Paper No. 69
`Filed: July 15, 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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`
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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 EXCLUDE
`PATENT OWNER’S EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`Filed: July 15, 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.
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`CELGENE CORPORATION,
`
`PATENT OWNER.
`
`
`
`___________________
`
`Case IPR2015-01102
`Patent 6,315,720
`___________________
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`PATENT OWNER’S EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
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`
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`Patent Owner responds to Petitioner’s motion to exclude with a straw-man
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`argument that mischaracterizes Petitioner’s motion as “rel[ying] on the false
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`premise that [Petitioner’s expert] Dr. Fudin was ‘confus[ed].’” (Response (Paper
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`65) at 1.) Of course, Petitioner never made this argument. (See Motion (Paper 63)
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`at 1–3.) Instead, Petitioner argued that Patent Owner’s counsel appeared confused,
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`basing virtually the entirety of his questions on a “system” that is not claimed by
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`any of the patents at issue in these related inter partes review proceedings. (See
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`Motion at 1, 3 (“All of this evidence suffers from the same deficiency of form
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`concerning Patent Owner’s counsel’s questions regarding ‘systems’ that are not
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`claimed by the ’720 Patent.”). As a result, Patent Owner now finds itself relying on
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`a transcript that contains little discussion of the methods actually claimed by the
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`patents under review by the Board.
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`Petitioner recognizes that it is possible that Patent Owner’s counsel was not
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`confused, but rather was referring to “systems” instead of “methods” for some
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`rhetorical or other purpose. Petitioner does not know the intentions of Patent
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`Owner’s counsel. Petitioner does know, however, that this choice of words is a
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`distinction with a difference. As the Federal Circuit has recognized, it is well-
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`settled that “the concept of ‘use’ of a patented method or process is fundamentally
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`different from the use of a patented system or device.” NTP, Inc. v. Research In
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`Motion, Ltd., 418 F.3d 1282, 1302 (Fed. Cir. 2005) (citation omitted).
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`1
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`
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`The testimony Patent Owner cites in opposition supports Petitioner’s
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`objection. (See Response at 2.) As a threshold matter, Patent Owner conveniently
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`omits the beginning of its counsel’s questions, which open thus:
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`I am not sure I follow, and I also am not sure where you’re
`Q.
`going with administrative degree.
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`(Ex. 2061 at 199:8–9.) At the outset, therefore, Patent Owner’s counsel himself
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`expresses confusion regarding the uncertain footing of his questions and Dr.
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`Fudin’s responses. The subsequent testimony, similarly, fares no better. Patent
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`Owner’s counsel first acknowledges that the “[t]he claims of the patent are talking
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`about methods” (id. at 199:10–11), but then insists on turning to questions
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`regarding “a system[.]” (Id. at 199:17–17; see also id. at 198:7–10 (Q: “So we’re
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`talking about designing a system for a drug at large in all circumstances. Okay?”).)
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`Dr. Fudin responded to these questions by stating “right” (id. at 199:20), “okay”
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`(id. at 198:10), and—ultimately—“I’m not really sure what this inquiry is about.”
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`(Id. at 200:8–9.)
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`
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`Further context from the deposition deepens the confusion of Patent
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`Owner’s questions. Patent Owner’s counsel questioned Dr. Fudin throughout the
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`deposition regarding, for example, “computerized billing and patient record
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`systems” (id. at 128:19–25), “computer systems” (id. at 138:11–14.), and prior
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`art’s inclusion or omission of “a DOS system or the Windows system.” (Id. at
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`2
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`301:9–12.) As Dr. Fudin’s declaration states, Dr. Fudin has experience with such
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`systems (see, e.g., Ex. 1027 at 4.)—but Dr. Fudin never testified that he or a POSA
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`would be capable of constructing such a system. (See id.) For such matters, Dr.
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`Fudin testified that a POSA would “work collaboratively with other team members
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`that have their own unique specialized skillset, training, and knowledge base[.]”
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`(Id. at 7; see also Ex. 2061 at 516:17–529:1 (further explaining knowledge of
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`POSA and ability of POSA to design the claimed inventions with collaborative
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`team).) In fact, Dr. Fudin specifically testified regarding a POSA’s ability to design
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`“systems” that the POSA need not be able to “actually code it in a computer” (Ex.
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`2061 at 517:7–518:8), but that everything claimed by the patent “fits squarely
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`with[in] the duties of a registered pharmacist at the time of this patent.” (Id. at
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`510:11–521:1; see also id. at 524:12–529:1.)
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`
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`Petitioner seeks limited relief: the exclusion of questions and testimony
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`relied upon by Patent Owner regarding “systems” that are not actually claimed by
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`the patents under review. Petitioner also recognizes that the Board has stated,
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`correctly, that “[t]he PTAB, sitting as a non-jury tribunal with administrative
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`expertise, is well-positioned to determine and assign appropriate weight to
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`evidence presented.” Ariosa Diagnostics v. Isis Innova Ltd., IPR2012-00022, Paper
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`166, 2014 Pat. App. LEXIS 6356, *84–85 (PTAB Sept. 2, 2014); see also, e.g.,
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`Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00582, Paper 48,
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`
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`3
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`
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`2015 Pat. App. LEXIS 2563, *73 (PTAB Mar. 18, 2015) (“Having been alerted to
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`the dispute by Patent Owner, through its motion and again during the oral hearing,
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`we have taken great care to weigh all of [the evidence.]”). If the Board decides not
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`to exclude the objectionable evidence identified by Petitioner’s motion, Petitioner
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`respectfully submits that the Board should assign no weight to the evidence on the
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`grounds that it is irrelevant, confusing, misleading, and unfairly prejudicial. See
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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
`
`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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`
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`4
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`Fed. R. Evid. 401–403.
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`July 15, 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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`Reply in Support of Motion to Exclude Patent Owner’s Evidence Pursuant to 37
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`C.F.R. § 42.64(c) by electronic means on July 15, 2016, at the following addresses
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`of record:
`
`Francis Cerrito
`nickcerrito@quinnemanuel.com
`
`Eric C. Stops
`ericstops@quinnemanuel.com
`
`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: July 15, 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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