Paper No. __
`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 IPR2015-01103
`Patent 6,315,720
`________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`
`
`
`
`
`Filed: February 25, 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 IPR2015-01103
`Patent 6,315,720
`________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`
`
`
`
`
`
`Patent Owner Supplemental Information Opposition Motion
`
`IPR2015-01103
`Patent 6,315,720
`
`Coalition for Affordable Drugs VI LLC (“CFAD”) seeks to introduce four
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`documents as supplemental information. Paper 38 at 2. It alleges that these
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`documents “confirm[] public accessibility/availability of Menill.” Id. at 3. CFAD
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`alleges that “this supplemental information was neither withheld intentionally nor
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`would it limit or frustrate the Board’s ability to complete this proceeding in a
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`timely manner.” Id. But CFAD fails to explain why it could not have submitted
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`the four new documents with its Petition, or why it is necessary to add these
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`documents at this time. . See, e.g., Amazon.com, Inc. v. AC Techs. S.A., IPR2015-
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`01801, Paper 9 at 2-3 (“We will not at this time authorize submission of
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`Petitioner’s proposed exhibits, which are of marginal relevance and could have
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`been filed with the petition.”). Its motion should be denied.
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`As CFAD admits: “The Board or Patent Owner did not challenge the public
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`accessibility/availability of Menill.” Paper 38 at 2. Nor is there any reason to do
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`so. Menill is a reference that CFAD relies upon in a single sentence in its Petition
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`in connection with a single limitation of a single claim (claim 31). Claim 31 is a
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`dependent claim that adds an additional limitation requiring that “said diagnostic
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`testing comprises testing for evidence of the use of said other drug.” Ex. 1001 at
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`20:37-39. CFAD addressed that limitation as follows, relying on Menill:
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`Indeed, because it was well known to an ordinarily skilled artisan that,
`
`as the National Center on Addiction and Substance Abuse at
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`Columbia University stated in 1994 “people are generally reluctant to
`
`
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`- 1 -
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`
`
`Patent Owner Supplemental Information Opposition Motion
`
`IPR2015-01103
`Patent 6,315,720
`
`admit to alcohol or drug abuse and addiction,” it would have been
`
`obvious to one of ordinary skill in the art that a substance abuse
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`screen in Dishman should have comprised “testing for evidence of the
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`use of” alcohol or other drugs, rather than solely relying on patient
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`survey information. (Ex. 1026 [Menill] at 4; Ex. 1027 ¶ 190, 192.)
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`. . . Thus, Claim 31’s limitations would have been obvious to one of
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`ordinary skill in the art at the time of the ’720 Patent. (Ex. 1027 ¶¶
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`180-92.)
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`Paper 1 at 44-45. Patent Owner does not dispute that the quoted language appears
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`in Menill, nor does Patent Owner base any validity argument for claim 31 on that
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`claim’s additional limitation.
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`Thus, the supplemental information that CFAD seeks to add does not
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`respond to any arguments Patent Owner has raised. CFAD recognizes this and,
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`therefore, alleges that it seeks to file the supplemental information “out of an
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`abundance of caution,” implying that Patent Owner will take some contrary
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`position on Menill in the future. Paper 38 at 2. But “[t]he Board [has] explained
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`that submitting supplemental information under 37 C.F.R. § 42.123(a) as a vehicle
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`to respond to a possible position that another party may take in the future is
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`improper.” Medtronic, Inc. v. Endotach LLC, IPR2014-00100, Paper 18 at 4 (Apr.
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`21, 2014). Thus, CFAD’s motion is baseless.
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`Moreover, to the extent that CFAD has filed this motion because it wants to
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`rely on Menill for some other argument in the future, that too is improper. The
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`- 2 -
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`
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`Patent Owner Supplemental Information Opposition Motion
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`IPR2015-01103
`Patent 6,315,720
`
`Board has been clear that Petitioner cannot submit supplemental information to
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`“raise a new ground of patentability after institution of a trial.” Id.; cf. Palo Alto
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`Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 37 at 3 (Feb. 5,
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`2015) (permitting supplemental information because it did “not change the grounds
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`of unpatentability authorized in th[e] proceeding”). Such tactics would force
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`Patent Owner to seek authorization to submit a surreply to address any of CFAD’s
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`new arguments based on Menill. This would unnecessarily multiply these
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`proceedings and frustrate “the efficient administration of the Office” and the
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`“ability of the Office to timely complete [the instituted] proceeding[].” 35 U.S.C.
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`§ 316(b). The Board should not allow it.
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`*
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`*
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`*
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`For these foregoing reasons, the Board should deny CFAD’s motion.
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`- 3 -
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`
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`Patent Owner Supplemental Information Opposition Motion
`
`IPR2015-01103
`Patent 6,315,720
`
`Date: February 25, 2016
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` Respectfully submitted,
`
`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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`- 4 -
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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 IPR2015-01103
`Patent 6,315,720
`________________
`
`
`CERTIFICATE OF SERVICE
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`
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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
`
`TO SUBMIT SUPPLEMENTAL INFORMATION was served on February 25,
`
`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
`
` Respectfully submitted,
`
`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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