Trials@uspto.gov
`571-272-7822
`
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`
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`Paper 42
`Date: September 19, 2016
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`
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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 Motion to Consolidate
`35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a)
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 42
`Date: September 19, 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 Motion to Consolidate
`35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a)
`
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`I.
`
`Introduction
`
`As authorized by our Order (Paper 27), Argentum
`
`Pharmaceuticals LLC (“Petitioner”) filed a Motion to Consolidate this
`
`inter partes review (“IPR”) proceeding with pending ex parte reexamination
`
`Control No. 90/013,709, also requested by Petitioner concerning the same
`
`challenged patent at issue here, U.S. Patent No. RE38,551 (“the
`
`’551patent”). Paper 30 (Petitioner’s Motion to Consolidate Reexamination
`
`with Inter Partes Review; “Motion to Consolidate” or “Motion”).
`
`As also authorized by the same Order (Paper 27), Research
`
`Corporation Technologies, Inc. (“Patent Owner”) filed an Opposition to the
`
`Motion. Paper 32 (Patent Owner’s Opposition to Petitioner’s Motion to
`
`Consolidate Reexamination with Inter Partes Review, “Opposition”).
`
`II. DISCUSSION
`
`As acknowledged by both parties, we have discretion to, among other
`
`things, consolidate an IPR with another proceeding before the Office, such
`
`as a reexamination, if both proceedings involve the same patent. Motion 3
`
`(citing 35 U.S.C. § 315(d); 37 C.F.R § 42.122(a)); Opposition 6. As part of
`
`that discretion, we are not prohibited from allowing multiple proceedings
`
`involving the same patent to continue separately before the Office.
`
`As stated in Petitioner’s Motion, Petitioner’s request for the
`
`reexamination raised two grounds of rejection of claims 1–13 of the
`
`’551 patent under the doctrine of obviousness-type double patenting
`
`(“OTDP”) based on U.S. Pat. No. 5,654,301 (“the ’301 patent”),1 a reference
`
`
`1 Kohn et al., U.S. Patent No. 5,654,301, issued on Aug. 5, 1997 (“the
`’301 patent”) (Ex. 1019).
`
`
`
`2
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`not raised in a ground at issue in the IPR (Paper 19, 3–4, 23–24), 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. Motion 1–2; Paper 27, 2–3. The Central Reexamination Unit
`
`(“CRU”) granted the request on June 16, 2016. Motion 2.
`
`By contrast, this panel instituted the IPR based on two different
`
`grounds raised in the Petition (Paper 2), i.e., that (1) claims 1–9 of the
`
`’551 patent would have been obvious over Kohn 1991 and Silverman,5 and
`
`(2) claims 10–13 would have been obvious over Kohn 1991, Silverman, and
`
`the ’729 patent. Paper 20 (Decision to Institute), 23–24. In this IPR, we
`
`declined to institute review based on any ground raised by Petitioner that
`
`relied on the LeGall thesis. Id. at 8–12.
`
`Thus, the IPR and reexamination proceedings address different issues
`
`(obviousness under 35 U.S.C. § 103(a) versus the judicially created doctrine
`
`of OTDP), as well as different combinations of primary references (Kohn
`
`
`2 Kohn et al., U.S. Patent No. 5,378,729, issued on Jan. 3, 1995 (“the
`’729patent”) (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).
`
`5 Silverman, The Organic Chemistry of Drug Design and DrugAction,
`Academic Press (1992) (“Silverman”) (Ex. 1013).
`
`
`
`3
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`1991 versus the ’301 patent) with secondary references (e.g., Silverman in
`
`the IPR). On that basis alone, the legal and factual considerations in the two
`
`proceedings differ significantly. In view of those differences, we are not
`
`persuaded that consolidation will simplify the issues to be decided,
`
`notwithstanding an overlap of certain documents and some aspects of an
`
`obviousness analysis in both cases. Motion 7–8.
`
`Petitioner suggests that a “high likelihood of prejudice to Petitioner
`
`and the public, versus the little-to-no likelihood of prejudice to Patent
`
`Owner, weighs in favor of consolidation.” Id. at 9. We disagree with that
`
`assessment. As an initial matter, Petitioner initiated both proceedings—
`
`Patent Owner did not. Moreover, Petitioner asks us to consolidate this IPR
`
`with the ex parte reexamination in a manner that benefits Petitioner and
`
`disadvantages Patent Owner.
`
`For example, as part of the requested “consolidated” IPR, Petitioner
`
`asks us: (i) to allow it to pursue two OTDP grounds in an IPR, a proceeding
`
`that otherwise is limited by statute (35 U.S.C. § 311(b)) to grounds based on
`
`35 U.S.C. §§ 102 or 103; (ii) to consider, again, the prior art status of a
`
`reference (the Le Gall thesis), which this panel already addressed when
`
`declining to institute review based on that reference; and (iii) to allow
`
`Petitioner to actively participate procedurally in the IPR, and any appeal of a
`
`final written decision in the case as needed, in a manner that it cannot do as a
`
`requester in the ex parte reexamination. See, e.g., Opposition 3–5
`
`(contrasting the examinational versus adjudicatory nature of the two
`
`proceedings); Motion 9 (asking us to place the reexamination on the one-
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`year timeline of the IPR).
`
`
`
`
`
`4
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`
`Above and beyond those considerations, as noted by our colleagues,
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`an ex parte reexamination proceeding differs in notable respects from an
`
`inter partes review, which is adjudicatory in nature. See Ford Motor Co. v.
`
`Signal IP, Inc., IPR2015-00860, slip op. at 3 (PTAB Nov. 17, 2015)
`
`(Paper 14). The two types of proceedings arise under different statutes and
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`are governed by different rules and statutory deadlines. Id. Thus, “there is
`
`an inherent tension in attempting to unify proceedings that [] are intended to
`
`be distinct in type from one another.” Id. Considering that inherent tension,
`
`as well as the specific facts and circumstances at issue here, we decline to
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`exercise our discretion to consolidate this IPR with the co-pending
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`reexamination involving the ’551 patent.
`
`We are mindful of Petitioner’s concern regarding the prevention of
`
`“inconsistent outcomes” in the two proceedings. Motion 5. To address this
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`concern, the parties shall file as an exhibit in this IPR a copy of any action,
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`decision, or other substantive paper issued by the CRU involving the
`
`’551 patent, along with a non-argumentative one-page notice regarding the
`
`filing. In addition, either party may contact the Board, by initiating a
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`conference call with the panel after conferring with the other party, in
`
`relation to any other matter in the reexamination that a party would like to
`
`bring to our attention. The parties also shall file any decision, order, or other
`
`substantive paper issued by the Board in this IPR in the corresponding co-
`
`pending reexamination.
`
`III. ORDER
`
`It is
`
`ORDERED that Petitioner’s Motion to Consolidate is denied;
`
`FURTHER ORDERED that the parties shall file as an exhibit in this
`
`
`
`5
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`IPR a copy of any action, decision, or other substantive paper issued by the
`
`CRU involving the ’551 patent, and upon such filing, concurrently file as a
`
`paper in this proceeding a one-page notice stating that the filing occurred;
`
`and
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`FURTHER ORDERED that the parties shall file any decision, order,
`
`or other substantive paper issued by the Board in this IPR in the
`
`corresponding co-pending reexamination.
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`
`
`
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`
`
`
`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
`
`
`
`6
`
`
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