`
`
`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
`____________
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 18
`Date: May 23, 2016
`
`
`
`Before FRANCISCO C. PRATS, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion to Compel Discovery and File an Exhibit
`37 C.F.R. § 42.51(b)(1)(iii), § 42.5
`
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`
` In an Order dated April 6, 2016 (Paper 12), we authorized Petitioner
`to file a motion to compel discovery in relation to information that Petitioner
`contends is in Patent Owner’s possession and constitutes routine discovery
`under 37 C.F.R. § 42.51(b)(1)(iii).
`As background, in its Preliminary Response, Patent Owner asserts that
`Petitioner fails to show sufficiently that the LeGall Thesis (Ex. 1008), relied
`upon in certain challenges in the Petition (Paper 2), is a “printed publication”
`that qualifies as prior art under 35 U.S.C. § 102. Paper 12, 2 (citing Paper 9,
`17–23). Petitioner contends that Patent Owner possesses, but has not filed
`and/or served, relevant information that is inconsistent with that position.
`Id.
`
`On April 11, 2016, Petitioner filed a Motion to Compel Discovery of
`Inconsistent Information and to File Exhibit 2025. Paper 13 (“Motion”). In
`the Motion, Petitioner requests authorization to file Exhibit 2025, which is
`the trial transcript from a district court case involving Patent Owner, other
`defendants, and the challenged patent. Motion 5 (citing Ex. 1044, 73–75).
`In addition, Petitioner asks us to compel discovery from Patent Owner of a
`transcript from a deposition that took place in the district court case, as well
`as certain “University documents.” Motion 1–2, 5 (citing Ex. 1028, 13;
`1027, 9–11). On the same day it filed its Motion, Petitioner also filed
`Exhibit 2025 itself. By e-mail correspondence dated April 13, 2016, we
`indicated to both parties that Petitioner did not have permission to file
`Exhibit 2025 until authorized by the Board, which had not occurred at that
`point, and we would expunge Exhibit 2025.
`In its Motion, Petitioner provides substantive arguments as to why the
`LeGall thesis (Ex. 1008) was sufficiently publicly accessible in the relevant
`
`
`
`2
`
`
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`IPR2016-00204
`Patent RE38,551 E
`
`time frame, and therefore qualifies as prior art under 35 U.S.C. § 102.
`Motion 1–3, 5. Petitioner also argues: “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 [Patent Owner
`Preliminary Response].” Id. at 3.
`In relation to the latter point, Petitioner contends that Exhibit 2025 is
`“inconsistent with Patent Owner’s contention that the trial stipulation
`concerning LeGall is ‘not probative’ of whether LeGall was publicly
`accessible.” Id. at 4 (citing Patent Owner’s Preliminary Response (Paper 9
`(“Prelim. Resp.”), 20). Petitioner then asserts, relying on Ex. 2025 in
`support, that “[t]rial counsel” in the district court case “mentioned actual
`‘proof’ that caused Patent Owner’s admission,” and that “two witnesses
`confirmed LeGall’s public accessibility.” Id. at 4–5 (citing Ex. 2025).
`Petitioner also argues that other documents it requests are not publicly
`accessible, and states that “the PACER docket shows redacted filings and a
`redaction transcript release date of March 14, 2016, suggesting the trial
`transcript [Ex. 2025] would be unavailable until that date.” Id. at 5 (citing
`Ex. 1044, 73–75).
`Patent Owner filed an Opposition to Petitioner’s Motion. Paper 15
`(“Opp.”). In its Opposition, Patent Owner asserts that its Preliminary
`Response challenges only the sufficiency of evidence cited by Petitioner in
`its Petition, as needed to meet its burden to show that LeGall Thesis
`qualifies as a printed publication. For example, according to Patent Owner,
`the Preliminary Response discusses why a district court trial stipulation (Ex.
`1004, a “Joint Statement of Uncontested Facts” in the district court case) is
`not probative on the issue. Opp. 1–2 (citing Prelim. Resp. 20). Patent
`
`
`
`3
`
`
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`IPR2016-00204
`Patent RE38,551 E
`
`Owner also argues why certain articles cited in the Petition “‘provide no
`evidence’ ‘of how the LeGall Thesis was in fact indexed, cataloged or
`shelved.’” Opp. 2 (quoting Prelim. Resp. 22).
`After multiple conference calls on the issue, and upon considering the
`Motion and Opposition, it appears to us that Petitioner is attempting to use
`its request for “routine discovery” as a vehicle to bolster its Petition with
`substantive argument and evidence. Indeed, this is evidenced by the fact
`that Petitioner is already in possession of a copy of the district court trial
`transcript (Ex. 2025), and thus need not seek discovery of that document
`from Patent Owner.
`As Patent Owner notes, Petitioner has the burden to make a threshold
`showing that the LeGall thesis qualifies as “printed publication” prior art
`under 35 U.S.C. §§ 102 and 311(b). Prelim. Resp. 19; Apple Inc. v. DSS
`Tech. Mgmt., Inc., IPR2015-00369, Paper 14, slip op. at 5 (PTAB Aug. 12,
`2015). In its Preliminary Response, Patent Owner argues that Petitioner fails
`to provide that threshold showing in the Petition. Prelim. Resp. 19–22.
`Such arguments do not impose an obligation on Patent Owner to provide
`evidence that supports Petitioner’s position, i.e., provide the very evidence
`Petitioner may need to meet that threshold. See Hughes Network Sys., LLC
`v. Calif. Inst. of Tech., IPR2015-00059, Paper 34, slip op. at 7 (PTAB Dec.
`30, 2015) (“Arguments pointing to a deficiency in petitioner’s case do not
`impose an obligation on the part of [Patent Owner] to provide evidence
`supplementing that provided by [Petitioner].”).
`We are not, therefore, persuaded that Petitioner is entitled to the
`requested discovery because it is “routine” under 37 C.F.R. § 42.51(b)(1).
`We also are not persuaded to allow Petitioner to file supplemental evidence
`
`
`
`4
`
`
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`IPR2016-00204
`Patent RE38,551 E
`
`into the record now, in an attempt to overcome any failings that may exist in
`its Petition. Petitioner could have filed additional evidence along with its
`Petition, if it so wished.
`For example, neither party indicates that Petitioner was, or is now,
`subject to a time bar under 35 U.S.C. § 315(b). Thus, even assuming the
`district court trial transcript (Ex. 2025) was unavailable until March 14,
`2016, as Petitioner contends (Motion 5), Petitioner could have waited until
`such information was available before filing its Petition. We also are not
`inclined to exercise our discretion to compel Patent Owner to provide
`information here that Petitioner or others have been unable to obtain through
`a prior district court subpoena or the Texas Public Information Act. Motion
`1–2; Ex. 1027; Ex. 1028.
`
`In consideration of the foregoing, it is:
`ORDERED that Petitioner’s Motion to Compel Discovery of
`Inconsistent Information and to File Exhibit 2025 is denied; and
`FURTHER ORDERED that Exhibit 2025 filed with Petitioner’s
`Motion is expunged.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`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
`
`
`
`
`
`
`
`6
`
`
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