Trials@uspto.gov
`571-272-7822
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`Paper 38
`Date: August 15, 2016
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`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, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`571-272-7822
`
`
`
`
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`
`
`Paper 38
`Date: August 15, 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, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`I.
`
`INTRODUCTION
`
`In our Decision on Institution in this case (Paper 19; “Decision” or
`
`“Dec.), we instituted an inter partes review of claims 1–13 of U.S. Patent
`
`No. RE38,551 E (Ex. 1001, “the ’551 patent”) based on two grounds raised
`
`in the Petition filed by Argentum Pharmaceuticals LLC (“Petitioner”).
`
`Dec. 3–4, 23–24 (instituting on two out of eight raised grounds). We did not
`
`institute on either of two grounds raised by Petitioner based on the LeGall
`
`thesis.1 Id. at 3–4, 8–12. Petitioner did not persuade us that it had provided
`
`a “threshold showing” that the LeGall thesis was sufficiently publicly
`
`accessible to qualify as a “printed publication” under 35 U.S.C. § 102(b).
`
`See Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. 5
`
`(PTAB Aug. 12, 2015) (Paper 14); Dec. 8–12.
`
`Petitioner has filed a Request for Rehearing. Paper 21 (“Request” or
`
`“Req. Reh’g”). In its Request, Petitioner asserts that we abused our
`
`discretion in the Decision in relation to the two grounds (“Grounds 1A and
`
`1B”) that rely on the LeGall thesis. Req. Reh’g 1. Petitioner contends that
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`we overlooked or misapprehended arguments and evidence raised in the
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`Petition regarding the public accessibility of the LeGall thesis, as well as a
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`recently issued decision by the Federal Circuit in Blue Calypso, LLC v.
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`Groupon, Inc., 815 F.3d 1331, 1350 (Fed. Cir. 2016) (“Blue Calypso”). Id.
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`at 2–3.
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`Research Corporation Technologies, Inc. (“Patent Owner”) filed an
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`Opposition to Petitioner’s Request. Paper 28 (“Opposition” or “Opp.”).
`
`
`1 Philippe LeGall, 2-Substituted-2-acetamido-N-benzylacetamides.
`Synthesis, Spectroscopic and Anticonvulsant Properties (Dec. 1987) (“the
`LeGall thesis”) (Ex. 1008).
`
`
`
`2
`
`
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`IPR2016-00204
`Patent RE38,551 E
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`Patent Owner contends that Petitioner inappropriately raises new arguments
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`for the first time in its Request and fails to identify in the Petition “the place
`
`where each matter was previously addressed” as required by 37 C.F.R.
`
`§ 42.71(d). Opp. 1–9.
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`II. STANDARD OF REVIEW
`
`When rehearing a decision on institution, the Board reviews its
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`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party
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`requesting rehearing has the burden of showing that the decision should be
`
`modified, and “[t]he request must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or a reply.”
`
`37 C.F.R. § 42.71(d).
`
`III. ANALYSIS
`
`We agree with Patent Owner that Petitioner’s Request raises new
`
`arguments for the first time and fails to identify “the place where each matter
`
`was previously addressed” in its Petition or other relevant paper, as required
`
`under § 42.71(d).
`
`For example, the only place the Request cites to the Petition (or any
`
`other motion, opposition, or reply paper submitted by Petitioner) is in
`
`footnote 2 of the Request, which refers to page 4 of the Petition. Req. 5 n.2
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`(citing Pet. 4). Otherwise the Request fails to indicate any place where a
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`matter raised in the Request “was previously addressed” in a relevant paper
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`filed by Petitioner before institution.
`
`In the Petition, Petitioner addressed public accessibility of the LeGall
`
`thesis on pages 22–23 and 57. Pet. 22–23, 57; see also id. at 13–14, 24–34,
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`58–59 (arguing what the LeGall thesis disclosed or suggested). As
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`
`
`3
`
`
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`IPR2016-00204
`Patent RE38,551 E
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`discussed in our Decision, in those pages, Petitioner asserted that the LeGall
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`thesis constituted prior art under 35 U.S.C. § 102(b) because: (1) “Patent
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`Owner has now admitted that LeGall qualifies as prior art” (citing Ex. 1004
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`¶ 87); (2) the University of Houston (where the thesis is located) has denied
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`Petitioner’s request for information regarding public access to the thesis
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`(citing Ex. 1028, 5–6, 11, 15–16); and (3) evidence indicates “that the
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`University of Houston’s theses were generally accessible to the public” in
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`the relevant time frame. Pet. 22–23 (citing Ex. 1029, 42–43 nn.8, 11, 20;
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`Ex. 1029, 1135 nn.21, 28; Ex. 1030, 157–158; Ex. 1031, 649 n.9); Dec. 10–
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`12.
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`In its arguments in the Petition regarding public accessibility of the
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`LeGall thesis (Pet. 22–23, 57), Petitioner did not mention, discuss, or cite
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`evidence that Petitioner now relies upon in its Request—i.e., three scientific
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`papers, i.e., Exhibits 1016 (LeGall 1988), 1017 (Kohn 1993), and 1010
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`(Choi 1995), a University of Houston “blank Special Collections request
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`form” described on pages 9 and 10 of Exhibit 1028, or Dr. Heathcock’s
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`testimony in paragraph 81 of his Declaration (Ex. 1003). Req. 3, 5–9. We
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`cannot have not misapprehended or overlooked arguments that Petitioner did
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`not make. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,768 (Aug. 14, 2012); see also Opp. 2 (citing, for example, ServiceNow,
`
`Inc. v. Hewlett-Packard Co., Case IPR2015-00707, slip op. 2, 8–10 (PTAB
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`Nov. 2, 2015) (Paper 14)).
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`Other than provide new arguments, Petitioner essentially reargues
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`certain positions, which we have addressed in our Decision, e.g., the
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`argument that we should presume a negative inference from the University
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`of Houston’s failure to produce certain documents in response to a Texas
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`
`
`4
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`
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`IPR2016-00204
`Patent RE38,551 E
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`Public Information Act request. Pet. 22–23; Dec. 11; Req. 9–10. As Patent
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`Owner points out, mere disagreement with our assessment of presented
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`arguments and evidence is not a proper basis for a rehearing. Opp. 8–9
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`(citing, for example, Google Inc. v Grandeye Ltd., Case IPR2013-00546,
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`slip op. 5–6 (PTAB Jan. 13, 2015) (Paper 34).
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`In its Request, Petitioner also discusses Blue Calypso in relation to its
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`argument regarding a “roadmap for one of skill in the art to arrive at LeGall
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`and confirm its public accessibility.” Req. 2–5 (citing Blue Calypso, 815
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`F.3d at 1350). Petitioner does not persuade us that Blue Calypso, as new
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`case law, dictates that we erred in our Decision. Petitioner does not
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`persuade us that the “adequate roadmap” discussion in Blue Calypso justifies
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`Petitioner raising multiple new arguments for the first time in its Request,
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`when it could have raised (and had reason to raise) such arguments in view
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`of applicable case law existing before institution. Req. 3–5 (citing other
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`case law); Opp. 6. Other than to cite and quote a sentence from Blue
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`Calypso, all arguments Petitioner raises in its Request either could have
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`been, and were not, argued in the Petition, or were raised and squarely
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`addressed in our Decision.
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`Petitioner does not persuade us that we abused our discretion in
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`declining to go forward on two grounds based on the LeGall thesis,
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`especially when we did institute a trial in relation to all challenged claims on
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`different grounds. Petitioner does not persuade us that we misapprehended
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`or overlooked any matter in our Decision.
`
`
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`5
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`
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`IPR2016-00204
`Patent RE38,551 E
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`IV. CONCLUSION
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`Having considered the Request for Rehearing, we are not persuaded
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`that Petitioner has shown that we misapprehended or overlooked a matter, or
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`otherwise abused our discretion.
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`V.
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` ORDER
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`For the reasons given, it is hereby ORDERED that Petitioner’s
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`Request for Rehearing is denied.
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`6
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`
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`IPR2016-00204
`Patent RE38,551 E
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`PETITIONER:
`
`Justin Crotty
`justincrotty@andrewskurth.com
`
`Matthew Dowd
`matthewdowd@andrewskurth.com
`
`
`PATENT OWNER:
`
`Andrea Reister
`areister@cov.com
`
`Enrique Longton
`rlongton@cov.com
`
`Jennifer Robbins
`jrobbins@cov.com
`
`
`
`
`7
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`
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