPR (see Paper 8 at 23,
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`Sept. 11, 2015)); Shire Dev. LLC v. Lucerne Biosciences, LLC, IPR2014-00739,
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`Paper 23 at 3 (Mar. 12, 2015) (granting motion to submit supplemental information
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`regarding FDA approval of a drug”); Edmund Optics, Inc., IPR2014-00599, Paper
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`44 at 4 (granting motion to submit supplemental information regarding the
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`reliability of a reference upon which the Board instituted trial). Similarly, here,
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`Exhibits 1012-14—for which Petitioner seeks to submit supplemental information
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`as to their public availability—are used to explain the state of the art which would
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`have led a POSA to combine the references upon which the Board instituted trial.
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`Thus, the supplemental information the Petitioner seeks to admit is “relevant to a
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`claim for which the trial has been instituted.”
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`Patent Owner additionally argues that “CFAD’s motion lacks merit because
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`the supplemental information cannot ‘confirm[] public accessibility/availability,’
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`as CFAD mistakenly alleges” because “the submission of a reference as part of an
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`IDS does not constitute an admission that a cited reference is prior art.” (Paper 43
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`at 3.) However, Petitioner does not suggest that the submission of an IDS is an
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`2
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`admission that a cited reference is material prior art. Instead, Petitioner relies upon
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`Case IPR2015-01102
`Patent 6,315,720
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`the IDS citations for Patent Owner’s admissions of fact in those citations
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`concerning the CDC Minutes (Ex. 1014) and the NIH Minutes (Exs. 1012-13).1
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`While the mere citation of a reference in an IDS is not an admission that the
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`cited references are material prior art—a number of cases illustrate that admissions
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`of fact made in an IDS—submitted pursuant to a duty of candor, good faith, and
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`honesty upon which the public is entitled to rely—are relevant and bind the
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`applicant to the facts admitted. See, e.g., Stamps.com Inc. v. Endicia, Inc., 437 Fed.
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`1 Patent Owner makes much over the fact that, of the information Petitioner seeks
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`to submit, “[t]wo documents are information disclosure statements (“IDS”) that
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`were submitted to the Patent and Trademark Office (“PTO”) in 2011—more than a
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`decade after the patent at issue in this IPR, U.S. Patent No. 6,045,501 (the “’501
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`patent”), was filed—in connection with other patents that are not at issue in this
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`IPR.” (Paper 43 at 1.) However, Patent Owner’s argument omits critical
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`information. For instance, one IDS that Petitioner submits—Ex. 1074—was
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`submitted by Patent Owner for a patent relating back to the ’501 patent. The other
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`IDS relates back to U.S. Patent No. 6,315,720, which is an improvement over the
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`’501 patent. Moreover, these IDS citations are Patent Owner admissions regarding
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`Exhibits 1012-14, regardless of the time when Patent Owner filed its IDSs.
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`3
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`Appx. 897, 903 (Fed. Cir. 2011) (finding printed publication based in part on IDS
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`Case IPR2015-01102
`Patent 6,315,720
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`statement, as well as absence of evidence rebutting IDS statement); In re Lister,
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`583 F.3d 1307, 1313–17 (Fed. Cir. 2009) (finding reference publicly available
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`based on IDS statements; ultimately holding IDS statements at issue did not admit
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`date of availability); Clock Spring v. Wrapmaster, Inc., 560 F.3d 1317, 1326 (Fed.
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`Cir. 2009) (IDS statements of fact regarding a public presentation admit facts for
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`alleged prior public use); Glaxo Wellcome, Inc. v. Impax Labs., Inc., 356 F.3d
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`1348, 1355–56 (Fed. Cir. 2004) (statements of fact in IDS including titles of
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`references applied against patentee as factual evidence showing patentee’s
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`knowledge of the IDS facts admitted).
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`Specifically, Patent Owner disputes that each “exhibit is what Petitioner
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`claims it is,” as well as “any alleged public accessibility/availability of the
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`exhibits.” (Paper 23 at 1.) However, in the IDSs that Petitioner seeks to submit as
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`supplemental information, the Patent Owner acknowledges that the exhibits are in
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`fact what the Petitioner states they are. Thus, the supplemental IDS citations help
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`to confirm the public accessibility of two prior art references at issue in the trial.
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`Similarly, the Federal Register citation that Petitioner seeks to submit also
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`helps to confirm the public accessibility of the CDC Minutes reference at issue.
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`While Patent Owner argues that the Federal Register citation should not be allowed
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`because it, by itself, is insufficient to confirm the public accessibility of the CDC
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`4
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`Minutes, the Board has never required that a reference, on its own, must be able to
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`Case IPR2015-01102
`Patent 6,315,720
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`confirm the public accessibility of another reference. Instead, the Board has
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`repeatedly allowed multiple supplemental references to confirm the public
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`accessibility of a single reference. See Apple Inc., IPR2015-00810, Paper 21 at 6-8
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`(granting motion to submit three exhibits “proffered solely on the limited issue of
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`whether Aventail Connect was publicly available” and six exhibits with respect to
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`the public accessibility of an additional reference); Valeo North Am., IPR2014-
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`01204, Paper 26 at 2-5 (granting motion to submit six exhibits “as evidence to
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`confirm the public accessibility of the Broggi reference”); Palo Alto Networks,
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`IPR2013-00369, Paper 37 at 2; (granting motion to submit nine exhibits “as
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`evidence to confirm the public accessibility of the Julkunen and Brenton
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`references”). Because the Federal Register citation helps to confirm the public
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`accessibility of the CDC Minutes, it is proper supplemental information.
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`March 25, 2016
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`
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`Dr. Parvathi Kota (Reg. No. 65,122)
`Paul J. Skiermont (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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`5
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`Respectfully submitted,
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`/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
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`CERTIFICATE OF SERVICE
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`Case IPR2015-01102
`Patent 6,315,720
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`I hereby certify that on March 25, 2016, a copy of this Motion was served
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`via email upon the following:
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`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
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`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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`Date: March 25, 2016
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`/Sarah E Spires/
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