Paper No. 49
`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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`
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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 IPR2015-01103
`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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`
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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.
`
`CELEGENE CORPORATION
`
`PATENT OWNER
`
`
`
`___________________
`
`Case IPR2015-01103
`Patent 6,315,720
`___________________
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION PURUSUANT TO 37 C.F.R. § 42.123(a)
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`
`
`
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`Patent Owner first questions why Petitioner “could not have submitted the
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`Case IPR2015-01103
`Patent 6,315,720
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`
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`four new documents with its Petition.” (Paper 45 at 1.) However, Petitioner
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`submitted its request to file a motion to submit supplemental information within
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`one month of institution pursuant to 37 C.F.R. § 42.123(a). (Paper 38 at 1.)
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`“[U]nder 37 C.F.R. § 42.123(a), unlike 37 C.F.R. § 42.123(b), Petitioner need not
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`“show why the supplemental information reasonably could not have been obtained
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`earlier.” Apple Inc. v. VirnetX, Inc., IPR2015-00810, Paper 21 at 5 (Nov. 2, 2015).
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`Thus, Patent Owner’s complaint about the timeliness of Petitioner’s request to
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`submit supplemental information is misplaced.
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`Next, Patent Owner objects to the relevance of Petitioner’s requested
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`supplemental information. (Paper 45 at 1-3.) Petitioner seeks to submit four
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`exhibits as supplemental information that confirms the public accessibility of a
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`prior art reference at issue in the trial. (Paper 38 at 2.) Where a party has sought to
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`submit information that confirms the public accessibility of a prior art reference at
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`issue in the trial, the Board has repeatedly found such evidence to be proper
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`supplemental information. See, e.g., Biomarin, IPR2013-00534, Paper 80 at 5
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`(granting motion under stricter standard of § 42.123(b)); Valeo North Am., Inc. v.
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`Magna Elecs, Inc., IPR2014-01204, Paper 26 at 2-5 (Apr. 10, 2015); Palo Alto
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`Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 37 at 2-5 (Feb. 5,
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`2014); Motorola Sol’ns, Inc. v. Mobile Scanning Techs, LLC, IPR2013-00093,
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`1
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`Paper 39 at 2 (Jul. 16, 2013). As the Board has recognized, “a trial is, first and
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`Case IPR2015-01103
`Patent 6,315,720
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`foremost, a search for the truth.” Edmund Optics, Inc., v. Semrock, Inc., IPR2014-
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`00599, Paper 44 at 4 (May 5, 2015) (granting motion to submit supplemental
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`information) (citing TechSearch LLC v. Intel Corp., 286 F.3d 1360, 1378 (Fed. Cir.
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`2002)).
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`Patent Owner’s argument that because “[t]he Board or Patent Owner did not
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`challenge the public accessibility/availability of Menill,” Petitioner’s “motion is
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`baseless,” flies in the face of the Board’s prior rulings. (Paper 45 at 1-2). For
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`instance, in Valeo, the Board rejected this exact argument:
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`Petitioner contends that because Broggi’s prior art status was
`sufficient for institution it was unforeseeable that additional proof
`regarding that status would be required (citing Liberty Mutual
`Insurance Co. v. Progressive Casualty Insurance Co., Case CBM
`2012-00010, slip op. at 37 (PTAB Feb. 24, 2014) (Paper 59).
`Petitioner’s reliance on Liberty Mutual is misplaced because there the
`Board dealt with the admissibility of evidence (authentication under
`F.R.E. 902) and not the sufficiency of the proof of publication of a
`reference. Id. at 37-38. Further, our institution decision explicitly
`states that the Board has not made a final determination on
`patentability of any challenged claim. … Accordingly, it is
`ORDERED that Petitioner’s Motion to Submit Exhibits 1026–1031 as
`Supplemental Information under 37 C.F.R. § 42.123(a) is granted.
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`2
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`Valeo North Am., Inc. v. Magna Elecs, Inc., IPR2014-01204, Paper 26 at 3-5 (Apr.
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`Case IPR2015-01103
`Patent 6,315,720
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`10, 2015) (citations omitted) (emphasis added).
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`
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`Just as in Valeo, because the Board’s institution decision here explicitly
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`states that “the Board has not yet made a final determination of the patentability of
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`any of claims 1–32 of the ’720 patent,” Petitioner’s request to submit supplemental
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`information to confirm the public accessibility/availability of Menill—a reference
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`included in the ground upon which the Board instituted trial—is proper. (Paper 22
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`at 25.)
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`
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`March 25, 2016
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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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`3
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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
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`CERTIFICATE OF SERVICE
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`Case IPR2015-01103
`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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`
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`Date: March 25, 2016
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`/Sarah E Spires/
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