UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.
`Patent Owner
`
`
`
`
`
`Patent No. RE38,551
`Issue Date: July 6, 2004
`Title: ANTICONVULSANT ENANTIOMERIC AMINO ACID DERIVATIVES
`_______________
`
`Inter Partes Review No. IPR2016-00204
`____________________________________________________________
`
`MOTION TO COMPEL DISCOVERY OF INCONSISTENT
`INFORMATION AND TO FILE EXHIBIT 2025
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.
`Patent Owner
`
`
`
`
`
`Patent No. RE38,551
`Issue Date: July 6, 2004
`Title: ANTICONVULSANT ENANTIOMERIC AMINO ACID DERIVATIVES
`_______________
`
`Inter Partes Review No. IPR2016-00204
`____________________________________________________________
`
`MOTION TO COMPEL DISCOVERY OF INCONSISTENT
`INFORMATION AND TO FILE EXHIBIT 2025
`
`
`
`
`
`
`
`
`
`
`In its Patent Owner Preliminary Response (“POPR”), Patent Owner advanced
`
`demonstrably inaccurate and misleading factual arguments. Patent Owner stated
`
`that the trial stipulation concerning LeGall as prior art was “drafted to streamline
`
`issues at trial” and “is not probative of the underlying facts” of LeGall’s public
`
`accessibility. POPR, Paper No. 9 at 20. Patent Owner contended that certain
`
`“facts” about student access to LeGall “provide a ready and common-sense
`
`explanation” of why the evidence does not establish LeGall as prior art. Id. at 22.
`
`These quintessential factual assertions are contradicted by uncontroverted
`
`statements and testimony Patent Owner resists providing to the Board. See Ex.
`
`2025 at 44 (stating that “we got the proof and now they admit” that LeGall is prior
`
`art). Unsupported by statute or rule, Patent Owner’s position contravenes its duty
`
`of candor. To be sure, the IPR petition meets the “reasonable likelihood” standard
`
`for demonstrating LeGall as prior art and establishing one or more claims as
`
`unpatentable. Even so, Patent Owner, under the statute or rules, cannot advance
`
`factual assertions inconsistent with information it has in its possession and
`
`simultaneously refuse to provide Petitioner and the Board with that information.
`
`I.
`
`Statement of Material Facts
`
`1. Patent Owner and/or its counsel are in possession of the documents listed in
`
`the e-mail dated December 22, 2015. Ex. 1038. 2. The non-public transcript of the
`
`deposition of John Lehner, dated December 5, 2014, contains testimony regarding
`
`1
`
`
`
`Patent No. RE38,551
`Petition For Inter Partes Review
`the public accessibility of LeGall. Ex. 1028, 0013. 3. In response to a subpoena,
`
`
`
`
`
`the University of Houston (“University”) provided non-public documents and
`
`information to Patent Owner regarding the public accessibility of LeGall and other
`
`similar University theses. Ex. 1027, 0009-11. 4. LeGall was deposited in the
`
`University library at least one year prior to March 15, 1996. 6. From 1988 to
`
`March 15, 1996, the University provided forms for public visitors with which a
`
`visitor could request a copy of a University thesis, such as LeGall, by author name
`
`and/or title. Ex. 1028, 0009-10. 7. LeGall is cited by author name and University
`
`affiliation in at least three publicly-available publications. Ex. 1016, p. 279; Ex.
`
`1017, p. 3360; Ex. 1010, p. 7013. 8. The University has a financial interest tied to
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`U.S. Patent No. RE38,551 and has refused to release the Lehner deposition
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`transcript on the grounds that releasing it would cause the University’s revenue
`
`stream to be lost or severely diminished. Ex. 1028, 0006, 0015.
`
`II. Discovery and Filing of the Requested Documents is Authorized
`
`First, “[p]arties and individuals involved in the proceeding have a duty of
`
`candor and good faith to the Office during the course of a proceeding.” 37 C.F.R.
`
`§ 42.11. The Board can sanction noncompliance, including for “[a]dvancing a
`
`misleading or frivolous argument” and for the “[m]isrepresentation of a fact.” Id.
`
`§ 42.12(a)(2)-(3). A party does not comply with its duty of candor if it
`
`intentionally withholds from the Board information directly refuting a position it
`
`
`
`2
`
`
`
`Patent No. RE38,551
`Petition For Inter Partes Review
`advocates. See also Order, Paper No. 10 at 3 (Mar. 17, 2016) (identifying duty of
`
`
`
`
`
`candor and good faith). Here, Patent Owner’s affirmative factual representations
`
`in its POPR do not comply with its duty of candor, and therefore the Board has the
`
`power to require the filing of the inconsistent information. Contrary to the POPR’s
`
`factual assertion about its prior art stipulation, two trial witnesses confirmed the
`
`public availability of LeGall. See Ex. 2025, at 102, 683. The University asserted
`
`that (a) Lehner’s deposition testimony and (b) the records indicating check-out
`
`dates for LeGall “would cause the University competitive harm,” which must mean
`
`that the testimony confirms LeGall’s status as prior art. See Ex. 1028, at 5, 15.
`
`Second, the applicable statutes do not exclude the consideration of facts that
`
`contradict the veracity of statements in a POPR. See 35 U.S.C. § 314. While a
`
`petition cannot be saved by supplementation, the statutes do not mandate the Board
`
`to turn a blind eye to information that contradicts factual assertions in a POPR.
`
`See id. Indeed, unlike in § 314, when Congress wanted to specifically restrict the
`
`Office’s authority, it did so by using the word “only.” See, e.g., 35 U.S.C. § 6(c)
`
`(“Only the . . . Board may grant rehearings.”); id. § 311(b) (limiting IPR grounds
`
`“only on a ground . . . under 102 or 103”); id. § 317(b) (limiting access to
`
`settlements “only to Federal Government agencies”). Consistent with this, the
`
`Board has sought and considered information addressing the veracity of statements
`
`in the petition before the institution decision. See, e.g., Zerto, Inc. v. EMC Corp.,
`
`
`
`3
`
`
`
`Patent No. RE38,551
`Petition For Inter Partes Review
`IPR2014-01254, Paper 15 (Nov. 25, 2014) (granting a discovery request). Under
`
`
`
`
`
`the Patent Owner’s theory, the Board could not consider pre-institution discovery
`
`on relevant issues, including the issue of real party in interest.
`
`Third, although initially disputed by Patent Owner, see Exs. 1038-1043, the
`
`rules authorize discovery of inconsistent information during a “proceeding,” 37
`
`C.F.R. § 42.51(b)(1)(iii), which includes a “preliminary proceeding,” i.e., prior to
`
`institution, id. § 42.2. The Board can provide “a proper course of conduct . . . for
`
`any situation not specifically covered” by the rules. Id. § 42.5. Thus, even beyond
`
`its power to sanction under § 42.12, the Board may reasonably authorize the filing
`
`of inconsistent information. See Chevron, U.S.A. v. Natural Res. Def. Council,
`
`Inc., 467 U.S. 837, 842 (1984). Because discovery ensures accurate decision-
`
`making by the Board, it would be nonsensical, unjust, and against public policy to
`
`allow discovery of inconsistent information under § 42.51(b)(1)(iii) and yet
`
`preclude the Board from considering that information. See 77 Fed. Reg. 48,756,
`
`48761 (Aug. 14, 2001) (describing specific examples of inconsistent information).
`
`III. The Documents Are “Inconsistent Information,” §42.51(b)(1)(iii).
`
`First, Exhibit 2025 is clearly inconsistent with Patent Owner’s contention that
`
`the trial stipulation concerning LeGall is “not probative” of whether LeGall was
`
`publicly accessible. See POPR at 20. Trial counsel mentioned actual “proof” that
`
`caused Patent Owner’s admission, Ex. 2025 at 44, and two witnesses confirmed
`
`
`
`4
`
`
`
`Patent No. RE38,551
`Petition For Inter Partes Review
`LeGall’s public accessibility, Ex. 2025 at 102, 683. Second, the University
`
`
`
`
`
`admitted that release of the deposition transcript and documents produced through
`
`the subpoena would cause it “competitive harm.” Ex. 1028, at 5, 15. This is a
`
`classic admission against interest. See Fed. R. Evid. 804(b)(3).
`
`IV. Availability of Requested Documents Prior to Filing of the Petition
`
`First, most of the requested documents, see Ex. 1038, including the Lehner
`
`deposition transcript, are not publicly available even today. Discovery of these
`
`nonpublic documents cannot be precluded based on a timeliness argument.
`
`Second, even if the trial transcript was available before the filing of the petition, it
`
`does not negate Patent Owner’s obligation to apprise the Board of inconsistent
`
`information or to comply with its duty of candor. Patent Owner cannot cherry-pick
`
`information by filing only part of the transcript, see Ex. 2012, and blocking
`
`contradictory testimony. Third, the PACER docket shows redacted filings and a
`
`redaction transcript release date of March 14, 2016, suggesting the trial transcript
`
`would be unavailable until that date. Ex. 1044 at 73-75. Finally, filing three
`
`transcript pages will not delay the proceeding or cause prejudice to Patent Owner.
`
`V. Conclusion. Exhibit 2025 (either the three pages, or the entire transcript)
`
`should be filed. Discovery should be compelled for the Lehner deposition and the
`
`University documents, see Ex. 1028, 13, and Ex. 1027, 9-11, inconsistent with the
`
`POPR regarding the public accessibility of LeGall.
`
`
`
`5
`
`
`
`/Matthew J. Dowd/
`Matthew J. Dowd
`Reg. No. 47,534
`Justin W. Crotty
`Reg. No. 68,937
`ANDREWS KURTH LLP
`1350 I Street, NW
`Suite 1100
`Washington, DC 20005
`Phone: (202) 662-2701
`Fax: (202) 974-9511
`MatthewDowd@andrewskurth.com
`
`Patent No. RE38,551
`Petition For Inter Partes Review
`Dated: April 11, 2016
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`6
`
`
`
`
`
`
`
`Patent No. RE38,551
`Petition For Inter Partes Review
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing motion
`together with all exhibits and other papers filed therewith will be served on April
`11, 2016, by e-mail to the attorney(s) of record for the patent at the following
`addresses:
`
`
`areister@cov.com
`jrobbins@cov.com
`rlongton@cov.com
`
`Covington & Burling LLP
`One City Center, 850 Tenth Street, NW
`Washington, DC 20001
`
`
`
`
`/Matthew J. Dowd/
`Matthew J. Dowd
`Reg. No. 47,534
`ANDREWS KURTH LLP
`1350 I Street, NW
`Suite 1100
`Washington, DC 20005
`Phone: (202) 662-2701
`Fax: (202) 974-9511
`MatthewDowd@andrewskurth.com
`
`By:
`
`7
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