Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: June 9, 2015
`
`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 IPR2015-01092 (Patent 6,045,501)
`Case IPR2015-01096 (Patent 6,315,720)
`Case IPR2015-01102 (Patent 6,315,720)
`Case IPR2015-01103 (Patent 6,315,720)1
`______
`
`Before MICHAEL P. TIERNEY, MICHAEL W. KIM,
`JAQUELINE WRIGHT BONILLA, GRACE KARAFFA OBERMANN,
`and TINA E. HULSE, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`ORDER
`Authorizing Patent Owner’s Motion for Sanctions
`37 C.F.R. § 42.12
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in multiple proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`

`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`
`
`By email dated June 3, 2015, Patent Owner requested authorization to
`
`file a motion for sanctions in each of the above-captioned proceedings.
`
`Appendix (copy of email). On June 8, 2015, the Board (Judges Tierney,
`
`Kim, Obermann, and Hulse) conducted a telephone conference pertaining to
`
`that request. Mr. Nick Cerrito, arguing for Patent Owner, was accompanied
`
`by Mr. Andrew Chalson, Mr. Frank Calvosa, and Mr. Eric Stops. Ms. Sarah
`
`Spires, arguing for Petitioner, was accompanied by Dr. Parvathi Kota and
`
`Mr. Paul Skiermont.
`
`Patent Owner confirmed that it wishes to move for sanctions against
`
`Petitioner, but not Petitioner’s counsel. Specifically, Patent Owner
`
`requested authorization to move for dismissal of the Petitions as a sanction
`
`for abuse of process by Petitioner or its real parties-in-interest. 37 C.F.R.
`
`§ 42.12(a)(6), (b)(8). Based on the specific representations made during the
`
`telephone conference, we granted the requested authorization. Our decision
`
`was based on a determination that briefing will facilitate development of a
`
`complete record and, thereby, will promote the just resolution of the issues
`
`raised by Patent Owner. We emphasized that our grant of authorization to
`
`file a motion for sanctions is not a decision on the merits of Patent Owner’s
`
`allegation of abuse of process.
`
`We instructed the parties to address specifically in their briefs (1) the
`
`elements required to establish an abuse of process; (2) any evidence of intent
`
`that supports or undercuts the allegation of abuse of process in these cases;
`
`and (3) the standard of proof that applies when deciding a motion for
`
`2
`
`
`
`

`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`
`sanctions. We also set a schedule for briefing as follows. The motion for
`
`sanctions shall be filed on the same day as the Preliminary Response, if
`
`Patent Owner elects to file a Preliminary Response. If Patent Owner waives
`
`filing of a Preliminary Response, the motion for sanctions shall be filed no
`
`later than the due date for filing the Preliminary Response in each
`
`proceeding. Petitioner’s opposition to the motion for sanctions shall be due
`
`ten (10) business days after filing of the motion. Patent Owner’s reply to the
`
`opposition shall be due five (5) business days after filing of the opposition.
`
`The default page limits set forth in 37 C.F.R. § 42.24 shall apply to the
`
`motion, the opposition, and the reply.
`
`Patent Owner averred that Petitioner, during the course of argument
`
`presented in the telephone conference, waived confidentiality over certain
`
`information allegedly relevant to the allegation of abuse of process. The
`
`parties are directed to meet and confer to resolve any dispute, regarding that
`
`alleged waiver, as necessary to complete briefing. No protective order has
`
`been entered in these proceedings. There is a strong public policy that
`
`favors making information filed in an inter partes review open to the public,
`
`especially because the proceeding determines the patentability of claims in
`
`an issued patent and, therefore, affects the rights of the public. Garmin Int’l,
`
`Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip. op. at 3 (PTAB
`
`Apr. 5, 2013) (Paper 37). Under 35 U.S.C. § 316(a)(1) and 37 C.F.R.
`
`§ 42.14, the default rule is that all papers filed in an inter partes review are
`
`open and available for access by the public; a party, however, may file a
`
`3
`
`
`
`

`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`
`concurrent motion to seal, along with a proposed protective order, and the
`
`information at issue will be sealed pending the outcome of the motion to
`
`seal.
`
`
`
`It is
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion for sanctions against Petitioner is granted;
`
`FURTHER ORDERED that the motion for sanctions shall be filed on
`
`the same day as the Preliminary Response, if Patent Owner elects to file a
`
`Preliminary Response;
`
`FURTHER ORDERED that, if Patent Owner waives filing of a
`
`Preliminary Response, the motion for sanctions shall be filed no later than
`
`the due date for filing the Preliminary Response in each proceeding;
`
`FURTHER ORDERED that Petitioner’s opposition to the motion for
`
`sanctions shall be due ten (10) business days after filing of the motion;
`
`FURTHER ORDERED that Patent Owner’s reply to the opposition to
`
`the sanctions motion shall be due five (5) business days after filing of the
`
`opposition; and
`
`FURTHER ORDERED that the default page limits set forth in
`
`37 C.F.R. § 42.24 shall apply to the motion, the opposition, and the reply.
`
`4
`
`
`
`

`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`
`PETITIONER:
`
`Sarah Spires
`Sarah.spires@skiermontpuckett.com
`
`Parvathi Kota
`Parvathi.kota@skiermontpuckett.com
`
`PATENT OWNER:
`
`Francis Cerrito
`nickcerrito@quinnemanuel.com
`
`Anthony Insogna
`aminsogna@jonesday.com
`
`5
`
`

`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`
`APPENDIX
`
`From: Jennifer Torres [contact information omitted] On Behalf Of Nick Cerrito
`Sent: Wednesday, June 03, 2015 3:51 PM
`To: Trials
`Cc: Nick Cerrito; Evangeline Shih; Gabriel Brier; Lyndsey Przybylski; Anthony M Insogna; Patrick
`Elsevier; Frank Calvosa; Sarah Spires; Parvathi Kota; Paul Skiermont
`Subject: IPR2015-01092, -1096, -1102, and -1103 - Request for Authorization to File Sanctions
`Motion for Dismissal
`
`Dear PTAB:
`
`Patent Owner, Celgene Corporation (“Celgene”), respectfully requests authorization to file a
`sanctions motion for dismissal, pursuant to 37 C.F.R. § 42.12, of the petitions filed in IPR2015-
`01092, -1096, -1102, and -1103. The identified real parties in interest (“RPI”) in these
`proceedings have stated publicly that they intend to use the IPR process for the purpose of
`affecting the value of public companies. This is not the purpose for which the IPR process was
`designed. Moreover, one or more of the identified RPI previously threatened to file IPRs against
`the challenged patents unless Celgene met their demands. When Celgene did not pay, the RPI --
`apparently in furtherance of their efforts to abuse the IPR process for private financial gain --
`filed the present petitions. Celgene respectfully requests authorization to file a sanctions
`motion to dismiss the petitions due to the real parties in interest's abuse of process and misuse
`of the IPR proceedings.
`
`The parties are available for a teleconference with the Board on either Friday, June 5 or
`Monday, June 8. Counsel for Petitioner is copied on this email.
`
`Nick Cerrito
`Partner
`Quinn Emanuel Urquhart & Sullivan, LLP
`
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`[contact information omitted]
`
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`6