UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner,
`
`v.
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`INDIVIOR UK LIMITED,
`Patent Owner.
`______________
`
` Case IPR2016-00280
`Patent 8,475,832 B2
`______________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO CORRECT FILING DATE
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner,
`
`v.
`
`INDIVIOR UK LIMITED,
`Patent Owner.
`______________
`
` Case IPR2016-00280
`Patent 8,475,832 B2
`______________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO CORRECT FILING DATE
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`Petitioner Teva Pharmaceuticals USA, Inc. opposes Patent Owner Indivior
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`UK Limited’s motion (Paper 10) to change the filing date of the present IPR from
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`December 3, 2015 to December 4, 2015. Indivior does not dispute that Teva fully
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`completed all filing requirements on December 3. Instead, its sole complaint is
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`that Teva did not serve the documents until December 4. But as will be discussed
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`below, the relevant statute does not tie the filing date to the service date.
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`Moreover, the Board has discretion to waive its regulatory requirements where, as
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`here, Teva made a good faith effort at timely service, and there is no prejudice to
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`Patent Owner.
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`I.
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`STATEMENT OF MATERIAL FACTS
`A.
`1.
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`Filing
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`On December 3, 2015, Teva’s counsel set out to file three IPRs:
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`IPR2016-00280 (“”280 IPR”), IPR2016-00281 (“’281 IPR”), and IPR2016-
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`00282 (“’282 IPR”). Declaration of Eleanor Yost (“Yost Decl.”), Exhibit 1028,
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`¶ 3.
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`2.
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`Linda Rogers, a legal assistant being supervised by Ms. Yost,
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`logged into the undersigned’s PRPS account at approximately 9:45 pm EST on
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`December 3 and began uploading the ’280 IPR documents. Declaration of
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`Linda Rogers (“Roger Decl.”), Exhibit 1029, ¶ 4. Based on their experience,
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`Ms. Yost and Ms. Rogers believed that each filing would take approximately
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`1
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`twenty minutes, and that, accordingly, they would have ample time to complete
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`the three filings prior to midnight. Rogers Decl. ¶ 13; Yost Decl. ¶ 24. Ms.
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`Rogers found, however, that the PRPS system repeatedly froze during the ’280
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`IPR upload process. Rogers Decl. ¶ 5.
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`3.
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`To upload a document, the user chooses the document from the
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`local computer or network, and PRPS then automatically uploads it. Yost Decl.
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`¶ 9. During this process, a “spinning wheel” appears, and users can take no
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`action. Id. If successfully uploaded, the system returns the user to a menu that
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`requires input of certain information, including document name and “type”
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`(e.g., motion, petition, notice, exhibit). Id. The user can then click “submit” to
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`file the document. Id.
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`4.
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`As Ms. Rogers attempted to upload the ’280 IPR documents, she
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`found that the “spinning wheel” would spin for an unusual length of time
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`(sometimes several minutes), and then eventually stop spinning, resulting in a
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`“frozen” screen that prevented her from taking any action (including closing
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`the browser window or opening new windows). Rogers Decl. ¶¶ 6-7. The only
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`remedy that Ms. Rogers and Ms. Yost were aware of was to force-close the
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`browser, re-open the browser, re-login to PRPS, and attempt to resume the
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`filing. Rogers Decl. ¶ 8; Yost Decl. ¶ 12.
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`5. When Ms. Rogers would re-start the PRPS session and attempt to
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`re-access the filing, she was met with a “padlock” graphic and an error
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`message. Rogers Decl. ¶ 9. She was then required to select a menu option to
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`“unlock” the session. Id. Once unlocked, the document associated with the
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`prior session was gone, and Ms. Rogers was required to re-trace all of the
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`uploading steps for the document. Id. ¶ 10.
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`6.
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`This “freezing,” re-starting, and unlocking process added a
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`significant amount of time to the filing. Id. ¶ 11. The total time to complete the
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`’280 filing took nearly an hour and a half, almost an hour and ten minutes
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`longer than usual. Id.
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`7.
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` Realizing that the deadline was fast approaching and that the ’280
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`petition uploading process was taking an unusually long time, at approximately
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`11:00 pm Ms. Yost initiated a separate, parallel PRPS session using her own
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`PRPS account on a different computer to begin filing the ’281 IPR in parallel.
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`Yost Decl. ¶¶ 16-17. Ms. Yost experienced the same freezing errors in
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`connection with several different documents (sometimes more than once for the
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`same document). Id. ¶¶ 19-22.
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`8.
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`The complete ’280 IPR filing was accomplished on December 3,
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`with PRPS generating a filing receipt at 11:11 pm. Rogers Decl. ¶ 15; see also
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`Exhibit 1030. Although the petitions and exhibits for the ’281 and ’282 IPRs
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`were uploaded on December 3, difficulties with the payment system delayed the
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`3
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`overall filings, and the notifications for the ’281 and ’282 IPRs arrived at 12:01
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`am and 12:09 am, respectively, on December 4. Rogers Decl. ¶¶ 17-18; Yost
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`Decl. ¶¶ 27-29; Exhibits 1031, 1032.
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`B.
`9.
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`Service
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`As Ms. Yost and Ms. Rogers attended to filing, the firm’s Office
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`Services vendor was printing hard-copy versions of the petitions and relevant
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`documents for service, using the same PDFs located on a server that were being
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`used for the electronic filing. Yost Decl. ¶ 18. Given the slow upload times
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`experienced by Ms. Rogers and Ms. Yost, Office Services was directed to exit all
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`of the PDFs until the filings were complete, as a troubleshooting measure in the
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`event that their accessing the PDFs was exacerbating the upload times. Id. Once
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`the filings were complete, printing resumed. Id. ¶ 35.
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`10. The petitions and supporting documents were tendered to FedEx® at
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`3:02 am on Friday, December 4, 2015. Id. In the aftermath of the filing issues, Ms.
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`Yost neglected to appreciate that the Certificates of Service attached to the
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`documents uploaded on December 3 still said December 3, and needed to be
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`updated to reflect that the documents were not tendered to FedEx® until December
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`4th. Id.
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`11. Patent Owner’s counsel received the service copy on Monday,
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`December 7, 2015, and first inventoried the contents on December 14, 2015.
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`4
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`Exhibit 1027, 24:10-25:8. Patent Owner’s counsel has conceded that the service
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`copy of the ’280 IPR papers was complete. Id., 31:21-32:16.
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`12. On December 15th, Teva received a Notice of Filing Date Accorded to
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`Petition in each of the three proceedings. See ’280 IPR, Paper 3; ’281 IPR, Paper
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`3; ’282 IPR, Paper 3. The Notices required certain corrections to exhibits and the
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`Certificates of Service. In particular, the Notice required that Teva affirmatively
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`state in the Certificates of Service that the exhibits were served with the petitions.
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`13. On December 17th, Ms. Yost coordinated the filing and service of the
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`corrected exhibits and Certificates of Service. Yost Dec. ¶ 41. She did not correct
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`the date of service from December 3rd to December 4th in the Certificates at that
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`time because she believed that she needed authorization from the Board to do so,
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`and a panel had not been appointed from which she could seek authorization. Id.
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`II. THE DECEMBER 3 FILING DATE IS PROPER AND SHOULD NOT
`BE CHANGED
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`Teva received a December 3, 2015 filing date for this IPR, and Indivior has
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`not established good cause to change it to December 4. Indivior asserts that
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`service on the filing date is a statutory requirement, and that the Board should not
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`waive its service-related regulations due to errors in Teva’s Certificates of Service.
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`Both arguments lack support in the Board’s case law.
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`5
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`A. Teva Satisfied the Statutory Requirements for IPR
`Compliance with the statutory time bar requires only that “the petition” be
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`timely “filed.” 35 U.S.C. § 315(b). Subsequently, to obtain consideration of a
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`petition, the petitioner must provide copies of the petition and supporting evidence
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`to the patent owner. 35 U.S.C. § 312(a). Nothing in the statute makes the filing
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`date contingent on the date petitioner provides those copies. As the Board has
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`recognized, the statute “does not require that the documents be served on the
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`Patent Owner, nor does it specify when the Patent Owner must receive these
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`documents.” Terremark N. Am. LLC v. Joao Control & Monitoring Sys., LLC,
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`IPR2015-01466, Paper 10, at 5 (PTAB Jan. 6, 2016); see also Yamaha Corp. v.
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`Black Hills Media, LLC, IPR2013-00593, Paper 22, at 5-6 (PTAB Mar. 20, 2014)
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`(same); Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper 23, at 4
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`(PTAB April 11, 2013) (“Nothing in the statute states that the date the Patent
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`Owner receives those copies is determinative of the filing date.”).
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`Indivior concedes that per the Board’s case law, the statute does not require
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`service. Paper 10 at 7. It nevertheless contends that the facts of those cases are
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`distinguishable, because the documents had been served by email or tendered to a
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`courier prior to the 35 U.S.C. § 315(b) bar date. Id. Such facts, however, do not
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`change the plain language of the statute, which does not require service on any
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`particular date, and does not tie the filing date to the service date. Indivior cites no
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`6
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`case in which the Board found that service is a statutory requirement, or where a
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`service issue alone was sufficient grounds to change a filing date.
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`There is no dispute that Teva has in fact provided copies of the petition and
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`supporting evidence to the Patent Owner, as called for by the statute. Exhibit
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`1027, 31:21-32:16. Accordingly, Indivior’s request to change the filing date has no
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`basis in the operative statute.
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`In addition, Teva has satisfied the Board’s regulatory requirements for filing.
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`37 C.F.R. § 42.6.
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`B.
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`The Board Has Discretion to Waive Regulatory Requirements
`Relating to Service
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`The manner of serving a petition is governed by rule, not statute. 37 C.F.R.
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`§ 42.106(a) requires in relevant part that the petitioner serve the petition and
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`exhibits on the correspondence address of record (per 37 C.F.R. § 42.105(a)). The
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`Board has express discretion to waive requirements of Part 42. 37 C.F.R. §
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`42.5(b).
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`The Board has previously accorded a filing date even where the petitioner
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`did not meet the service requirements of Rule 42.105(a) by the statutory bar date.
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`For example, in Terremark, the Board cited 37 C.F.R. § 42.5(b) and refused to
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`deny the petition as time-barred where the petitioner deposited the documents with
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`a courier one day after the statutory bar date. IPR2015-01466, Paper 10, at 4, 5-6.
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`7
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`The Board found that mailing via FedEx® the day after filing the petition failed to
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`comply with Rule 42.105(a), but found the error harmless, because the patent
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`owner received the petition shortly thereafter. Id. at 6.
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`Here, Teva’s counsel made a good faith attempt to serve on the filing date,
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`and Patent Owner’s receipt of the petition was not delayed by the error. Counsel
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`was diligent in having the service copies printed and prepared for shipping.
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`However, as described above, Teva’s electronic filing efforts were plagued by
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`upload issues with PRPS that delayed both filing and payment. These filing issues
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`led to service delays, as the team attempted to troubleshoot the slow PRPS
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`uploading issues. Yost Decl. ¶ 18. As soon as the documents were filed, printing
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`of the service copies resumed, and the team used its best efforts to get the
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`documents to FedEx® as soon as possible, which was at 3:02 am on December 4.
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`Id. ¶ 35.
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`Indivior asserts that the incorrect date on the ’280 IPR Certificate of Service
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`and Amended Certificate of Service does not comport with a good faith effort to
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`effect proper service. Paper 10 at 10. First, Indivior cites no case law supporting
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`its contention. Indeed, in Terremark, the original certificate of service likewise
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`indicated an incorrect service date (IPR2015-01466, Paper 2 at 38), but the Board
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`nevertheless declined to deny the petition. Terremark, IPR2015-01466, Paper 10
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`at 6. Second, Indivior’s allegations of bad faith do not comport with the facts. In
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`8
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`the aftermath of the filing issues, Teva’s counsel neglected to appreciate that the
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`Certificates of Service attached to the documents uploaded on December 3 needed
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`to be updated to reflect that the documents were not tendered to FedEx® until
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`December 4th. Yost Decl. ¶ 35. On December 15, the Board’s Trial Paralegal
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`directed Teva to make certain corrections to the Certificate of Service. Id. at ¶ 40;
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`Paper 3. Counsel made the requested corrections, but did not correct the service
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`date, because she believed that she needed the Board’s authorization to make
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`changes to the record other than those requested by the Board, and a panel had not
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`been appointed from which she could seek authorization. Yost Decl. ¶ 41.
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`Nevertheless, as of the parties’ December 28, 2015 meet and confer, Teva’s
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`counsel had advised Patent Owner’s counsel that the documents were tendered to
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`FedEx® on December 4, 2015 (id. at ¶ 46),1 and at the first available opportunity, it
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`sought the Board’s guidance as to how to amend the Certificate of Service. Exhibit
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`1027, 21:21-22:17. Indeed, to ensure that she obtained such guidance as soon as
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`possible, Teva’s counsel repeatedly contacted the Board at regular intervals after
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`December 3 to ascertain whether a panel had been appointed. Yost Decl. ¶¶ 38,
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`48, 51.
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`1 Current counsel for Indivior had not yet appeared in the ’280 proceeding. Yost
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`Decl. ¶ 47.
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`9
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`The date of service did not prejudice Indivior. The petition and supporting
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`documents were electronically filed on December 3, and therefore a full electronic
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`copy of the submission was accessible to Indivior on December 3. Counsel at the
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`correspondence address of record received the petition on Monday, December 7,
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`the same day the delivery would have arrived had it been tendered to FedEx® after
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`8:15 pm on December 3. See Exhibit 1033 (listing 8:15 pm as the latest weekday
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`drop off time at the FedEx® location Teva’s counsel used to tender the service
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`copies). Moreover, Patent Owner’s counsel who received the delivery indicated
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`that he did not even inventory it until December 14. Exhibit 1027, 24:10-25:8.
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`Accordingly the date of service does not affect Indivior’s ability to timely respond
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`to the petition, and if it does, Teva would not oppose an extension of the deadline
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`for Patent Owner to file its Preliminary Response.
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`Dated: March 10, 2016
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`Respectfully submitted,
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`/Elizabeth J. Holland/
`Elizabeth J. Holland
`(Reg. No. 47,657)
`Counsel for Petitioner Teva Pharms. USA, Inc.
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`10
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that I caused the foregoing
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`“PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
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`CORRECT FILING DATE,” including the exhibits referenced herein, to be served
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`electronically via e-mail on March 10, 2016 on the following:
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`/Cynthia Lambert Hardman/
`Cynthia Lambert Hardman
`(Reg. No. 53,179)
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`Andrea G. Reister
`Enrique D. Longton
`COVINGTON & BURLING LLP
`One City Center
`850 Tenth Street NW
`Washington, DC 20001
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`using the below email addresses:
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`areister@cov.com
`rlongton@cov.com
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`
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`Dated: March 10, 2016
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