IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`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
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
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`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2016-00204
`Patent No. RE 38,551
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d)
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`IPR2016-00204
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`029819.0100-US03
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`Petitioner’s Request for Rehearing Under 37 C.F.R. § 42.71(d) (Paper 21;
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`“Request” or “Req.”) fails to set forth any reason sufficient to justify modification
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`of the Board’s Decision (Paper 19; “Decision” or “Dec.”) that the “contentions and
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`evidence cited by Petitioner do not rise to the level of ‘threshold evidence’ that
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`justifies going forward with a trial on any ground that relies on the LeGall thesis as
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`‘printed publication’ prior art” (Dec., p. 12). The Request is replete with new
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`arguments, and utterly fails to identify in the Petition “the place where each matter
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`was previously addressed” as required by 37 C.F.R. § 42.71(d). The Request
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`makes no effort to do so, and tellingly omits this clause of the rule (see Req. at 2),
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`instead including only a single cite to a page in the Petition having nothing to do
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`with the public accessibility of the LeGall Thesis (see Req., pp. 2, 5). The Request
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`should be denied.
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`I.
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`Legal Standard
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`The burden rests with Petitioner to show that the Decision should be
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`modified because of an abuse of discretion. 37 C.F.R. §§ 42.71(c), (d). A request
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`for rehearing “must specifically identify all matters the party believes the Board
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`misapprehended or overlooked, and the place where each matter was previously
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`addressed in a motion, opposition, or a reply.” 37 C.F.R. § 42.71(d) (emphasis
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`added). Thus, a petitioner seeking to modify an institution decision “must
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`specifically identify” not only the matters believed to be “misapprehended or
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`1
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`IPR2016-00204
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`029819.0100-US03
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`overlooked,” but also “where each matter was previously addressed” in the
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`petition. Id. In applying § 42.71(d), the Board has repeatedly held that “[a]
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`request for rehearing is not an opportunity to present new arguments not previously
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`presented in the Petition.” E.I. DuPont De Nemours and Co. v. Furanix Techs.
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`B.V., IPR2015-01838, Paper 20, p. 4 (PTAB May 24, 2016); see also ServiceNow,
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`Inc. v. Hewlett-Packard Co., IPR2015-00707, Paper 14, pp. 2, 8–10 (PTAB Nov.
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`2, 2015); Electronic Frontier Foundation v. Personal Audio, LLC, IPR2014-
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`00070, Paper 28, pp. 4–5 (PTAB May 29, 2014); TRW Automotive US LLC v.
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`Magna Elecs., Inc., IPR2014-00258, Paper 18, p. 5 (PTAB Aug. 27, 2014). When
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`Petitioner presents new arguments for the first time in a request for rehearing, the
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`Board “could not have ‘misapprehended or overlooked’ [the] new arguments
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`because Petitioner failed to include them in its Petition.” Koito Mfg. Co., Ltd. v.
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`Adaptive Headlamp Techs., Inc., IPR2016-00079, Paper 14, p. 4 (PTAB June 15,
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`2016).
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`As explained below, the “roadmap theory” in Petitioner’s Request is replete
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`with new arguments and relies on evidence that is different from the evidence cited
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`in the Petition. Since the Board could not have “misapprehended or overlooked”
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`the new “roadmap theory,” the Request fails to establish an abuse of discretion. See
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`37 C.F.R. § 42.71(c).
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`2
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`IPR2016-00204
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`029819.0100-US03
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`II. The “Roadmap Theory” is a New Theory Presented for the First Time
`in the Request for Rehearing
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`The Petition presented three arguments to show that the LeGall Thesis
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`qualifies as a printed publication.1 Pet., pp. 22–23; see also Dec., pp. 10–12. The
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`“roadmap theory” in the Request is nowhere to be found in the Petition, but rather
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`was copied (right down to the case cites) from the earlier-denied petition in
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`IPR2014-01126 (See Ex. 2030, pp. 34–36).2 Given that the “roadmap theory” is a
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`new theory not included in the Petition, it is unsurprising that the Request has only
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`a single citation to the Petition itself.3
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`1 (1) “Patent Owner has now admitted that LeGall qualifies as prior art;” (2) the
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`University of Houston has denied Petitioner’s request for information regarding
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`public access to the LeGall Thesis; and (3) other University of Houston’s theses
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`were allegedly generally accessible to the public. Pet., pp. 22–23; Dec., p. 10.
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`2 The “roadmap theory” that Petitioner now tries to import was fully reviewed and
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`disregarded by the Board as “not provid[ing] competent evidence to qualify the
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`LeGall thesis as a ‘printed publication’ under § 102(b).” Actavis, Inc. v. Research
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`Corp. Techs., Inc., IPR2014-01126, Paper 22, p. 13 (PTAB Jan. 9, 2015).
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`3 The single citation is in footnote 2 on page 5 of the Request, and cites to a page in
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`the Petition having nothing to do with the public accessibility of the LeGall Thesis.
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`3
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`IPR2016-00204
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`029819.0100-US03
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`Each of the five components of the alleged “roadmap” (Req., pp. 3, 9)
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`includes new arguments not presented in the Petition, and relies on evidence
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`different from the evidence cited in the Petition. Each component is addressed
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`below.
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`A. Components 1) and 2) - Scientific Articles Citing the LeGall
`Thesis
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`The Request argues that three articles (Exs. 1010, 1016, and 1017)
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`“explicitly cite” to the LeGall Thesis by the author’s name and location, and that
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`“courts have accepted this type of evidence as sufficient to provide a roadmap to
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`the prior art reference,” citing to the Bruckelmyer and Cornell University cases.
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`Req., pp. 5–6. The Request additionally argues that a footnote in a 1988 article by
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`LeGall (Ex. 1016) “expressly instructs the public and members of the relevant
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`scientific community to read LeGall’s thesis to obtain ‘[a]dditional structure proof
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`and experimental and spectra data.’” Req., p. 6. No such arguments were
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`presented in the Petition in the present proceeding; instead they were copied into
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`the Request from the earlier-denied petition in IPR2014-01126.
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`The Petition in the present proceeding relied on different articles, each of
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`which cites to a thesis other than the LeGall Thesis. See Paper 9, pp. 21–22. In
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`particular, rather than citing to Exs. 1010, 1016, and 1017, the Petition’s argument
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`relied on Exs. 1029–1032, none of which was argued (i) to cite to the LeGall
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`Thesis (as none of them does so) or (ii) to provide any sort of “roadmap” to the
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`IPR2016-00204
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`029819.0100-US03
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`LeGall Thesis as now argued in the Request. Pet., p. 23; Req., pp. 5–6.
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`In sharp contrast to the Petition in the present proceeding, the earlier-denied
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`petition in IPR2014-01126 included this “roadmap theory,” relying on a 1988
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`article listing LeGall as one of its authors, and citing Bruckelmyer v. Ground
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`Heaters, Inc., 445 F3d 1374, 1379 (Fed. Cir. 2006) and Cornell Univ. v. Hewlett-
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`Packard Co., No. 5:01-CV-1974, 2008 U.S. Dist. LEXIS 39343 (N.D.N.Y. May
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`14, 2008). Ex. 2030, pp. 35–36. The 1988 LeGall article relied on in the earlier-
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`denied petition (referred to in that proceeding as Ex. 1014) is the same article cited
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`in the Request as Ex. 1016. Petitioner had the opportunity to include this argument
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`in the Petition but did not do so. Petitioner cannot present this new argument now
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`in a request for rehearing. See 37 C.F.R. § 42.71(d); E.I. DuPont, IPR2015-01838,
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`Paper 20, p. 4; TRW Automotive, IPR2014-00258, Paper 18, p. 5.
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`The Request also asserts that the Board relied on “legally flawed reasoning”
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`because the assumption that the authors had personal knowledge regarding the
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`cited thesis work “is irrelevant as to whether the citation provides the roadmap to
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`the public.” Req., p. 8. This argument is not only flawed, but is based on
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`misleading contentions. First, none of the articles actually relied upon in the
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`Petition cites to the LeGall Thesis (see Paper 9, pp. 21–22 and Exs. 1029–1032),
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`and so none of the articles was alleged to include a “citation provid[ing] the
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`roadmap to the public” (see Pet., p. 23). Second, the Request states that “[t]he
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`5
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`IPR2016-00204
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`029819.0100-US03
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`Board asserted that the authors of the articles citing LeGall ‘had personal
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`knowledge regarding the cited thesis work’” (Req., p. 8 (emphasis added)), but the
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`Board made no such assertion. The Board’s statement on pages 11–12 of the
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`Decision that “the authors had personal knowledge regarding the cited thesis work”
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`was in reference to the articles actually relied upon in the Petition (Exs. 1029–
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`1032), none of which cites the LeGall Thesis. Therefore, because the Petition
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`never argued the “roadmap theory” based on articles citing the LeGall Thesis, the
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`Board could not have overlooked any such evidence, or have relied on “legally
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`flawed reasoning.” See Req., p. 8.
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`The fact that the Blue Calypso case issued after the Petition was filed does
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`not compel a different result. See Req., pp. 4–5. Petitioner had a full opportunity
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`to present its “roadmap theory” in the Petition based on the Bruckelmyer and
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`Cornell University cases, which it also cites in the Request, but chose not to do so.
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`Blue Calypso does not change the fact that the “roadmap theory” presented in the
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`Request is a new theory not included in the Petition.
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` Component 3) - Dr. Heathcock’s Statement
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`B.
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`The Request argues that the Board overlooked Dr. Heathcock’s statement in
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`the declaration from the earlier-denied IPR2014-01126 proceeding (included as
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`Ex. 1003 in the present proceeding) regarding the citation to the LeGall Thesis in
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`the 1988 LeGall article. Req., p. 7, citing Ex. 1003, ¶ 81. Here again, the Request
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`6
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`IPR2016-00204
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`029819.0100-US03
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`copies an argument presented in the earlier-denied petition in IPR2014-01126 (see
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`Ex. 2030, pp. 35–36 citing ¶ 81 of the Heathcock Declaration), but not included in
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`the Petition in the present proceeding (see Pet., pp. 22–23; Dec., p. 10). Petitioner
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`had the opportunity to include this argument in the Petition but did not do so, and
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`thus the Board could not have “misapprehended or overlooked” it. Petitioner
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`cannot present this new argument now in a request for rehearing. See 37 C.F.R.
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`§ 42.71(d); E.I. DuPont, IPR2015-01838, Paper 20, p. 4; TRW Automotive,
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`IPR2014-00258, Paper 18, p. 5.
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`C. Component 4) - University of Houston Library Request Form
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`The Request argues that a “Special Collections request form” could be used
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`by a member of the public to request a university thesis such as LeGall. Req., p. 7,
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`citing Ex. 1028, pp. 9–10. In contrast, the Petition’s “University of Houston”
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`argument nowhere mentions a “Special Collections request form,” and instead cites
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`to other pages (5, 6, 11, 15–16) of Ex. 1028 which also do not mention a “Special
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`Collections request form.” See Pet., pp. 22–23. Here again, the argument and
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`citation to the “request form” evidence was not included in the Petition, and so the
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`Board could not have “misapprehended or overlooked” it. Petitioner cannot now
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`present this new argument in a request for rehearing. 37 C.F.R. § 42.71(d); E.I.
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`DuPont, IPR2015-01838, Paper 20, p. 4; TRW Automotive, IPR2014-00258, Paper
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`18, p. 5.
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`7
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`IPR2016-00204
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`029819.0100-US03
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`D. Component 5) - University of Houston’s Refusal to Produce
`Information
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`The Decision explained why the University of Houston’s refusal to provide
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`
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`information in response to Petitioner’s request was not persuasive as a threshold
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`showing of public accessibility:
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`The record before us does not explain adequately the University’s
`rationale for declining Petitioner’s request for information, and we do
`not agree that the University’s action “gives rise to a rebuttable
`presumption that the information both exists and establishes a
`reasonable likelihood that LeGall is prior art,” as proposed by
`Petitioner.
`Dec., p. 11. The Request re-characterizes the University’s “refusal to produce the
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`requested information” as “evidence that the requested information is likely
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`harmful to the University’s financial interests in the challenged patent and thus a
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`statement against interest,” similar to “an adverse inference” applied in a court
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`when a party refuses to produce evidence. Req., pp. 9–10.
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`The Request does not identify anything the Board “misapprehended or
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`overlooked,” but rather presents new argument in mere disagreement with the
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`Decision. The Petition never presented any argument that the University’s refusal
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`to produce the requested information was a “statement against interest” from which
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`the Board should draw an “adverse inference.” Instead, the Petition argued that the
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`University’s “admissions” “should give rise to a rebuttable presumption”—an
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`8
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`IPR2016-00204
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`029819.0100-US03
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`argument the Board rejected. Pet., pp. 22–23; Dec., p. 11. The Request merely
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`disagrees with the Decision’s analysis of the University’s refusal to produce the
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`information, which is not a proper basis for rehearing. See, e.g., Samsung Elecs.
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`America, Inc. v. Smartflash LLC, CBM2014-00192, Paper 47, p. 5 (PTAB June 9,
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`2016); Google Inc. v Grandeye Ltd., IPR2013-00546, Paper 34, pp. 5–6 (PTAB
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`January 13, 2015); Sophos, Inc. v. Finjan, Inc., IPR2015-00907, Paper 10, pp. 2, 5,
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`7–8 (PTAB Dec. 4, 2015).
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`III. Conclusion
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`The present Request is nothing more than new arguments and evidence,
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`presented in each of the five components of the “roadmap theory” (Req., pp. 3, 9).
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`But the Board has repeatedly stated that it could not have “misapprehended or
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`overlooked” new arguments not included in the Petition, and that a request for
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`rehearing is not an opportunity to present new arguments or evidence not
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`previously presented in the Petition. The Request should be denied, leaving intact
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`the Board’s finding that “Petitioner has not demonstrated that there is a reasonable
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`likelihood that it would prevail in showing that challenged claims of the ’551
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`patent are unpatentable based on the two asserted grounds that rely on the LeGall
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`Thesis.” Dec., p. 12.
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`9
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`IPR20l6—00204
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`029819.0100—US03
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`Dated: July 6, 2016
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`Respectfully submitted,
`WK
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`By Q/:V:»:€»€:{/~~
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`
`*3 C ,"
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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. Rei ter
`Registration No.: 36,253
`Jennifer L. Robbins
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`Registration No.: 61,163
`Enrique D. Longton
`Registration No.: 47,304
`Attorneys for Patent Owner
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`10
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`IPR2016—00204
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`029819.0100—US03
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 6th day of July 2016,
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`the foregoing Patent
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`Owner’s Opposition to Petitioner’s Request for Rehearing Under 37 C.F.R.
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`§ 42.71(d) was served by electronic mail, by agreement of the parties, on the
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`following counsel of record for Petitioner:
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`Matthew J. Dowd (MatthewDowd@andrewskurth.com)
`John Murray (JohnMurray@andrewskurth.com)
`Andrews Kurth LLP
`
`1350 I Street, NW, Suite 1100
`
`Washington DC 20005
`
`Dated: July 6, 2016
`
`Registration No. 36,253
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