Trials@uspto.gov
`571-272-7822
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`
`
`
`
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`Paper 10
`Date: March 17, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00204
`Patent RE38,551 E
`____________
`
`
`
`Before FRANCISCO C. PRATS and JACQUELINE WRIGHT BONILLA,
`Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: March 17, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00204
`Patent RE38,551 E
`____________
`
`
`
`Before FRANCISCO C. PRATS and JACQUELINE WRIGHT BONILLA,
`Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`
`On March 8, 2016, a conference call was conducted between
`
`respective counsel for the parties and Judges Prats and Bonilla. A court
`
`reporter also was present on the call.1 Petitioner requested the conference
`
`call to address an issue regarding information that Petitioner contends is in
`
`Patent Owner’s possession and constitutes routine discovery under 37 C.F.R.
`
`§ 42.51(b)(1)(iii). Specifically, Petitioner contends that Patent Owner
`
`possesses, but has not served, relevant information that is inconsistent with a
`
`position advanced by Patent Owner in its Preliminary Response (Paper 9) as
`
`it relates to a reference, i.e., the LeGall Thesis (Ex. 1008), relied upon in
`
`certain challenges raised in the Petition (Paper 2).
`
`In its Preliminary Response, Patent Owner asserts, inter alia, that
`
`Petitioner fails to show that the LeGall Thesis is a “printed publication” and
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`qualifies as prior art under 35 U.S.C. § 102. Paper 9, 17–23 (citing Activis
`
`Inc. v. Research Corp. Techs., Inc., IPR2014-01126, Paper 21(or 22), slip
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`op. at 13 (PTAB Jan. 9, 2015) (determining that the LeGall Thesis does not
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`qualify as a “printed publication” under § 102(b))). During the call,
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`Petitioner pointed to Exhibit 1004 in the record, which is “Plaintiffs’ and
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`Defendents’ Joint Statement of Uncontested Facts” (“Joint Statement”) filed
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`on October 26, 2015, in a district court proceeding involving Patent Owner
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`as a plaintiff and the patent challenged here, i.e., UCB, Inc. and Research
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`Corp. Techs., Inc. v. Accord Healthcare, Inc., C.A. No. 13-1206 (D. Del).
`
`Paragraph 87 in that Joint Statement states that “for purposes of this [district
`
`
`1 Patent Owner, who arranged the court reporter, shall file a copy of a
`transcript of the call as an exhibit in due course. This Order summarizes
`statements made during the conference call. A more detailed record may be
`found in the transcript.
`
`
`
`2
`
`
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`IPR2016-00204
`Patent RE38,551 E
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`court] litigation, the LeGall thesis was publicly accessible more than one
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`year before the earliest priority date for the ’551 patent and constitutes
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`printed publication within the meaning of 35 U.S.C § 102(b).” Ex. 1004
`
`¶ 87.
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`During the conference call, Petitioner stated that it had reason to
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`believe, in view of the Joint Statement, that Patent Owner possessed relevant
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`documents establishing the public accessibility of the LeGall Thesis, and
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`specifically transcripts of depositions taken during the district court
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`proceeding (not made of record in that case), as well as other unnamed
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`documents. Patent Owner responded that it has not failed to serve any
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`information inconsistent with a position advanced in its Preliminary
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`Response, including its position that Petitioner has failed to meet its burden
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`to establish that the LeGall Thesis qualifies as prior art.
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`As noted by Petitioner, both parties must serve routine discovery to
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`each other, including relevant information that is inconsistent with a position
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`advanced by the party during the proceeding. Under 37 C.F.R. § 42.11, both
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`parties also have a duty of candor and good faith to the Office during the
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`course of a proceeding, such as in relation to routine discovery, and
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`especially regarding “information that is inconsistent with a position
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`advanced by the party” under § 42.51(b)(1)(iii). At this time, we have
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`insufficient information to conclude that Patent Owner has failed to meet its
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`duty of candor and good faith in this regard. Thus, we are not persuaded to
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`compel further routine discovery at this time.
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`During the call, Petitioner also requested the same information as
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`additional discovery under § 42.51(b)(2). We decline to authorize such
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`additional discovery at this preliminary stage. We have yet to determine
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`
`
`3
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`
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`IPR2016-00204
`Patent RE38,551 E
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`whether to institute a trial here, i.e., whether “there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition” in view of a number of grounds raised in the
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`Petition, of which only some rely on the LeGall Thesis (Paper 2 at 2). 35
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`U.S.C. § 314. We will consider information presented and cited in the
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`Petition and the Preliminary Response, as already before us, when making
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`that determination.
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`In consideration of the foregoing, it is hereby:
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`ORDER
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`ORDERED that Petitioner is not authorized to file a motion to compel
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`routine discovery under § 42.51(b)(1)(iii), nor a motion to request additional
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`discovery under § 42.51(b)(2), prior to a determination by the panel on
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`institution.
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`
`
`
`
`4
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`
`
`IPR2016-00204
`Patent RE38,551 E
`
`
`
`PETITIONER:
`
`Matthew Dowd
`MatthewDowd@andrewskurth.com
`
`Justin Crotty
`justincrotty@andrewskurth.com
`
`
`
`
`PATENT OWNER:
`
`Andrea Reister
`areister@cov.com
`
`Jennifer Robbins
`jrobbins@cov.com
`
`Enrique Longton
`rlongton@cov.com
`
`
`
`
`
`
`
`5
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`
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