IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC, MYLAN PHARMACEUTICALS
`INC., BRECKENRIDGE PHARMACEUTICAL, INC., AND ALEMBIC
`PHARMACEUTICALS, LTD.,
`Petitioners,
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`v.
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`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
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`Case No. IPR2016-002041
`Patent No. RE 38,551
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`PATENT OWNER’S REPLY TO PETITIONERS’ OPPOSITION TO ITS
`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245 have been
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`joined with this proceeding.
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` DC: 6323331-2
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC, MYLAN PHARMACEUTICALS
`INC., BRECKENRIDGE PHARMACEUTICAL, INC., AND ALEMBIC
`PHARMACEUTICALS, LTD.,
`Petitioners,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2016-002041
`Patent No. RE 38,551
`
`PATENT OWNER’S REPLY TO PETITIONERS’ OPPOSITION TO ITS
`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245 have been
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`joined with this proceeding.
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` DC: 6323331-2
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`IPR2016-00204
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`Patent Owner Research Corporation Technologies, Inc. submits this reply to
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`Petitioners’ Opposition to Patent Owner’s Motion to Exclude Evidence Pursuant to
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`37 C.F.R. § 42.64 (Paper 78) filed on January 6, 2017.
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`I.
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`Exhibit 1003 should be excluded as inadmissible hearsay under FRE
`801(c) and FRE 802
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`Exhibit 1003 is not “former testimony” under FRE 804(b)(1) because the
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`alleged grounds of obviousness in IPR2014-01126 were different, and there was no
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`“opportunity” or “similar motive” to develop Dr. Heathcock’s testimony by cross-
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`examination as no trial was instituted. It is far from certain that “Patent Owner
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`could have deposed Dr. Heathcock in this proceeding” (Paper 78 p. 2) as any
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`cross-examination would have been outside routine discovery under 37 C.F.R. §
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`42.51(b)(1)(ii) (requiring affidavit testimony to be “prepared for the proceeding”),
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`necessitating a motion to compel under § 42.52(a) or a motion for additional
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`discovery under § 42.51(b)(2). The fact that Patent Owner and the Board
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`considered Dr. Heathcock’s trial testimony does not create a hearsay exception for
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`his affidavit testimony. Finally, that “Patent Owner never objected to Dr.
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`Heathcock’s affidavit prior to institution” (Paper 78 p. 2) is nonsensical given that
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`objections are filed after institution. 37 C.F.R. § 42.64(b)(1).
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`II. Exhibits 1048-1213 should be excluded for failure to timely serve
` Petitioners claim that the service of Exhibits 1048-1213 complied with 37
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`C.F.R. § 42.6(e)(1), but they ignore the very next paragraph. “Each document filed
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`1
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`IPR2016-00204
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`with the Board, if not previously served, must be served simultaneously on each
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`opposing party.” 37 C.F.R § 42.6(e)(2) (emphasis added). Petitioners argue only
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`compliance with the mode of service, and never address the requirements of time
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`of service. The requirement in § 42.6(e)(2) for simultaneous service mirrors the
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`requirement in § 42.51(b)(1)(i) that any exhibit “must be served with the citing
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`paper or testimony.” 37 C.F.R. § 42.51(b)(1)(i) (emphasis added). It is undisputed
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`that Petitioners filed Exhibits 1048-1213 with the Board on November 14, 2016,
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`but they did not even attempt service of Exhibits 1048-1213 until the next day. See
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`Exs. 2189 & 2190. Consequently, Petitioners’ service complied with neither 37
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`C.F.R. § 42.51(b)(1)(i) nor § 42.6(e)(2).
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`Petitioners’ untimely service was prejudicial to Patent Owner because it
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`further condensed Patent Owner’s limited time to file objections and to prepare for
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`cross-examination of Petitioners’ witnesses. Petitioners’ offer “to extend the
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`upcoming dates” (see Ex. 1215) was an empty gesture; neither party could have
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`extended the deadline under 37 C.F.R. § 42.64(b)(1) to file objections to the
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`admittedly “voluminous [165] exhibits” or modified Due Dates 6 or 7. See Paper
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`20 p. 2. Petitioners have identified no good cause under 37 C.F.R. § 42.5(c)(3) for
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`their late service, particularly given the agreement to extend Due Date 2. Thus,
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`Exhibits 1048-1213 should be excluded for failure to effect timely service.
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`III. Exhibit 1050 at 243:3-271:21 (“Roush Testimony”) should be excluded
`as outside the proper scope of cross-examination
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`2
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`IPR2016-00204
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`Petitioners’ opposition does not dispute that the ’301 patent is outside the
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`scope of Dr. Roush’s direct testimony. Petitioners instead suggest that the ’301
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`patent was fair game during cross-examination because Dr. Wang relied on the
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`document. Paper 78 pp. 6-7. However, Petitioners’ only support for this argument
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`is from Dr. Wang’s second declaration, which was filed more than three weeks
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`after Dr. Roush’s deposition. See id. (citing Ex. 1084 ¶¶ 97-98). Consequently,
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`Petitioners have identified no evidence that the ’301 patent was within the proper
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`scope of cross-examination under 37 C.F.R. § 42.53(d)(5)(ii).
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`Petitioners also argue that Dr. Roush’s out-of-scope testimony about the
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`’301 patent should not be excluded because it is relevant to obviousness and
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`because “Dr. Roush did not consider all of the relevant prior art.” Paper 78 p. 6.
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`First, the ’301 patent is not prior art. See 35 U.S.C. § 103(c)(1); Ex. 1050 at 244:6-
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`7; see also Paper 73 p. 15. Moreover, Petitioners’ concern about the completeness
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`of Dr. Roush’s analysis has no bearing on the actual scope of his direct testimony,
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`and thus, is no more than an improper challenge to “the sufficiency of [his]
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`evidence.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767
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`(Aug. 14, 2012).
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`Petitioners finally argue that Patent Owner’s objection to Dr. Roush’s out-
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`of-scope testimony is an improper mechanism for identifying new reply arguments,
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`which attempts to “nullify the two-page limit” for Patent Owner’s identification
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`3
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`IPR2016-00204
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`paper (Paper 57). Paper 78 pp. 7-8. However, Patent Owner’s scope objections
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`were put on the record during Dr. Roush’s deposition, more than three weeks
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`before Petitioners filed their reply. See Paper 71 p. 5 (citing Ex. 1050 at 243:18-
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`19, 253:5, 256:21-257:4). Patent Owner had no way of knowing that Petitioners’
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`reply would improperly rely on the ’301 patent. See Paper 57 pp. 1-2. Patent
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`Owner properly and timely objected to the cross-examination testimony because it
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`exceeded the scope of Dr. Roush’s direct testimony (i.e., Exhibit 2036). See, e.g.,
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`Ex. 1050 at 243:18-19, 253:5, 256:21-257:4.
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` Petitioners’ arguments are
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`procedurally and factually incorrect, and the Roush Testimony should be excluded
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`under 37 C.F.R. § 42.53(d)(5)(ii).
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`IV. Exhibit 1104 should be excluded under FRE 901, FRE 1001(e) and 1003
`Dr. Wang’s declaration (Ex. 1217) is insufficient to authenticate Exhibit
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`1104 given his testimony that he “did not specifically do the calculation[s]” but
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`Mr. Dowd did. See Ex. 2194 at 167:4-17. Petitioners also do not deny that Exhibit
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`1104 lacks certain data and contains errors. See Paper 78 pp. 8-10.
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`V. Exhibit 1156 should be excluded as lacking relevance under FRE 402
`and as unauthorized evidence under 37 C.F.R. § 42.123
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`The Board has already determined that the LeGall thesis is not prior art in
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`this proceeding. Institution Decision (Paper 19) p. 12. This issue should not be re-
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`litigated less than two weeks before oral argument and after Patent Owner has filed
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`its last substantive paper. Since the LeGall thesis is not prior art, Exhibit 1156
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`4
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`IPR2016-00204
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`(Transcript, Deposition of John Lehner), which Petitioners introduced to
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`resuscitate the LeGall thesis, is irrelevant and should be excluded under FRE 402.
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`If Petitioners believed that Exhibit 1156 was relevant to a claim of the ’551
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`patent, then Petitioners should have, and could have, requested to file the exhibit as
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`supplemental
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`information within one month of
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`the
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`institution date.
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`37 C.F.R. § 42.123(a). Even after that deadline, Petitioners had other mechanisms
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`for introducing supplemental information. See 37 C.F.R. § 42.123(b) & (c).
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`Petitioners did none of these. Apparently recognizing their failure, Petitioners do
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`not even address Patent Owner’s arguments regarding 37 C.F.R. § 42.123 in their
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`opposition. See Paper 78 pp. 10-11. Thus, Exhibit 1156 should also be excluded
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`as unauthorized evidence under 37 C.F.R. § 42.123.
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`VI. Exhibit 2035 at 246:22-254:1 (“Wang Testimony”) should be excluded
`The Wang Testimony lacks relevance and should be excluded under FRE
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`402 for the reasons detailed above for Exhibit 1156. The Wang Testimony should
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`be excluded as outside the scope of cross-examination because Petitioners do not
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`dispute that Exhibit 1156 is outside the scope of Dr. Wang’s direct testimony.
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`VII. Exhibit 1158 should be excluded under FRE 901
`Petitioners have still not provided the testimony of any witness with personal
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`knowledge of the unauthenticated websites listed in Exhibit 1158. Therefore,
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`Exhibit 1158 lacks authentication and should be excluded.
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`5
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`
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`IPR2016—00204
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`Date: January 13, 2017
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`Respectfully submitted,
`
`X‘
`
`VJ/5,5 /
`
`J V;
`
`
`By
`0
`Andrea G. Reistér
`Registration(No.: 36,253
`Jennifer L. Robbins
`
`if;
`
`Registration No.: 61,163
`
`Enrique D. Longton
`
`Registration No.: 47,304
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
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`Washington, DC 20001
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`(202) 662-6000
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`Attorneys for Patent Owner
`
`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 13th day of
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`January 2017, the foregoing Patent Owner’s Reply to Petitioners’ Opposition to its
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`Motion to Exclude Evidence Pursuant
`
`to 37 C.F.R.
`
`§ 42.64 was served by
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`electronic mail, by agreement of the parties, on the following counsel of record for
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`petitioners.
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`PETITIONER (IPR2016—O0204)
`Matthew J. Dowd (mjdowd@dowdpllc.com)
`DOWD PLLC
`
`William G. Jenks (wjenks@jenksiplaw.com)
`JENKS IP LAW
`
`PETITIONER (IPR2016-01101)
`Steven W. Parmelee (sparmelee@wsgr.co1n)
`Michael T. Rosato (mrosato@wsgr.com)
`Jad A. Mills (jmills@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`PETITIONER (IPR2016-O 1242)
`Matthew L. Fedowitz (mfedowitz@merchantgouldcom)
`Daniel R. Evans (devans@merchantgould.com)
`MERCHANT & GOULD P.C.
`
`PETITIONER (IPR2016-01245)
`Gary J. Speier (gspeier@carlsoncaspers.com)
`Jeffer Ali (ja1i@carlsoncaspers.com)
`CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN, P.A.
`.»*”"“““““‘*-s\\
`
`Date: January 13, 2017
`
`A
`f‘1*§u.. 2,,/‘vif
`Andrea G. R/eijster, Esq.
`Reg. No.: 36,253
`
`i~«%’5:i»/2/'” »-«...~=
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