IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner,
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`v.
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`INDIVIOR UK LIMITED
`(F/K/A RB PHARMACEUTICALS LIMITED),
`Patent Owner.
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`Case No. IPR2016-00280
`Patent No. 8,475,832
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`PATENT OWNER’S MOTION TO CHANGE THE DECEMBER 3, 2015
`FILING DATE TO DECEMBER 4, 2015
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner,
`
`v.
`
`INDIVIOR UK LIMITED
`(F/K/A RB PHARMACEUTICALS LIMITED),
`Patent Owner.
`
`Case No. IPR2016-00280
`Patent No. 8,475,832
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`PATENT OWNER’S MOTION TO CHANGE THE DECEMBER 3, 2015
`FILING DATE TO DECEMBER 4, 2015
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`Patent No. 8,475,832
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`Case No. IPR2016-00280
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`INTRODUCTION
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`I.
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`As authorized in the Board’s Order dated February 18, 2016 (Paper No. 8),
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`Patent Owner Indivior UK Limited submits the present Motion to Change the
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`December 3, 2015 Filing Date to December 4, 2015.
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`Petitioner was served with a complaint asserting U.S. Patent No. 8,475,832
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`at issue in the present proceeding (“the ‘832 patent”) on December 3, 2014.
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`Therefore, in order for its petition not to be time-barred under 35 U.S.C. § 315(b),
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`the petition must be accorded a filing date no later than December 3, 2015.
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`There is no dispute, however, that Petitioner did not even attempt service of
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`the petition or its exhibits until December 4, 2015. Thus, the statutory
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`requirements were not met until December 4, mandating a filing date of December
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`4, 2015. Additionally, although the regulatory filing date requirement for service
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`of the petition may be waived, the Board should refrain from doing so here, given
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`Petitioner’s continued misrepresentation of the date of service as set forth in the
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`original and Amended Certificates of Service. Thus, based on the statutory filing
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`date requirements, and independently based on the regulatory filing date
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`requirements, the filing date here should be changed to December 4, 2015, and the
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`petition denied as time-barred under 35 U.S.C. § 315(b).
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`II.
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`STATEMENT OF MATERIAL FACTS
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`As admitted in the Petition, “Petitioner was served with a complaint
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`1
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`Case No. IPR2016-00280
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`asserting the ‘832 patent on December 3, 2014.” Pet. at 6; see also Ex. 2001.
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`Therefore, a filing date after December 3, 2015 would render the petition time-
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`barred under 35 U.S.C. § 315 (b).
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`The original Certificate of Service accompanying the petition (Ex. 2002)
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`includes the following certification:
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`The certification paragraph itself does not identify the date to which “this
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`day” refers. The only date included on the Certificate of Service is “December 3,
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`2015” by the signature block. See Ex. 2002. Notably, the original Certificate of
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`Service accompanying the petition (Ex. 2002) states only that “a true and correct
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`copy” of the petition was “caused to be served,” omitting any reference to any of
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`the exhibits relied upon in support of the petition. In the Notice of Filing Date
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`2
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`Case No. IPR2016-00280
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`Accorded to Petition, the Board noted this defect, among others, explaining
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`Petitioner’s “[f]ailure to certify, in the ‘Certificate of Service,’ that all exhibits
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`relied upon in the Petition were served on the Patent Owner.” Paper No. 3, p. 1.
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`The Notice further stated that this “defect can be corrected by uploading an
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`amended Certificate of Service in PRPS.” Id.
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`On December 17, 2015, Petitioner filed an “Amended Certificate of Service”
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`(Ex. 2003) that includes the following certification:
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`As with the original Certificate of Service, the certification paragraph
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`itself in the Amended Certificate of Service does not identify the date to which
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`“this day” refers. Critically, the Amended Certificate of Service also includes
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`“December 3, 2015” by the signature block. See Ex. 2003.
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`3
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`Case No. IPR2016-00280
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`Both the original and Amended Certificates of Service list “Hoffmann &
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`Baron LLP, 6900 Jericho Turnpike, Syosset, NY 11791” as the “correspondence
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`address of record” to which the “Federal Express Next Business Day Delivery”
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`was directed. See Exs. 2002 & 2003. As explained in the Declaration of Michael
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`I. Chakansky, Esq. (Ex. 2005), boxes containing a copy of the petition, the original
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`Certificate of Service, and exhibits were part of a three-piece shipment under
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`“Master tracking number 775119028582.” See Ex. 2005, ¶¶ 3-4; Ex. 2004
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`(showing three FedEx Tracking reports for a “3 Piece shipment” under Master
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`tracking number 775119028582). The “Ship date” for each of the three pieces is
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`listed as “Fri 12/04/2015.” Ex. 2004 (emphasis added). The “Travel History” for
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`each piece includes an entry “Picked up Tendered at FedEx Office” at “3:02 am”
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`on “12/04/2015-Friday” and an entry “Left FedEx origin facility at “11:19 pm” on
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`“12/04/2015-Friday.” Id. (emphasis added). In the teleconference conducted on
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`February 17, 2016, “Petitioner confirmed that it did not attempt service before 3
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`a.m. on December 4, 2015, when it brought boxes of documents to a Federal
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`Express office for mailing.” Paper No. 8, p. 2.
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`III. APPLICABLE LEGAL STANDARDS
`Service of a petition and the exhibits thereto is both a statutory and
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`regulatory requirement. First, 35 U.S.C. § 312(a)(1) mandates that a petition “may
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`be considered only if” all of the statutory requirements are met, including
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`4
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`“payment of the fee,” and 35 U.S.C. § 312(a)(5) further mandates that “the
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`petitioner provide[] copies of any of the documents required [petition; . . . patents
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`and printed publications that the petitioner relies upon in support of the petition; . .
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`. affidavits or declarations of supporting evidence and opinions] to the patent
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`owner.” Second, and independently, 37 C.F.R. § 42.106(a)(2) states that “a
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`petition to institute inter partes review will not be accorded a filing date until” the
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`petitioner “[e]ffects service of the petition on the correspondence address of record
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`. . . .” Thus, as the Board has repeatedly held, “a petition is only accorded a filing
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`date once (1) a petition has been filed; (2) payment has been made; and (3) the
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`complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. §
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`42.106(a).” Terremark N.A. LLC v. Joao Control & Monitoring Sys., LLC, Case
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`IPR2015-01482 (PTAB Dec. 28, 2015) (Paper 10, p. 7) (emphasis added);
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`E*Trade Financial Corp. v. Droplets, Inc., Case IPR2015-00470 (PTAB Apr. 20,
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`2015) (Paper 17) (granting motion to change filing date because all three filing
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`requirements were met); ConMed Corp. v. Bonutti Skeletel Innovations LLC, Case
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`IPR2013-00624 (PTAB Mar. 14, 2014) (Paper 22) (same); see also Micron
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`Technology, Inc. v. e.Digital Corp., Case IPR2015-00519 (PTAB March 24, 2015)
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`(Paper 14, p. 5) (filing date not changed where “counsel participating in this
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`proceeding on behalf of Patent Owner actually received the Petition prior to the
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`expiration of the one-year bar set forth in 35 U.S.C. § 315(b)”); Patent Review
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`5
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`Patent No. 8,475,832
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`Case No. IPR2016-00280
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`Processing System (PRPS) Frequently Asked Questions (FAQs), D3 (Ex. 2006, p.
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`10) (evidence that a copy of the petition was provided to patent owner is a statutory
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`requirement under § 312(a)).
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`Petitions for inter partes review must be filed within one year after
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`Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b);
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`37 C.F.R. § 42.101(b). A petition “filed more than 1 year after the date on which
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`the petitioner, . . . is served with a complaint alleging infringement of the patent” is
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`time-barred, and no inter partes review may be instituted. 35 U.S.C. § 315(b).
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`IV. ARGUMENT
`A. The Petition is Not Entitled to the December 3, 2015 Filng Date
`For Failure to Timely Serve the Complete Petition
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`In order properly to be accorded the December 3, 2015 filing date, Petitioner
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`needed to satisfy the statutory requirements on December 3, 2015. Section 312(a)
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`expressly provides that “[a] petition filed under section 311 may be considered
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`only if” the listed requirements are met, 35 U.S.C. § 312(a) (emphasis added),
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`including service of the complete petition (the petition itself, “patents and printed
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`publications that the petitioner relies upon in support of the petition” (35 U.S.C. §
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`312 (a)(3)(A)), and “declarations of supporting evidence and opinions, if the
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`petitioner relies on expert opinions” (35 U.S.C. § 312(a)(3)(B)). 35 U.S.C. §
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`312(a)(5). Thus, the plain language of the statute makes clear that a petition must
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`6
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`Case No. IPR2016-00280
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`satisfy the service requirement in order to be “considered” as “filed.” The Board
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`has recognized this, holding “a petition is only accorded a filing date once (1) a
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`petition has been filed; (2) payment has been made; and (3) the complete petition is
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`served on the patent owner” while citing 35 U.S.C. § 312(a). Terremark,
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`IPR2015-01482, Paper 10, p. 7.
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`As evidenced by Exhibits 2004 and 2005, and confirmed by Petitioner
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`during the February 17, 2016 conference call with the Board (Paper No. 8, p. 2;
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`Ex. 1027, 27:6-8), Petitioner did not even commence service of the “complete
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`petition” until December 4, 2015 when the FedEx “pieces” were “Tendered at
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`FedEx Office” and “Left FedEx origin facility.” Contrary to both the original and
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`Amended Certificates of Service, “a true and correct copy” of neither the petition,
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`nor the petition “and all exhibits relied upon,” was “caused to be served” “by
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`Federal Express Next Business Day Delivery” until December 4, 2015. Therefore,
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`the statutory service requirement was not met on December 3, 2015, and the
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`petition is not entitled to the December 3, 2015 filing date.
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`Patent Owner notes that while there are cases finding the statute does not
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`require that the documents be served on the Patent Owner, those cases are all
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`readily distinguishable from the circumstances here; they involved situations in
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`which the documents either had actually been sent before the statutory deadline or
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`were deposited with the postal service before that date. In Terremark N. A. LLC v.
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`7
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`Patent No. 8,475,832
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`Case No. IPR2016-00280
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`Joao Control & Monitoring Systems, LLC, Case IPR2015-01466 (PTAB Jan. 6,
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`2016) (Paper 10), although the package containing the service copy of the petition
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`was not accepted by Federal Express until the day after the one-year statutory bar
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`date, an email containing links to the petition and supporting evidence was sent to
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`patent owner’s litigation counsel before the expiration of the statutory bar date. Id.
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`at 4. No such email was sent here; the only attempt at service was done, by
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`Petitioner’s own admission, after the statutory bar date. Likewise, in Yamaha
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`Corp. of America v. Black Hills Media, LLC, Case IPR2013-00593 (PTAB Jan. 15,
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`2014) (Paper 22), Petitioner certified and provided evidence showing that the
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`petition was deposited in a United States Postal Service express mail slot prior to
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`the statutory bar date. Id. at 5. No such evidence exists here. Accordingly, the
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`petition is not entitled to the December 3, 2015 filing date.
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`B.
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`The Regulatory Filing Date Requirement for Service Should Not
`Be Waived
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`Even if the Board were to conclude that service of the complete petition is
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`not a statutory requirement for a filing date, it remains an important regulatory
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`requirement. 37 C.F.R. § 42.106(a)(2). There is no dispute that service was not
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`even attempted until December 4, 2015, which is the earliest filing date to which
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`the petition may be entitled under either the statute or the Board’s rules. The
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`Board has previously exercised its authority under 37 C.F.R. § 42.5(b) to waive the
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`8
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`Patent No. 8,475,832
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`Case No. IPR2016-00280
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`service requirement when the petitioner “made a good faith effort to effect proper
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`service in a timely manner.” Yamaha, IPR2013-00593, Paper 22, p. 6. Here,
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`however, not only was there no “good faith effort” to timely serve the Petition,
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`Petitioner has not acted in good faith by its continued misrepresentation of the
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`actual date of service.
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`Petitioner’s actions here are clearly distinguishable from the petitioner’s
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`actions in both Terremark (IPR2015-01466) and Yamaha. In Terremark, petitioner
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`attempted to effect service prior to the one-year bar date by sending an email to
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`patent owner’s litigation counsel. Terremark, IPR2014-01466, Paper 10, p. 4. In
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`Yamaha, the petitioner deposited the petition with the U.S. Postal Service prior to
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`the one-year bar date. Yamaha, IPR2013-00593, Paper 22, pp. 5-6.
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`No such facts are present here. In this case, it is undisputed that no service
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`of any kind (whether by email1 or depositing with a postal carrier) was
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`“attempt[ed] . . . before 3 a.m. on December 4, 2015” (Paper No. 8, p. 2), after the
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`one-year bar date.
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` Petitioner compounds
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`the error by
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`its continued
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`misrepresentation of the actual date of service.
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`Petitioner filed an Amended Certificate of Service on December 17, 2015,
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`1 No email was sent to Patent Owner’s litigation counsel, despite being engaged in
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`litigation for over a year regarding the patent at issue in the present proceeding.
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`9
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`Patent No. 8,475,832
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`Case No. IPR2016—0O280
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`stating that the Petition and all exhibits were “caused to be served” on December 3,
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`2015, which was known to be incorrect when the Amended Certificate of Service
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`was filed.
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`EX. 2003 (emphasis added). Petitioner’s misrepresentation of the
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`service date when filing the Amended Certificate of Service, and the continued
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`misrepresentation of the service date in both the original and Amended Certificates
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`of Service, does not comport with “a good faith effort to effect proper service in a
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`timely manner” that would justify waiver of the regulatory requirement. Yamaha,
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`IPR2013~00593, Paper 22 at 6. Accordingly,
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`the Board should not waive the
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`service requirement under § 42.106(a)(2), and should change the filing date to
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`December 4, 2015.
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`Whether based on statutory or regulatory filing date requirements, the filing
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`date here should be changed to December 4, 2015, and the petition should be
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`denied as time—barred under 35 U.S.C. § 315(b).
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`Dated: February 29, 2016
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`Respectfully submittedfmmx
`} .
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`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street NW
`Washington, DC 20001
`(202) 662-6000
`
`
` By
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`,~
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`Andrea G. Reister
`Registration No.: 36,253
`Enrique D. Longton
`Registration No.: 47,304
`Attorneys for Patent Owner
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`10
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 29th day of February
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`2016,
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`the foregoing PATENT OWNER’S MOTION TO CHANGE THE
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`DECEMBER 3, 2015 FILING DATE TO DECEMEBER 4, 2015 was served via
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`electronic mail by agreement of the parties on the following counsel of record for
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`petitioner.
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`Elizabeth Holland
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`EHo1land@goodwinprocter.com
`Eleanor M. Yost
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`EYost@goodwinprocter.com
`Goodwin Procter LLP
`
`Date: February 29, 2016
`
`Registration No.: 36,253
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