Trials@uspto.gov
`571-272-7822
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`
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`Paper 12
`Date: April 6, 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, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 12
`Date: April 6, 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, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, 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 April 4, 2016, a conference call was conducted between respective
`
`counsel for the parties and Judges Prats, Bonilla, and Paulraj. A court
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`reporter also was present on the call.1 Petitioner requested this second
`
`conference call to address, once again, an issue regarding information that
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`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 filed and/or served,
`
`relevant information that is inconsistent with a position advanced by Patent
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`Owner in its Preliminary Response (Paper 9) as it relates to the LeGall
`
`Thesis (Ex. 1008), relied upon in certain challenges raised in the Petition
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`(Paper 2).
`
`In its Preliminary Response, Patent Owner asserts, inter alia, that
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`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. During the
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`call, Petitioner discussed Exhibit 2025, a 1335-page transcript from a trial in
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`a district court litigation involving Patent Owner as a plaintiff and the patent
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`challenged here. Petitioner stated that Patent Owner included Exhibit 2025
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`in Patent Owner’s Exhibit List filed here on March 17, 2016 (Paper 11) and
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`served Exhibit 2025 on Petitioner on that date, i.e., after Patent Owner filed
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`its Preliminary Response, but did not file the exhibit with the Board.
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`Petitioner requests authorization to file Exhibit 2025, or at least
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`certain pages of the exhibit, which, according to Petitioner, present
`
`
`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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`
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`IPR2016-00204
`Patent RE38,551 E
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`information inconsistent with statements in Patent Owner’s Preliminary
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`Response (Paper 9) and, therefore, correspond to routine discovery under
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`§ 42.51(b)(1)(iii). Petitioner also requests authorization to file a motion to
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`compel routine discovery under § 42.51(b)(1)(iii) of a deposition transcript
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`(discussed in Ex. 1028, 13) and documents produced through a subpoena
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`(discussed in Ex. 1027, 9–11) from the district court trial.
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`Patent Owner objects to the filing of Exhibit 2025 at this stage, as well
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`as the production of other requested documents, stating that Petitioner has
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`the burden to present its case in its Petition and cited exhibits. Patent Owner
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`represents, again, that it has not failed to serve any information inconsistent
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`with a position advanced in its Preliminary Response, including its position
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`that Petitioner fails to meet its burden to establish that the LeGall Thesis
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`qualifies as prior art.
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`After hearing from both parties, we determined that briefing on the
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`issue of routine discovery was warranted. During the call, we authorized
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`Petitioner to file, no later than Monday, April 11, 2016, a 5-page motion to
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`file Exhibit 2025 (in full or part) and/or compel routine discovery in relation
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`to other documents discussed above.
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`In its motion, Petitioner has the burden to show that, notwithstanding
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`Patent Owner’s representations to the contrary, the documents at issue
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`contain specific information inconsistent with an explicit position advanced
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`by Patent Owner in this case. 37 C.F.R. § 42.52(a), §42.20(c). The motion
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`is limited to the documents described above, and should address the
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`following two issues: (1) why and on what basis, prior to a decision on
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`institution, but after the filing of the Petition and Preliminary Response, we
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`should compel the filing or service of the requested documents under
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`
`
`3
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`
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`IPR2016-00204
`Patent RE38,551 E
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`relevant statutes and rules; and (2) whether Petitioner could have obtained
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`such documents before the filing a Petition.
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`We further authorize Patent Owner to file a 5-page opposition no later
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`than Monday, April 18, 2016.
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`
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`It is
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`ORDERED that Petitioner’s request for authorization to file a motion
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`to compel routine discovery is granted to the extent described above;
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`FURTHER ORDERED that Petitioner’s motion must be 5 pages or
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`less and must be filed no later than Monday, April 11, 2016; and
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`FURTHER ORDERED that Patent Owner is authorized to file a 5-
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`pages or less opposition to Petitioner’s motion no later than Monday, April
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`18, 2016.
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`
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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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