Trials@uspto.gov
`571-272-7822
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`
`
`
`
`
`Paper 27
`Date: July 5, 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 and JACQUELINE WRIGHT BONILLA,
`Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 27
`Date: July 5, 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 and JACQUELINE WRIGHT BONILLA,
`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 June 22, 2016, a conference call was conducted between
`respective counsel for the parties and Judges Prats and Bonilla. A court
`reporter also was present on the call.1 Both parties requested the call to
`address proposed motions for each party.
`Prior to the call, by e-mail correspondence sent to the Board on June
`13, 2016, Petitioner requested authorization to file: (1) a motion to
`consolidate this inter partes review (“IPR”) proceeding with a pending ex
`parte reexamination Control No. 90/013,709 requested by Petitioner
`concerning the same challenged patent at issue here; (2) under 37 C.F.R.
`§ 42.123(a), as supplemental information, pages of a trial transcript from a
`district court litigation concerning the challenged patent here; (3) a motion
`for discovery under 37 C.F.R. § 42.51(b) “relating to prior art relevant to the
`ground upon which trial was instituted”; and (4) as other supplemental
`information, “any relevant information obtained from discovery, if such
`discovery is permitted.”
`In the same e-mail correspondence, Patent Owner requested
`authorization to file: (1) an opposition to Petitioner’s Request for Rehearing
`(Paper 21) of our Decision to Institute (Paper 19) in this case; and (2) a
`motion to terminate ex parte reexamination Control No. 90/013,709
`mentioned above.
`During the call, in relation to the proposed motion to consolidate this
`IPR with the reexamination, the parties noted that Petitioner’s request for the
`
`
`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
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`reexamination, filed on March 25, 2016, raised two grounds of rejection
`under the doctrine of obviousness-type double patenting (“OTDP”) based on
`U.S. Pat. No. 5,654,301 (“the ’301 patent”), not raised in a ground at issue
`here, in combination with other art raised in grounds in the Petition in this
`IPR. Specifically, Petitioner proposed two OTDP grounds of rejection based
`on the ’301 patent, in view of the ’729 patent2 and Kohn 19913 in the first
`ground, and in view of the ’729 patent and the LeGall thesis4 in the second
`ground.
`During the call, we pointed out that the Examiner granted the request
`for the ex parte reexamination on June 16, 2016, without issuing an Office
`Action in the case. In view of that status, we indicated to the parties that
`Petitioner’s request for a motion to consolidate may be premature at this
`time, but we would take the matter under advisement.
`After considering the matter further, we authorize Petitioner to file its
`requested motion to consolidate the two proceedings. As noted during the
`call, however, we are not inclined as an initial matter to consolidate matters
`here, not least of which because the reexamination at issue raises grounds
`based on OTDP, which cannot be the basis of a ground in an IPR, and ex
`parte reexamination differs procedurally from IPRs generally, particularly as
`
`
`2 Kohn et al., U.S. Patent No. 5,378,729, issued on Jan. 3, 1995 (“the ’729
`patent”) (Ex. 1009).
`3 Kohn et al., Preparation and Anticonvulsant Activity of a Series of
`Functionalized α-Heteroatom-Substituted Amino Acids, 34 J. MED. CHEM.
`2444–52 (1991) (“Kohn 1991”) (Ex. 1012).
`4 Philippe LeGall, 2-Substituted-2-acetamido-N-benzylacetamides.
`Synthesis, Spectroscopic and Anticonvulsant Properties (Dec. 1987) (“the
`LeGall thesis”) (Ex. 1008).
`
`
`
`3
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`IPR2016-00204
`Patent RE38,551 E
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`it relates to Petitioner’s involvement in the reexamination and the parties’
`ability to appeal to the Board a decision by the Examiner in the
`reexamination.
`That said, however, to give us an opportunity to fully address the
`merits of Petitioner’s position, we authorize Petitioner to brief the issue of
`consolidation further in a motion no longer than 10 pages, and authorize
`Patent Owner to respond in an opposition to that motion, in a paper no
`longer than 10 pages. We do not authorize a reply to the opposition.
`Petitioner also requested, as supplemental information under
`§ 42.123(a), certain pages of a trial transcript from a related district court
`litigation. Petitioner clarified during the call that those transcripts are the
`same transcripts it attempted to obtain as discovery in this case prior to
`institution, in an effort to establish that the Le Gall thesis qualified as prior
`art. Paper 13 (Petitioner’s Motion to Compel Discovery of Inconsistent
`Information and to File Exhibit 2025). We denied that Motion prior to
`institution (Paper 18), and determined in our Decision to Institute that
`Petitioner did not establish sufficiently in its Petition that the Le Gall thesis
`qualified as “printed publication” prior art. Paper 19, 8–12. In our Decision
`to Institute, we instituted a trial based on grounds that did not rely on the Le
`Gall thesis. Id. at 12–22, 23–24.
`In addition to the above request, Petitioner also indicated in the call
`that it requested other discovery and related supplemental information as it
`pertained to the public accessibility of the Le Gall thesis. Petitioner argued
`that it anticipated, in a Response yet to be filed, that Patent Owner would
`argue a reasonable expectation of success as relevant to non-obviousness
`based on information in the Le Gall thesis.
`
`
`
`4
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`IPR2016-00204
`Patent RE38,551 E
`
`
`We indicated in the call that any request for discovery based on what
`Patent Owner might argue in a Response was premature. We denied
`Petitioner’s request for discovery, as well as any request to file supplemental
`information, as related to the public accessibility of Le Gall thesis.
`Patent Owner also requested authorization to file a 10-page opposition
`to Petitioner’s Request for Rehearing of our Decision to Institute, which
`Petitioner filed on June 6, 2016. Paper 21. During the call, we authorized
`Patent Owner to file the opposition within two weeks of the call, i.e., by July
`6, 2016. We do not authorize a reply to that opposition.
`Patent Owner further requested authorization to file a motion to
`terminate the ex parte reexamination, citing 35 U.S.C. § 315(d). We decline
`to grant that request at this time. We are not persuaded that the filing and
`granting of the ex parte reexamination request constitutes a type of
`harassment that justifies terminating a proceeding that will address grounds
`of rejection based on ODTP and different art, i.e., the ’301 patent, not at
`issue in the current IPR.
`
`Accordingly, it is:
`ORDERED that Petitioner is authorized to file, by Wednesday, July
`13, 2016, a 10-page motion to consolidate the current IPR with ex parte
`reexamination Control No. 90/013,709;
`FURTHER ORDERED that Patent Owner is authorized to file, by
`Wednesday, July 20, 2016, a 10-page opposition to Petitioner’s motion to
`consolidate the current IPR with the ex parte reexamination;
`FURTHER ORDERED that Patent Owner is authorized to file, by
`Wednesday, July 6, 2016, a 10-page opposition to Petitioner’s Request for
`
`
`
`5
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`IPR2016-00204
`Patent RE38,551 E
`
`Rehearing (Paper 21);
`FURTHER ORDERED that Petitioner’s requests for authorization to
`file supplemental information under 37 C.F.R. § 42.123(a) and a motion for
`discovery are denied; and
`FURTHER ORDERED that Patent Owner’s request to file a motion to
`terminate ex parte reexamination Control No. 90/013,709 is denied.
`
`
`
`
`
`
`
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`
`
`
`
`6
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`
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`IPR2016-00204
`Patent RE38,551 E
`
`PETITIONER:
` Matthew Dowd
`Justin Crotty
`ANDREWS KURTH LLP
`matthewdowd@andrewskurth.com
`justincrotty@andrewskurth.com
`
`PATENT OWNER:
`Andrea Reister
`Jennifer Robbins
`Enrique Longton
`COVINGTON & BURLING LLP
`areister@cov.com
`jrobbins@cov.com
`rlongton@cov.com
`
`
`
`7
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`
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