UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`ARGENTUM PHARMACEUTICALS LLC, MYLAN PHARMACEUTICALS
`INC., BRECKENRIDGE PHARMACEUTICAL, INC., AND ALEMBIC
`PHARMACEUTICALS, LTD.,
`Petitioners,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`_____________________________
`
`IPR2016-002041
`Patent RE 38,551
`_____________________________
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF
`MOTION TO EXCLUDE
`
`
`
`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245 have been
`
`joined with this proceeding.
`
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`ARGENTUM PHARMACEUTICALS LLC, MYLAN PHARMACEUTICALS
`INC., BRECKENRIDGE PHARMACEUTICAL, INC., AND ALEMBIC
`PHARMACEUTICALS, LTD.,
`Petitioners,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`_____________________________
`
`IPR2016-002041
`Patent RE 38,551
`_____________________________
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF
`MOTION TO EXCLUDE
`
`
`
`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245 have been
`
`joined with this proceeding.
`
`
`
`
`
`I.
`
`Petitioners file this Reply in response to the Opposition (Paper 73).
`
`Exhibits 2125 and 2141-2170
`Patent Owner offers several responses to the motion to exclude, but none is a
`
`basis to admit the evidence. First, Patent Owner erroneously argues that Exhibits
`
`2125 and 2141-2170 are not hearsay. Paper 73 at 5. These exhibits are certainly
`
`hearsay because they are out of court statements being offered for the truth of the
`
`matter asserted. Fed. R. Ev. 801(c). The relevant question is whether they fall
`
`under a hearsay exception.
`
`Second, Exhibits 2125 and 2141-2170 do not fall within the hearsay
`
`exceptions of FRE 803(6) and 803(15). Patent Owner’s evidentiary declarations
`
`are deficient on their face and do not establish the exhibits as business records.
`
`The declarations merely assert the “understand[ing]” of each declarant “[b]ased on
`
`a general investigation.” Ex. 2185, ¶4-7; Ex. 2187, ¶3-6. For instance, the
`
`declaration of Paul Petigrow is inadequate. He has been employed at Harris FRC
`
`Corporation for less than a year, Ex. 2187 ¶2, and yet he purports to “understand”
`
`events and “the regular course of business” from approximately twenty years ago,
`
`id. at ¶3. For Exhibits 2151-2170, he makes assertions based “[o]n information
`
`and belief.” Id. at ¶¶7-26. Neither declaration demonstrates personal knowledge
`
`of the facts necessary to establish the business-records exception. Even with the
`
`two declarations, significant concerns remain about the reliability and accuracy of
`
`-1-
`
`
`
`
`
`the evidence—the very reason by hearsay evidence is generally inadmissible.
`
`Additionally, Patent Owner offers no legal support for its proposition that
`
`the vague letters fall under the hearsay exception of FRE 803(15). None of the
`
`letters establishes that a property interest was at issue, as none of the letters
`
`references patents, either generally or specifically. See, e.g., Ex. 2141-2151.
`
`Perhaps patents were identified in correspondence not produced by Patent Owner.
`
`Third, the incompleteness and inconsistencies of the purported
`
`correspondence were confirmed as this proceeding advanced. Dr. McDuff
`
`observed noted these issues:
`
`I note that both Dr. Vellturo and I testified at a public trial . . . .
`During this public testimony, and without objection from Patent
`Owner, my demonstrative exhibits DDX-404 and DDX-405
`were publicly displayed in the courtroom. Ex. 1170 at 1060:15-
`1062:17. These demonstrative exhibits, which are attached in
`Ex. 1171, refer to several licensing letters that Patent Owner
`chose not to produce in this proceeding, even though these
`letters are inconsistent with the positions Patent Owner is
`taking in this proceeding.
`Ex. 1086 at 26-27 n.40 (emphasis added). Dr. Vellturo stated that, during the trial,
`
`he “may have seen” documents indicating that “UCB believed they had a high
`
`share of voice with respect to Vimpat compared to the competition.” Ex.1049 at
`
`244-245. Such documents are inconsistent with Patent Owner’s position before the
`
`-2-
`
`
`
`
`
`Board that UCB did not engage in aggressive marketing efforts for Vimpat.
`
`Patent Owner also asserts that Petitioners had an obligation to identify the
`
`inconsistent information. This was not possible, as Patent Owner knows, because a
`
`protective order was entered in the district court litigation. Patent Owner was best
`
`suited to produce all the relevant documents, not merely a cherry-picked selection.
`
`Petitioner’s expert McDuff did address the exhibits, and explained that the
`
`exhibits do not support the secondary considerations arguments Patent Owner
`
`presents. Petitioners and their experts merely addressed and responded to evidence
`
`while concurrently objecting to the admissibility of the evidence.
`
`Petitioners’ FRE 106 objection was timely, contrary to Patent Owner’s
`
`argument. Evidence came to light after the deadline (August 22, 2016) cited by
`
`Patent Owner. Paper 73 at 8. The depositions of Drs. Vellturo and McDuff
`
`occurred on October 14 and December 8, respectively.
`
`In short, Exhibits 2125 and 2141-2170 are a selective snippet of the story
`
`Patent Owner presents. Patent Owner possessed documents that are inconsistent
`
`with the assertions made before the Board. Patent Owner had the ability to provide
`
`the Board with the complete and accurate evidence, but it chose not to do so.
`
`II.
`
`Exhibits 2174-2180
`For the reasons described above, and as set forth in Petitioner’s motion,
`
`Exhibits 2174-2180 should be excluded. The record demonstrates that Patent
`
`-3-
`
`
`
`
`
`Owner did not produce all documents relating to alleged commercial success, as
`
`were produced during the district court trial. Patent Owner’s conduct here
`
`frustrates the goal of “secur[ing] the just, speedy, and inexpensive resolution of
`
`every proceeding.” 37 C.F.R. § 42.1(b). The Board’s rules cannot be construed to
`
`permit Patent Owner to rely on selectively chosen documents when it knows well
`
`that it possesses other documents containing information inconsistent with a
`
`position the Patent Owner is advancing before the Board.
`
`III. Exhibits 2181 and 2182
`Patent Owner’s response to the objections avoids the differing legal
`
`standards, e.g., patentability and claim construction, applicable to, and the differing
`
`bodies of evidence presented during, the two proceedings. Paper 72 at 10. For
`
`example, Patent Owner stipulated to LeGall’s prior art status in the district court,
`
`Ex. 1004 at 20-21, but alleges here that it is not prior art, Paper 9 at 20. Patent
`
`Owner incorrectly contends that “the objective indicia in this proceeding were
`
`previously considered by the district court.” As just one example, the district court
`
`did not consider the testimony of Dr. Kathryn Davis. Consequently, the district
`
`court’s order and reasoning are not relevant to the present IPR.
`
`Importantly, Patent Owner has waived any objection to the admissibility of
`
`the ‘301 patent as prior art. Patent Owner was on notice that the ‘301 patent was
`
`being presented as prior art. Pet. at 43 (“A further expectation of success arises
`
`-4-
`
`
`
`
`
`from the prior art ’301 patent . . . .”); id. at ii, 19-21, 46-47, 53-54; Ex. 1002 (Wang
`
`Decl.) at ii, 24-26, 61. Yet, Patent Owner did not argue that the ‘301 patent is not
`
`prior art. See PO Resp. at 59 (characterizing the scope of the ‘301 patent’s claims).
`
`Similarly, Patent Owner did not dispute the prior art status of the ‘301 patent in
`
`IPR2014-01126. See Pet. at 20 n.2. Patent Owner’s acquiescence has deprived
`
`Petitioners the ability to dispute factual assertions, if made now by the Patent
`
`Owner, relating to whether § 103(c)(1) applies, such as “the time the claimed
`
`invention was made.” Even if Patent Owner’s argument were not waived, Patent
`
`Owner has produced no evidence of the date of invention and no assignment
`
`documents as of the earliest claimed priority date. See Marvell Semiconductor,
`
`Inc. v. Intellectual Ventures I LLC, IPR2014-00552, Paper 79 at 7 (PTAB Dec. 2,
`
`2015) (explaining that, when invoking § 103(c), “Patent Owner must establish the
`
`date on which the invention of the . . . patent was made”).
`
`Finally, Patent Owner’s reliance on a typographical error is misplaced.
`
`Separate objections were made under separate headings identifying each objected-
`
`to exhibit: “Exhibit 2181 Order” and then “Exhibit 2182 Memorandum Opinion.”
`
`Paper 41 at 41. Obvious typographical errors such are routinely understood by
`
`parties and courts alike. Cf. Novo Industries, LP v. Micro Molds Corp., 350 F.3d
`
`1348, 1355 (Fed. Cir. 2003) (“[U]nder Essex, certain obvious errors in the patent
`
`can be corrected by the district court in construing the patent.”).
`
`-5-
`
`
`
`Respectfully,
`
`
`
`/Matthew J. Dowd/
`Matthew J. Dowd
`Registration No. 47,534
`Dowd PLLC
`1717 Pennsylvania Avenue, NW
`Suite 1025
`Washington, D.C. 20006
`mjdowd@dowdpllc.com
`(202) 573-3853
`
`William G. Jenks
`Reg. No. 48,818
`Jenks IP Law
`1050 17th ST NW
`Suite 800
`Washington, D.C. 20036
`Phone: (202) 412-7964
`wjenks@jenksiplaw.com
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`Date: January 13, 2017
`
`
`
`
`
`-6-
`
`
`
`
`
`IV. CERTIFICATE OF SERVICE
`37 CFR §42.6(e)
`
`I certify that, on January 13, 2017, this PETITIONERS’ REPLY IN
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE was served on Research
`Corporation Technologies at the following service electronic addresses:
`
`
`
`Andrea G. Reister
`
` areister@cov.com
`
`Jennifer L. Robbins
`
` jrobbins@cov.com
`
`Enrique D. Longton
`
`elongton@cov.com
`
`
`Dated: January 13, 2017
`
`
`
`
`
`/Matthew J. Dowd/
`Matthew J. Dowd
`Reg. No. 47,534
`
`
`
`
`
`
`
`-7-
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