IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
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`v.
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`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
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`Case No. IPR2016-00204
`Patent No. RE 38,551
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`COMPEL DISCOVERY AND TO FILE EXHIBIT 2025
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` DC: 6038549-9
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2016-00204
`Patent No. RE 38,551
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`COMPEL DISCOVERY AND TO FILE EXHIBIT 2025
`
`
`
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`
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` DC: 6038549-9
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`
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`IPR2016-00204
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`029819.0100-US03
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`
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`Petitioner’s Motion presents no reason to deviate from the Board’s prior
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`Order (Paper 10) declining to compel routine or additional discovery. Petitioner’s
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`Motion is based wholly on the erroneous premise that the Patent Owner
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`Preliminary Response (“POPR”) contains “factual assertions” regarding the status
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`of the LeGall Thesis as a printed publication. Mot. at 1. But Patent Owner has not
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`taken any substantive position on whether the LeGall Thesis is a printed
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`publication, challenging only the sufficiency of Petitioner’s evidence. Therefore,
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`evidence alleged to address the substantive question of whether the LeGall Thesis
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`is a printed publication cannot be “inconsistent information” under 37 C.F.R.
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`§ 42.51(b)(1)(iii). Moreover, there is no authority—and Petitioner cites to none—
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`permitting Petitioner to file evidence beyond that in the petition prior to institution.
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`
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`In addition, Petitioner includes “material facts” addressing the merits of the
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`printed publication question (Mot. at 1-2),1 in a transparent attempt to improperly
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`supplement the petition in violation of the statute. See 35 U.S.C. § 314(a).
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`I.
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`Patent Owner Has Not Advanced a Substantive Position on Whether the
`LeGall Thesis Is a Printed Publication
`Petitioner has not—and cannot—point to any substantive position Patent
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`Owner has advanced on whether the LeGall Thesis is a printed publication.
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`Applying PTAB case law, page 20 of the POPR (see Mot. at 1, 4) explains that the
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`1 Notably, Petitioner cites no support for alleged “material fact” “4.” See Mot. at 2.
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`1
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`
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`IPR2016-00204
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`029819.0100-US03
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`trial stipulation, drafted to streamline the issues at trial, does not preclude the
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`Board from assessing whether Petitioner’s evidence is sufficient, and that the
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`conclusory language of the stipulation itself “is not probative of the underlying
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`facts” concerning public accessibility of the LeGall Thesis. Page 22 of the POPR
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`(see Mot. at 1) explains that the articles identified by Petitioner were authored by
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`students (other than LeGall), or their advisors, providing a ready explanation for
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`access to those students’ theses, confirming that the thesis citations “provide no
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`evidence” “of how the LeGall Thesis was in fact indexed, cataloged or shelved.”
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`
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`The POPR’s challenge to the sufficiency of Petitioner’s evidence of public
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`accessibility is not “tantamount to an affirmative argument that the [thesis is] not
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`[a] printed publication[].” Nvidia Corp. v. Samsung Elecs. Co., Ltd., IPR2015-
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`01316, Paper 9, p. 3 (PTAB Oct. 28, 2015) (internal quotations omitted); see also
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`Hughes Network Sys., LLC v. Calif. Inst. of Tech., IPR2015-00059, Paper 34, p. 7
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`(PTAB Dec. 30, 2015). “The distinction is important which, if not made, leads to
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`an unreasonably broad scope of routine discovery.” Nvidia, Paper 9, p. 3.
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`
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`In Nvidia, the Board denied Petitioner’s request for authorization to file a
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`motion to compel under 37 C.F.R. § 42.51(b)(1)(iii), seeking documents in patent
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`owner’s possession allegedly “inconsistent” with patent owner’s position in its
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`Preliminary Response on the issue of public accessibility. Nvidia, Paper 9, p. 2.
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`The Preliminary Response asserted that “Petitioner . . . has not provided any
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`2
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`IPR2016-00204
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`029819.0100-US03
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`evidence” as to whether and how the references were made available to the public.
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`Id., Paper 7, p. 6. The Board concluded that the Preliminary Response challenged
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`the sufficiency of Petitioner’s evidence, and denied discovery on that basis: “the
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`documents Petitioner seeks are not inconsistent with a position taken in the
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`Preliminary Response and need not have been served as routine discovery.” Id.,
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`Paper 9, p. 3. As in Nvidia, the POPR in the present proceeding does not take a
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`substantive position on whether the LeGall Thesis is a printed publication,
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`challenging only the sufficiency of Petitioner’s evidence. See POPR, pp. 17-23.
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`Such “[a]rguments pointing to a deficiency in petitioner’s case do not impose an
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`obligation on the part of [patent owner] to provide evidence supplementing that
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`provided by [petitioner].” Hughes, Paper 34, p. 7.
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`II. The Statute and Rules Preclude the Filing of Supplemental Information
`Prior to the Board’s Institution Decision
`
`
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`The statute requires the Board to decide whether to institute trial based on
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`“the information presented in the petition.” 35 U.S.C. § 314(a). A petitioner must,
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`in its petition, present “credible evidence” to satisfy its burden of a threshold
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`showing of public accessibility of an asserted reference. See Hughes, Paper 34, p.
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`4; see also Apple Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 14, p. 5
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`(PTAB Aug. 12, 2015). In light of this statutory requirement, the regulations
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`provide only for service of routine discovery under 37 C.F.R. § 42.51(b)(1)(iii).
`
`The filing of evidentiary objections, supplemental evidence, and supplemental
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`3
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`
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`IPR2016-00204
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`029819.0100-US03
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`information related to the merits is permitted only after institution. See 37 C.F.R.
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`§§ 42.64(b), 42.123.
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`
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`Under this integrated statutory and regulatory framework, only where a
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`petitioner has first satisfied its statutory burden in the petition, and only after trial
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`institution, may a petitioner request to submit supplemental information regarding
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`the public accessibility of an asserted reference. See Palo Alto Networks, Inc. v.
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`Juniper Networks, Inc., IPR2013–00369, Paper 37, pp. 2-3 (PTAB Feb. 5, 2014)
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`(granting motion to submit supplemental information regarding public accessibility
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`of references when “the information presented in the Petition . . . made a threshold
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`showing that [the references] are ‘printed publications’”); see also Apple Inc. v.
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`Virnetx Inc., IPR2015-00810, Paper 17 (PTAB Nov. 2, 2015) (same). There is no
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`reason, or authority, to deviate from this framework here.
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`
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`Consideration of “pre-institution discovery on . . . the issue of real party in
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`interest” (Mot. at 4) is not to the contrary. In the Zerto case cited by Petitioner
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`(Mot. at 3-4), the Board considered evidence obtained from such discovery prior to
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`institution in conjunction with the Patent Owner Preliminary Response, a filing
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`authorized by the statute and the regulations. 35 U.S.C. § 313; 37 C.F.R. § 42.107.
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`Prior to institution, the Board properly considers information served under
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`discovery when filing the information is authorized by the regulations, and does
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`not otherwise violate the statute.
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`4
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`
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`IPR2016-00204
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`029819.0100-US03
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`III. Petitioner Has Provided No Reason that the Information It Seeks Could
`Not Have Been Obtained Prior to Filing a Petition
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`
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`Unsurprisingly, Petitioner fails to address (Mot. at 5) “whether Petitioner
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`could have obtained such documents before the filing [of] a Petition.” Paper 12, p.
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`4. First, PACER confirms that the transcript from the November district court trial
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`(which itself was open to the public) was available as of December 15, 2015:
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`“Transcript may be viewed at the court public terminal or purchased through the
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`Court Reporter/Transcriber before the deadline for Release of Transcript
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`Restriction.” Ex. 1044, p. 73 (emphasis added). Second, Petitioner was not in any
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`way limited to the district court trial evidence (e.g., transcripts from depositions) to
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`meet its burden to establish that the LeGall Thesis is a printed publication.
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`Petitioner “could have adopted any number of strategies for establishing the fact of
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`publication and the publication date,” Hughes, Paper 34, p. 8, but, instead, chose to
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`file the Petition, and, on the very same day, to start its quest for the litigation
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`documents to bolster its case. See Ex. 1038, p. 1 (email forwarding courtesy copy
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`of Petition and 15 requests for production of litigation documents, requests the
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`Board declined to consider as “premature” (see Ex. 2028)). Third, and most
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`tellingly, Petitioner was at full liberty to postpone the filing of a petition until it
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`was able to meet its threshold burden, as 35 U.S.C. § 315(b) presents no time bar.
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`
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`Petitioner’s request to file Exhibit 2025 and a motion to compel routine
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`discovery of the litigation documents should be denied.
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`5
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`IPR2016-00204
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`029819.0100—-US03
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`Dated: April 18, 2016
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`Respectfully submitted,
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`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street NW
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`Washington, DC 20001
`(202) 662-6000
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`
`
`Andrea G. Réister
`Registration No.: 36,253
`Jennifer L. Robbins
`
`Registration No.: 61,163
`Enrique D. Longton
`Registration No.: 47,304
`Attorneys for Patent Owner
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`
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`IPR2O16—00204
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`‘
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`029819.0100—US03
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`CERTIFICATE OF SERVICE
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`Pursuant to the Board’s April 6, 2016 Order (IPR2016—00204, Paper 12), I
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`hereby certify that on this 18th day of April 2016, the foregoing Patent Owner’s
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`Opposition to Petiti0ner’s Motion to Compel Discovery and to File Exhibit
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`2025 was served by electronic mail, by agreement of the parties, on the following
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`counsel of record for Petitioner:
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`Matthew J . Dowd (MatthewDowd@andrewskurth.com)
`Justin W. Crotty (JustinCrotty@andrewskurth.com)
`Andrews Kurth LLP
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`1350 I Street, NW, Suite 1100
`Washington DC 20005
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`Andrea G. Reister, Esq.
`Registration No. 36,253
`
`Dated: April 18, 2016
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