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
`_______________
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`Inter Partes Review No. IPR2016-00204
`____________________________________________________________
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`
`
`_______________
`
`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
`____________________________________________________________
`
`
`
`
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`
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`
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`Patent No. RE38,551
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`IPR No. 2016-00204
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`Pursuant to 37 C.F.R. § 42.71(d), Argentum Pharmaceuticals LLC
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`(“Petitioner”) hereby requests rehearing of that part of the Board’s Decision (Paper
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`No. 19, May 23, 2016) regarding Grounds 1A and 1B of the Petition, which asserts
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`that claims 1-13 are anticipated and/or obvious in view of LeGall. The Board
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`reviews a request for rehearing for an abuse of discretion. For the reasons set forth
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`below, Petitioner respectfully submits that the standard is met.
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`I.
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`Introduction
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`Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be
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`modified lies with the party challenging the decision” and the “request must
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`specifically identify all matters the party believes the Board misapprehended or
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`overlooked.”
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`Petitioner respectfully submits that the Board overlooked or misapprehended
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`important points presented in the Petition regarding the public accessibility of
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`LeGall and overlooked evidence establishing a “reasonable likelihood” that LeGall
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`was publicly accessible and thus prior art. Specifically, the Board overlooked or
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`misapprehended recently issued Federal Circuit case law: Blue Calypso, LLC v.
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`Groupon, Inc., 815 F.3d 1331, 1350 (Fed. Cir. 2016), a decision that did not issue
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`until after the Petition and the Patent Owner Preliminary Response were filed, but
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`which Petitioner expressly raised in connection with LeGall during the March 8,
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`2
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`Patent No. RE38,551
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`2016 conference call. (Ex. 2026, Hr’g Tr. 14:5-15:8.) The Board also overlooked
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`IPR No. 2016-00204
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`and misapprehended the clear evidence of record that established a roadmap
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`confirming that LeGall was publicly accessible during the relevant period:
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`1) Three prior art scientific articles cited LeGall and
`directed the public to the existence of LeGall.
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`2) One prior art reference from 1988 expressly directed
`the reader to LeGall in order obtain additional scientific
`data relating to compounds disclosed in the reference.
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`3) A renowned organic chemist, Dr. Clayton Heathcock,
`stated that one of skill in the art would be able to find
`LeGall based on the citation in the prior art.
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`4) A library request form from the University of Houston
`indicated that a visitor could obtain and access books and
`other materials maintained in the University of Houston
`library system during the relevant time period.
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`5) The University of Houston has refused to produce
`information to Petitioner that is relevant to the issue of
`LeGall’s public accessibility because release of that
`information would cause
`financial harm
`to
`the
`University.
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`
`
`
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`II. Under Federal Circuit Law, The Evidence Established That LeGall Is
`Prior Art
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`To qualify as a printed publication, a reference “must have been sufficiently
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`accessible to the public interested in the art.” In re Cronyn, 890 F.2d 1158, 1160
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`(Fed. Cir. 1989); In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986). A reference is
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`considered publicly accessible if it was “disseminated or otherwise made available
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`3
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`Patent No. RE38,551
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`to the extent that persons interested and ordinarily skilled in the subject matter or
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`IPR No. 2016-00204
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`art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l
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`Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Whether a reference
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`qualifies as a printed publication is a legal conclusion based on underlying factual
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`determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)
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`Importantly, indexing is not necessary to establish public accessibility.
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`Lister, 583 F.3d at 1312 (“While cataloging and indexing have played a significant
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`role in our cases involving library references, we have explained that neither
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`cataloging nor indexing is a necessary condition for a reference to be publicly
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`accessible[;]. . . a variety of factors may be useful . . . .”).
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`The Federal Circuit has further explained that a “research aid,” or roadmap,
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`can also establish public accessibility of a reference. See Bruckelmyer v. Ground
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`Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir. 2006). “An adequate roadmap need
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`not give turn-by-turn directions, but should at least provide enough details from
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`which we can determine that an interested party is reasonably certain to arrive at
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`the destination: the potentially invalidating reference.” Blue Calypso, LLC v.
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`4
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`Patent No. RE38,551
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`Groupon, Inc., 815 F.3d 1331, 1350 (Fed. Cir. 2016).1
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`IPR No. 2016-00204
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`Here, the evidence of record establishes a clear roadmap for one of skill in
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`the art to arrive at LeGall and confirm its public accessibility. First, LeGall was
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`cited in three peer-reviewed scientific articles that are prior art. Articles published
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`by Dr. Kohn’s research group—articles that scientists interested in LeGall’s
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`functionalized amino acids would read—explicitly cite to the thesis by the author’s
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`name (Philippe LeGall) and location (University of Houston). (Ex. 1016, LeGall
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`1988, p. 279 (citing “Masters dissertation of this author,” listed as “Philippe
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`LeGall” at “University of Houston”); Ex. 1017, Kohn 1993, p. 3360 n.9b (citing
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`“LeGall, P. M.S. Thesis, University of Houston, 1987”); Ex. 1010, Choi 1995, p.
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`7013 n.16 (citing “LeGall, P. M.S. Thesis, University of Houston”).)2 These
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` 1
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` Blue Calypso issued on March 1, 2016, after both the Petition and the Patent
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`Owner Preliminary Response were filed. Petitioner raised this case in a
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`conference call with the Board on March 8, 2016. (Ex. 2026, Hr’g Tr. 14:5-15:8.)
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`2 While the citation to LeGall in Exhibit 1010 lists a publication date of 1982, one
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`of ordinary skill in the art would have nonetheless considered the citation as a
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`research aid to identify LeGall because it named the author, identified the
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`University of Houston, and was cited with respect to the hydroxymethyl
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`compound (Compound 2d). (See Petition at 4.)
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`5
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`Patent No. RE38,551
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`citations—one published in 1988, a second in 1993, and a third in 1995—put the
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`IPR No. 2016-00204
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`public on clear notice of the existence and location of LeGall.
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`Indeed, the footnote in Exhibit 1016, published in 1988, expressly instructs
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`the public and members of the relevant scientific community to read LeGall’s
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`thesis to obtain “[a]dditional structure proof and experimental and spectra data.”
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`(Ex. 1016, p.1.) No reasonable scientist would publish an article with that
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`statement unless the scientist expected the public to access the additional data and
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`proof in the underlying thesis.
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`Indeed, courts have accepted this type of evidence as sufficient to provide a
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`roadmap to the prior art reference. In Bruckelmyer, 445 F.3d at 1379, the Federal
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`Circuit held that a foreign patent put an interested researcher on notice of the
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`application for that patent. The court explained that “it does not matter whether the
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`‘119 application was catalogued or indexed in a meaningful way because the ‘119
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`patent was indexed and could serve as a research aid.” Id.
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`Similarly, in Cornell University v. Hewlett-Packard Co., No. 01-cv-1974,
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`2008 U.S. Dist. LEXIS 39343, at *20-21 (N.D.N.Y. May 14, 2008), Judge Rader
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`(sitting by designation) held that an article in a “seminal publication in the field of
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`electrical engineering” with a citation to the allegedly invalidating reference was a
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`sufficient research aid to make the invalidating reference publicly accessible.
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`6
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`IPR No. 2016-00204
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`In addition to the prior art roadmap to LeGall, the evidence of record
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`established that members of the public could request a copy of LeGall and similar
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`theses from the University of Houston during the relevant time period. The
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`University of Houston provided “a blank Special Collections request form from the
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`decade in question.” (Ex. 1028, p.9.) The form plainly indicates that it could be
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`used by a “visitor,” i.e., a member of the public. (Ex. 1028, p.1010.) Thus, the
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`only reasonable conclusion is that a member of the public could request a
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`university thesis, such as LeGall.
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`Additionally, the Board overlooked the statement of Dr. Heathcock. (Ex.
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`1003, p.39, ¶ 81.) Dr. Heathcock explained that “[t]he citation of the LeGall thesis
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`in the 1988 article would have guided a [person of ordinary skill in the art] to the
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`thesis for more extensive information relating to the compounds investigated by
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`LeGall.” (Id.) This is further evidence confirming the roadmap to LeGall. But it
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`was overlooked by the Board and given no consideration.
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`This evidence, taken independently or together, was overlooked or
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`misapprehended by the Board. The evidence directly addresses “whether the
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`LeGall thesis itself was publicly accessible in the relevant time frame, how one of
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`skill in the art would obtain a copy of the thesis, or whether the thesis was
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`reasonably accessible through generally available means.” (See Paper No. 19, at
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`12.) Thus, the Board incorrectly ruled that there was no such evidence.
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`7
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`Patent No. RE38,551
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`IPR No. 2016-00204
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`When overlooking this evidence, the Board also relied on legally flawed
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`reasoning. The Board asserted that the authors of the articles citing LeGall “had
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`personal knowledge regarding the cited thesis work.” That assumption is
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`irrelevant as to whether the citation provides the roadmap to the public. See Blue
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`Calypso, 815 F.3d at 1350; Bruckelmyer, 445 F.3d at 1379. In Bruckelmyer, the
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`patent application was cited in the patent almost certainly due solely to the
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`personal knowledge of inventor, but that single citation was a sufficient roadmap.
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`Finally, to reject the above evidence and law would require a decision that
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`misapplies the controlling standard for instituting trial. A petitioner need only
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`establish a “reasonable likelihood of unpatentability” of one or more claims. 37
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`C.F.R. § 42.108(c). Accordingly, a petition need only establish a “reasonable
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`likelihood” that a cited reference qualifies as prior art. This is significantly lower
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`than the clear and convincing standard in district court litigation. While it remains
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`Petitioner’s burden to establish that a reference qualifies as prior art, Petitioner
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`must attain only a “reasonable likelihood” of such evidence.
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`When considered under the proper standard in combination with the
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`additional evidence indicating reasonably likely public accessibility, the only
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`supportable conclusion is that LeGall qualifies as prior art. The University
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`acknowledged its financial interest in the patent and recognized that Lerner’s
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`deposition testimony and the check-out records for LeGall “would cause the
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`8
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`Patent No. RE38,551
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`University competitive harm,” which can only be understood to mean that the
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`IPR No. 2016-00204
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`testimony and related documents confirm LeGall’s status as prior art. (See Ex.
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`1028, at 4.)
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`Patent Owner admitted that LeGall is prior art for purposes of the district
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`court litigation. While the Board may consider that admission insufficient by itself
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`to establish public accessibility of LeGall, it must be considered in the context of
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`the other evidence cited above:
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`1) Three prior art scientific articles cited LeGall and
`directed the public to the existence of LeGall.
`
`2) One prior art reference from 1988 expressly directed
`the reader to LeGall in order obtain additional scientific
`data relating to compounds disclosed in the reference.
`
`3) A renowned organic chemist, Dr. Clayton Heathcock,
`stated that one of skill in the art would be able to find
`LeGall based on the citation in the prior art.
`
`4) A library request form from the University of Houston
`indicated that a visitor could obtain and access books and
`other materials maintained in the University of Houston
`library system during the relevant time period.
`
`5) The University of Houston has refused to produce
`information to Petitioner that is relevant to the issue of
`LeGall’s public accessibility because release of that
`information would cause
`financial harm
`to
`the
`University.
`
`On the last point, the University of Houston’s refusal to produce the
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`requested information is more than a mere absence of evidence; it is evidence that
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`9
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`Patent No. RE38,551
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`the requested information is likely harmful to the University’s financial interests in
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`IPR No. 2016-00204
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`the challenged patent and thus a statement against interest. See Fed. R. Evid.
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`804(b)(3). The most likely reasonable inference of the University’s refusal to
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`produce documents here is similar to when courts routinely apply an adverse
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`inference because a party has refused to produce evidence or has destroyed
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`evidence. See, e.g., Baxter v. Palmigiano, 425 U.S. 308, 318 (1976) (indicating
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`that a court may draw “adverse inferences against parties to civil actions when they
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`refuse to testify in response to probative evidence offered against them”).
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`Even without considering the deposition testimony that Patent Owner has
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`refused to produce, it is unsurprising that Patent Owner did not challenge LeGall’s
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`prior art status in the district court litigation. Notwithstanding Patent Owner’s
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`admission, the multiple prior art citations to LeGall, together with the other
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`evidence of record, established a clear road map demonstrating a “reasonable
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`likelihood” that LeGall was publicly accessible and therefore qualifies as prior art.
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`Accordingly, because LeGall qualifies as prior art, trial should be instituted
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`on Grounds 1A and 1B for the reasons set forth in the Petition.
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`III. Conclusion
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`Petitioner requests rehearing and institution based on Grounds 1A and 1B.
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`Dated: June 6, 2016
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`10
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`Patent No. RE38,551
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`
`
`By:
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`IPR No. 2016-00204
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`/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
`
`
`
`11
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`Patent No. RE38,551
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`IPR No. 2016-00204
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing motion
`together with all exhibits and other papers filed therewith will be served on June 6,
`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:
`
`12
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