Filed on behalf of Petitioner COALITION FOR AFFORDABLE DRUGS X LLC
`
`
`By: Jeffrey D. Blake, Esq.
` MERCHANT & GOULD P.C.
`
`191 Peachtree Street N.E., Suite 4300
` Atlanta, GA 30303
`
`jblake@merchantgould.com
` Main Telephone: (404) 954-5100
` Main Facsimile: (404) 954-5099
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`COALITION FOR AFFORDABLE DRUGS X LLC,
`Petitioner,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`___________________
`Case No.: Unassigned
`Patent No.: 7,582,621
`________________________________________________________
`
`DECLARATION OF STEPHEN KAHL PH.D. IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF PATENT NO. 7,582,621
`
`
`
`CFAD Exhibit 1006
`
`
`
`
`By: Jeffrey D. Blake, Esq.
` MERCHANT & GOULD P.C.
`
`191 Peachtree Street N.E., Suite 4300
` Atlanta, GA 30303
`
`jblake@merchantgould.com
` Main Telephone: (404) 954-5100
` Main Facsimile: (404) 954-5099
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`COALITION FOR AFFORDABLE DRUGS X LLC,
`Petitioner,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`___________________
`Case No.: Unassigned
`Patent No.: 7,582,621
`________________________________________________________
`
`DECLARATION OF STEPHEN KAHL PH.D. IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF PATENT NO. 7,582,621
`
`
`
`CFAD Exhibit 1006
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`I, Stephen Kahl, Ph.D., hereby state the following:
`
`I.
`
`INTRODUCTION
`
`1.
`
`In this declaration, I am providing my expert opinions in support of
`
`the above-captioned petition for inter partes review (“IPR”) of U.S. Patent No.
`
`7,582,621 (“the ‘621 Patent”) filed by the Coalition For Affordable Drugs X LLC
`
`(“CFAD”), which challenges the patentability of claims 1-12 of the ‘621 Patent.
`
`2.
`
`3.
`
`This Declaration sets forth the bases and reasons for my opinions.
`
`This Declaration is based on information currently available to me. I
`
`reserve the right to continue my investigation and analysis, which may include a
`
`review of documents and information not yet produced. I further reserve the right
`
`to expand or otherwise modify my opinions and conclusions as my investigation
`
`and study continues, and to supplement my opinions and conclusions in response
`
`to any additional information that becomes available to me.
`
`II.
`
`BACKGROUND AND EXPERIENCE
`
`4.
`
`I received a B.S. in Chemistry from Duke University (1964-68) and a
`
`Ph.D. in Chemistry from Indiana University (1968-72).
`
`5.
`
`From 1972 until 1974, I was a Postdoctoral Fellow at the University
`
`of California, Berkeley in the Departments of Chemistry and Physics. From 1975
`
`until 1982, I was an Assistant Professor at Wellesley College in the Department of
`
`Chemistry. From 1982 until the present, I have held the following positions in the
`
`
`
`1
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`Department of Pharmaceutical Chemistry at the University of California, San
`
`Francisco: Visiting Assistant Professor (1982-1985); Assistant Professor In
`
`Residence (1985-1990); Associate Professor In Residence (1990-1995); Professor
`
`in Residence (1995-2011); and Professor In Residence Emeritus (2011-Present).
`
`Since 1983, I have also held the title of Visiting Professor (Lecturer) in the
`
`Department of Chemistry at Stanford University.
`
`6.
`
`I have received numerous honors and awards, including the Dean’s
`
`Recognition for Excellence in Teaching, University of California School of
`
`Pharmacy on six different occasions.
`
`7.
`
`I have also served as an Ad Hoc Reviewer for twenty journals
`
`including: Journal of Medicinal Chemistry (1985- Present); Journal of Organic
`
`Chemistry (1991-Present); Cancer Research (1989-Present); Proceedings of the
`
`National Academy of Sciences, USA (1990-Present); and Journal of American
`
`Chemical Society (1986-Present).
`
`8. My research interests over my career have related to the development
`
`of organic synthetic methodologies and separation techniques for the preparation
`
`of bioactive boron molecules specifically targeted to biological systems, e.g.
`
`cancer cells, atherosclerotic plaques, and viral and parasitic vectors, and the
`
`application of methods to assess the toxicology and gross and subcellular
`
`biodistribution of these molecules. To date, my research has resulted in over 65
`
`
`
`2
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`publications in books and peer reviewed journals; and over 30 invited
`
`presentations.
`
`9. My CV, which lists in further detail my relevant professional
`
`experience, is attached as Exhibit 1007.
`
`10.
`
`I am competent to make this declaration based upon my personal
`
`knowledge and expertise in the area of research, synthesis, and development of
`
`boron compounds and pharmaceuticals.
`
`III.
`
`COMPENSATION AND RELATIONSHIP TO THE PARTIES
`
`11.
`
`I am being compensated at my standard consulting rate of $300 per
`
`hour for the time I spend studying materials and issues associated with this matter
`
`and for the time I spend providing testimony. My compensation is not contingent
`
`upon the outcome of this matter. I expect to be reimbursed for reasonable expenses
`
`associated with travel, including lodging, transportation, and other expenses
`
`incurred in connection with this matter.
`
`12.
`
`It is my understanding that Anacor Pharmaceuticals Inc. (“Anacor”) is
`
`the assignee of the ‘621 Patent. Prior to this matter, I have not worked for Anacor
`
`or had any vested interest in the Petitioner or its related entities. I own no stock or
`
`ownership interest in Anacor or the Petitioner or its related entities and I am aware
`
`of no other financial interest I have with those companies.
`
`
`
`3
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`IV.
`
`MATERIALS CONSIDERED
`
`13.
`
`I reviewed the following documents and information:
`
`EXHIBIT
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`DESCRIPTION
`U.S. Patent No. 7,582,621 (“the ‘621 Patent”)
`Patent Cooperation Treaty Pub. No. WO 1995/033754
`to Austin et al. (“Austin”)
`U.S. Patent Pub. No. 2002/0165121 to Brehove
`(“Brehove”)
`Patent Cooperation Treaty Pub. No. WO 2003/009689
`A1 to Freeman et al. (“Freeman”)
`Prosecution History: Office Action dated August 26,
`2008
`Prosecution History: Reply to Office Action dated
`January 23, 2009
`Prosecution History: Notice of Allowance dated April
`22, 2009
`BioborJF® Specification Sheet (2015)
`Ex. 1024
`BioborJF® Material Safety Data Sheet (2004)
`Ex. 1025
`Ex. 1027 Michael P. Groziak, Boron Therapeutics On The
`Horizon, 8 Am. J. of Therapeutics 321-28 (2001)
`(“Groziak”)
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`FILED
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14.
`
`I am also aware of information generally available to, and relied upon
`
`by, persons of ordinary skill in the art at the relevant times. Some of my statements
`
`below are expressly based on such awareness.
`
`15.
`
`I reserve the right to supplement my opinions to address any
`
`information obtained, or positions taken, based on any new information that comes
`
`to light throughout this proceeding.
`
`
`
`4
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`V.
`
`LEGAL STANDARDS
`
`16.
`
`17.
`
`I am not an attorney. I do not expect to offer any opinions on the law.
`
`It is my understanding that a claimed invention is unpatentable if the
`
`differences between the invention and the prior art are such that the subject matter
`
`of the claim as a whole would have been obvious at the time the invention was
`
`made to a person of ordinary skill in the art (“POSITA”) to which the subject
`
`matter pertains.
`
`18.
`
`It is also my understanding that obviousness is a question of law based
`
`on underlying factual issues including (1) the scope and content of the prior art, (2)
`
`the differences between the prior art and the asserted claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
`
`such as commercial success, long-felt but unresolved needs, failure of others, etc.
`
`19.
`
`I further understand that whether there is a reasonable expectation of
`
`success from combining references in a particular way is also relevant to the
`
`analysis. I understand there may be a number of rationales that may support a
`
`reasonable expectation of success, including:
`
`• combining prior art elements according to known methods to yield
`
`predictable results;
`
`• substitution of one known element for another to obtain predictable
`
`results;
`
`
`
`5
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`
`• use of known technique to improve similar devices (methods, or
`
`products) in the same way;
`
`• applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results; and
`
`• “obvious to try” – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success.
`
`VI.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`20.
`
`It is my understanding that the ‘621 Patent is to be interpreted based
`
`on how it would have been read by a POSITA at the time of the effective filing
`
`date of the earliest application to which the ‘621 Patent claims priority. I was
`
`familiar with the technology at issue and the state of the art as of the earliest
`
`priority date of the ‘621 Patent, February 16, 2005.
`
`21.
`
`I believe a POSITA at the time the ‘621 Patent was filed would have
`
`had an advanced degree (Master’s or Ph.D.) or equivalent experience in chemistry,
`
`pharmacology, or biochemistry, and at least two years of experience with the
`
`research, development, or production of pharmaceuticals.
`
`22.
`
`I consider myself to have had at least such ordinary skill in the art
`
`with respect to the subject matter of the ‘621 Patent at the time the patent was filed.
`
`
`
`6
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`VII.
`
`THE ‘621 PATENT AND RELEVANT PROSECUTION HISTORY
`
`23.
`
`I understand the ‘621 Patent describes treating fungal infections,
`
`including onychomycosis, via topical application of boron-containing small
`
`molecules to the nail or skin of a human. (Ex. 1001 at Abstract.)
`
`24.
`
`I further understand the ‘621 Patent specifically claims a method of
`
`treating an infection, including a fungal infection, with a therapeutically effective
`
`amount of 1,3-dihydro-5-fluoro-1-hydroxy-2,1-benzoxaborole. (Id. at Col. 67:34-
`
`39.) 1,3-dihydro-5-fluoro-1-hydroxy-2,1-benzoxaborole has the following
`
`structure:
`
`OH
`B
`
`O
`
`
`
`F
`
`25.
`
`I understand during the prosecution of the application leading to the
`
`‘621 patent that the Examiner rejected the pending claims over Austin and the
`
`definition of “fungicide” from Answers.com. (Ex. 1012 at pp. 10-12.) Specifically,
`
`the Examiner appears to have recognized that Austin discloses the claimed 1,3-
`
`dihydro-5-fluoro-1-hydroxy-2,1-benzoxaborole for use as an industrial fungicide.
`
`(Id.) And that the definition of fungicide from Answers.com discloses that a
`
`fungicide can be used for agriculture or the pharmaceutical industry. (Id. at p. 12.)
`
`
`
`7
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`
`26.
`
`I further understand that in order to overcome this rejection that the
`
`Patent Owner argued that a POSITA would not choose an industrial fungicide for
`
`human use because some fungicides are dangerous to humans. I understand the
`
`Patent Owner argued: “the art teaches that compounds that are useful for killing or
`
`inhibiting fungi may also harm animals” and “Answers.com thus does not provide
`
`a motivation to modify the teachings of Austin to use any particular oxaborole to
`
`treat an animal, and in fact teaches away from such modification.” (Ex. 1013 at pp.
`
`5-7.)
`
`27. Finally, I understand that the Examiner relied on the Patent Owner’s
`
`argument in deciding to allow the pending claims which ultimately issued as
`
`claims 1-12 the ‘621 Patent. (Ex. 1014 at p. 2.)
`
`VIII.
`
`OPINIONS
`
`28. Boron-containing compounds were well known to a POSITA at least
`
`as early as February 16, 2005. I have been personally studying boron-containing
`
`compounds as therapeutic agents for over thirty years, including the administration
`
`of boron-containing compounds to humans for the treatment of cancer.
`
`29.
`
`In 2001, Groziak published a review of the then-current state of
`
`research and development concerning boron-based therapeutics for use in humans.
`
`(Ex. 1027 at Abstract.) In particular, Groziak recognized that it was “not at all
`
`surprising to find that most of the boron-based therapeutics currently on the
`
`
`
`8
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`horizon are either boronic acids themselves or boron heterocycles that are simply
`
`internally complexed versions of boronic acids.” (Id. at p. 322, left col.) I agree
`
`because boronic acids and boron heterocycles often share similar functional
`
`properties based on the unique chemical properties of boron itself.
`
`30. Boron-containing compounds are generally considered safe. One
`
`notable exception is triakylboranes, which are compounds with the general formula
`
`BR3 where R is an alkyl group. Trialkylboranes can spontaneously combust under
`
`certain conditions. The oxaboroles disclosed by Austin are not trialkylboranes and
`
`a POSITA would recognize that the boron-containing compounds of Austin are
`
`generally considered safe.
`
`31.
`
` Based on my experience working with boron-containing molecules, I
`
`am not aware of any reason why a POSITA would be discouraged from selecting
`
`an oxaborole as disclosed by Austin for consideration as a topical therapeutic in
`
`humans. In fact, for the reasons discussed below, based on Austin’s disclosure of
`
`1,3-dihydro-5-fluoro-1-hydroxy-2,1-benzoxaborole (referred to in Austin as 5-
`
`fluoro-1,3-dihydro-1-hydroxy-2,1-benzoxaborole, which is the same compound) as
`
`one of three preferred anti-fungal compounds for the treatment of Candida
`
`albicans, a POSITA would consider the compound as obvious to try as a starting
`
`point for developing a topical composition to treat fungal infections, and that a
`
`POSITA would have a reasonable expectation of success in doing so.
`
`
`
`9
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`
`32. Not all boron-based compounds are bioactive. If there is a known
`
`molecule that is bioactive against a fungus, such as Candida albicans, which is a
`
`cause of onychomycosis, a POSITA would consider that molecule as obvious to try
`
`for therapeutic use in humans. This is particularly true in light of the other known
`
`prior art, Brehove and Freeman, demonstrating that boron-based compounds are
`
`effective against the pathogens that cause onychomycosis, including Candida
`
`albicans and dermatophytes.
`
`33. Austin discloses such bioactivity with its three preferred compounds,
`
`in particular 5-fluoro-1,3-dihydro-1-hydroxy-2,1-benzoxaborole, which is the exact
`
`same compound claimed for use in the ‘621 Patent.
`
`34. Austin discloses “5- and 6-fluoro or bromo-1,3 dihydro-1hydroxy-2,1-
`
`benzoxaborole” as “[p]referred compounds” on the front page of the publication.
`
`(Ex. 1002 at Abstract.) In Table 9, it reports the bioactivity of the 5-fluoro
`
`(Example 64), 5-bromo (Example 68), and 6-fluoro (Example 70) compounds. Of
`
`the preferred compounds, 5-fluoro-1,3-dihydro-1-hydroxy-2,1-benzoxaborole
`
`demonstrated the lowest Minimum Inhibitory Concentration (“MIC”) values
`
`against several pathogens, including Candida albicans. (Ex. 1002 at p. 37, Table
`
`9.) In other words, of the three preferred compounds tested, 5-fluoro-1,3-dihydro-
`
`1-hydroxy-2,1-benzoxaborole inhibited the visible growth of Candida albicans
`
`(after a period of incubation) at the lowest level of concentration. (Id.)
`
`
`
`10
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`
`35. Brehove and Freeman are patent application publications that both
`
`disclosed the use of boron-containing compounds as anti-fungal agents to treat
`
`onychomycosis in humans at least one year before February 16, 2005.
`
`36. Brehove disclosed the effective use of the following boron-containing
`
`compounds to treat onychomycosis in humans:
`
`O
`
`OB
`
`O
`
`OB
`
`O
`
`O B
`
`
`
` Brehove states that “[o]nychomycosis is a nail disease of the toes and
`
`2,2'-oxybis (4, 4, 6-trimethyl-
`1, 3, 2-dioxaborinane)
`
`O B
`
`37.
`
`O
`O
`O
`O
`2,2'-(1-methyltrimethylene dioxy)
`bis (4-methyl-1, 3, 2-dioxaborinane)
`
`fingers typically caused by the organisms Candida albican, Tricophyton
`
`mentagrophytes, Tricophyton rubrum, or Epidermpophyton floccusum.” (Ex. 1003
`
`at ¶ [0005].). Brehove then specifically discloses that these boron-based
`
`compounds are effective in vitro against Candida albicans, which is a cause of
`
`onychomycosis: “This invention also comprises a method of treating
`
`onychomycosis by topical application of a composition containing, as an active
`
`ingredient, at least one member selected from the group consisting of 2,2’-(1-
`
`methyltrimethylenedioxy) bis (4-methyl-1,3,2-dioxaborinane) and 2,2’-oxybis
`
`(4,4,6-trimethyl-1, 3,2-dioxaborinane).” (Id. at ¶ [0017]; see also id. at ¶¶ [0032]-
`
`[0033], Table 1.)
`
`
`
`11
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`
`38. Brehove prepared topical compositions containing these boron-based
`
`compounds to successfully treat humans suffering from onychomycosis. (See, e.g.,
`
`id. at ¶¶ [0030] – [0038].) This is the same pathogen inhibited in Austin with a
`
`boron-based compound. Not only did Brehove successfully treat humans with this
`
`boron-based compound, the compound was commercially sold as an industrial
`
`biocide for fuel under the trade name Biobor® JF. (Exs. 1024-25.) Thus, Brehove
`
`successfully used a boron-based industrial fungicide to treat humans. This is real-
`
`world proof that a POSITA would not be discouraged, and would in fact select a
`
`boron-based industrial fungicide for use in humans to treat onychomycosis.
`
`39. Freeman disclosed the effective use of the boron-containing
`
`compounds to treat onychomycosis in humans, including the following disclosed
`
`compounds:
`
`OH
`B
`
`OH
`
`OH
`B
`
`OH
`
`F
`
`F
`
`F
`
`
`
`
`
`(Ex. 1004 at ¶ [0062].
`
`F
`
`F
`
`OH
`B
`
`OH
`
`F
`
`
`
`40. Freeman states that “‘Onychomycosis’ has traditionally referred to a
`
`nondermatophytic infection of the nail. Onychomycosis is now used as a general
`
`term to denote any fungal nail infection. Tinea unguium specifically describes a
`12
`
`
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`dermatophytic invasion of the nail plate.” (Id. at ¶ [005].) In addition, Freeman
`
`recognizes that “[t]he dermatophyte species that most often causes onychomycosis
`
`in North America and parts of Europe are T. rubrum, T. metagrophytes, and
`
`Epidermophyton floccosum . . . Both dermatophytes and non-dermatophytes,
`
`especially Candida Sp., have been identified as etiologic agents of
`
`onychomycosis.” (Id. at ¶ [008].)
`
`41. Freeman discloses the treatment of onychomycosis using boron-based
`
`compounds: “[i]t has now been discovered that phenyl boronic acid and derivatives
`
`thereof as well as related boronic acid compounds have fungicidal properties, and
`
`that these compounds are particularly useful in treating fungal infections. These
`
`compounds have been found to be particularly useful in treating nail fungal
`
`infections.” (Id. at ¶ [022].)
`
`42. Freeman then specifically discloses that certain boron-based
`
`compounds are effective in vitro against T. rubrum, which is a cause of
`
`onychomycosis: “[i]t can readily be seen from the above that the PBA exhibited
`
`fungicidal effects on T. rubrum within the concentration range of 5-10 mg/ml
`
`tested. (Id. at ¶¶ [0033] – [0037].) Freeman then discloses “cosmetic and
`
`therapeutic vehicles” for application to the “skin or nails” of a human. (Id. at ¶¶
`
`[0064] – [0068]. Like Brehove, Freeman is real-world proof that a POSITA would
`
`not be discouraged, and would in fact select a boron-based compound for use in
`
`
`
`13
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7,582,621
`
`humans to treat onychomycosis.
`
`43.
`
`In my opinion, as of February 16, 2005, a POSITA would consider the
`
`preferred compound of Austin, which is the exact same compound claimed in
`
`claims 1-12 of the ‘621 Patent, obvious to try to successfully treat onychomycosis
`
`in humans based on it disclosed anti-fungal activity and structural similarities, e.g.,
`
`boron-based cyclic compounds:
`
`OH
`B
`
`O
`
`
`
`F
`
`IX.
`
`CONCLUSION
`
`44. Boron-containing compounds, like the oxaboroles disclosed by
`
`Austin, are generally safe. A POSITA looking to develop a topical treatment for
`
`onychomycosis before February 16, 2005 would not be discouraged by the
`
`disclosures of oxaboroles in Austin for use as industrial fungicides. To the
`
`contrary, Austin in view of either Brehove or Freeman provides a reason as well as
`
`a direct teaching, suggestion, or motivation to try 1,3-dihydro-5-fluoro-1-hydroxy-
`
`2,1-benzoxaborole for use in humans. In my opinion, based on the success of
`
`Austin in inhibiting Candida albicans, and the success of Freeman and Brehove in
`
`treating onychomycosis with boron-based compounds, a POSITA would find it
`
`
`
`14
`
`
`
`Declaration of Stephen Kahl, Ph.D.
`Inter Partes Review of Patent No. 7 ,582,621
`
`obvious to try l ,3-dihydro-5-fluoro-l-hydroxy-2, 1-benzoxaborole disclosed in
`
`Austin for therapeutic use in animals and humans.
`
`45.
`
`In signing this Declaration, I understand that it will be filed as
`
`evidence in a contested case before the Patent Trial and Appeal Board of the
`
`USPTO. I acknowledge that I may be subject to cross-examination in the case and
`
`that cross-examination will take place within the United States. If cross-
`
`examination is required of me, I will appear for cross-examination within the
`
`United States during the time allotted for cross-examination.
`
`46.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and that these statements were made with the knowledge that
`
`willful false statements and the like so made are punishable by fine or
`
`imprisonment, _or both, under Section 1001 of Title 18 of the United States Code.
`
`Dated:
`
`June29 2015
`- '
`
`/Stephen Kahl, Ph.D.
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