UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`TEVA PHARMACEUTICALS USA INC.
`Petitioner
`v.
`MONOSOL RX, LLC,
`Patent Owner
`
`
`
`
`
`IPR2016-00281
`Patent 8,603,514 B2
`
`IPR2016-00282
`Patent 8,017,150 B21
`
`
`
`
`DECLARATION OF ELEANOR YOST IN SUPPORT OF
`PETITIONER’S MOTION TO CORRECT FILING DATE
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`1 Petitioner attests that the word-for-word identical paper is filed in each proceeding
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`identified in the heading.
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`
`
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 1
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`TEVA PHARMACEUTICALS USA INC.
`Petitioner
`v.
`MONOSOL RX, LLC,
`Patent Owner
`
`
`
`
`
`IPR2016-00281
`Patent 8,603,514 B2
`
`IPR2016-00282
`Patent 8,017,150 B21
`
`
`
`
`DECLARATION OF ELEANOR YOST IN SUPPORT OF
`PETITIONER’S MOTION TO CORRECT FILING DATE
`
`
`
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`1 Petitioner attests that the word-for-word identical paper is filed in each proceeding
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`identified in the heading.
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`
`
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 1
`
`
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`
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`I, Eleanor Yost, hereby declare:
`
`1.
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`I am an attorney at the law firm of Goodwin Procter LLP, counsel of
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`record for Petitioner Teva Pharmaceuticals USA Inc. I make this Declaration in
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`support of Petitioner’s Motion to Correct the Filing Date of IPR2016-00281 and
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`IPR2016-00282 from December 4, 2015 to December 3, 2015. This Declaration is
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`based on my own personal knowledge and, if called as a witness, I could and
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`would testify competently to the facts in this Declaration.
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`2.
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`Teva had been served with a complaint asserting infringement of the
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`patents that are the subject of these three IPRs on December 3, 2014.
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`3.
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`As laid out below, on the evening of December 3, 2015, Petitioner’s
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`counsel filed three IPR petitions concerning U.S. Patent Nos. 8,475,832,
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`8,603,514, and 8,017,150, which will be referred to herein as the “’280 petition,”
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`“’281 petition,” and “’282 petition.”
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`4.
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`During the course of the evening, we experienced severe technical
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`difficulties with the USPTO’s Patent Trial and Appeal Board Patent Review
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`Processing System (“PRPS”) that prevented us from submitting the petitions in
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`’281 and ’282 proceedings by midnight EST, despite our best efforts to
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`troubleshoot and rectify the problems throughout the course of the evening.
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`5.
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`Cognizant that there were numerous exhibits to be filed in support of
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`each of the petitions, I instructed my assistant, Linda Rogers, to begin the filing
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 2
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`process, and she began at approximately 9:45pm EST, starting by uploading the
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`documents for the ’280 petition (including the petition, exhibits, and ancillary
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`documents). See Declaration of Linda Rogers (“Rogers Decl.”), submitted
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`herewith (’281 IPR Exhibit 1042, ’282 IPR Exhibit 1051).
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`6.
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`I understand that she undertook the process in the customary way,
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`which involves: (1) logging into PRPS under an authorized account (in this case,
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`the account of Elizabeth Holland, who is lead counsel in these proceedings); (2)
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`filling out forms requesting bibliographic information about the case, the patent
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`at issue, and the attorneys of record; (3) providing payment information (e.g.,
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`credit card and/or deposit account information); and (4) uploading the petition
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`and related documents to the PRPS server. Rogers Dec. at ¶ 4.
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`7.
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`During the process of uploading documents filed in connection with
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`the ’280 petition to the PRPS server, Ms. Rogers observed that PRPS was
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`functioning highly unusually. Id. at ¶ 5.
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`8.
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`The PRPS system repeatedly froze during the ’280 petition upload
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`process. See id. at ¶ 5. Specifically, after Ms. Rogers selected certain exhibits for
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`upload, the browser would show a spinning circle. This circle usually appears
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`only for a few seconds while the selected document is uploading. On December
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`3rd, however, the circle appeared for much longer than usual in connection with
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`several exhibits and when this happened, PRPS eventually stopped functioning
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 3
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`altogether. Id. at ¶ 6.
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`9.
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`By way of background, to upload a document to the PRPS server, a
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`user browses to and selects the desired document from the local computer or
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`network, and once chosen, the server then automatically uploads the document to
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`PRPS (during which time a “spinning wheel” appears on the screen and users can
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`take no action). If uploaded successfully, the system then presents the user a
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`menu that requires the user to input certain information about the document,
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`including by selecting its “type” (e.g., motion, petition, notice, exhibit) and name.
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`The user can then click “submit” to file the document.
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`10. However, on December 3rd, when filing several exhibits, Ms. Rogers
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`observed that the “spinning wheel” spun significantly longer than usual, and then
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`eventually stopped spinning and remained frozen on the screen. PRPS would
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`then cease functioning entirely. Id. at ¶ 6.
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`11. When this occurred, Ms. Rogers was unable to take any action
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`whatsoever (including actions such as selecting another option on PRPS, closing
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`the browser window or opening new windows). Id. at ¶ 7. The computer itself
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`and other programs, however, remained functional. (That evening, Ms. Rogers
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`and I were both using reliable computers that were connected to the Internet via
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`high-speed connections. We accessed the PRPS system via Internet Explorer.)
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`12.
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` When PRPS malfunctions in this way, the only remedy I am aware
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 4
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`
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`
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`of is to force-close the Internet Explorer browser (i.e., selecting CTRL-ALT-DEL
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`and shutting down the browser through the task menu), re-open the browser, re-
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`login to PRPS, and attempt to resume the filing. This PRPS “rebooting” process
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`took several minutes each time.
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`13. When this happened on the night of December 3rd, Ms. Rogers was
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`forced to engage in the force-close process several times. Id. at ¶¶ 8-9. Once
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`logged back into the PRPS system, though, the petition filing itself was
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`administratively “locked” from access. In other words, when the PRPS session
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`was re-started, the screen displayed a large graphic of a “padlock” and an error
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`message that prevented any further work on the filing. Ultimately, a menu option
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`to “unlock” the session was located to resume filing, but this additional step of
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`“unlocking” the locked filing session further added additional time to the overall
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`filing.
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`14. Once unlocked, the filing was able to be resumed, but the document
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`associated with the attempted upload was gone. So, Ms. Rogers was required to
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`re-trace all of the uploading steps for each document for which the error
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`occurred. Id. at ¶ 10.
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`15. This “freezing”, re-starting, locking, and unlocking of PRPS on
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`several occasions added a significant amount of time to each filing. As discussed
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`below, I personally experienced the same errors in connection with several
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 5
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`different documents (and sometimes more than once for the same document).
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`16. Upon realizing that the ’280 petition filing was taking an unusually
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`long time, I and others began to troubleshoot the problem.
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`17. First, to determine if the PRPS technical difficulties were limited to
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`the one PRPS account or the computer used by Ms. Rogers, I logged into my own
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`personal PRPS account on a different computer, and initiated filing the
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`documents associated with the ’281 petition myself. Ms. Rogers, in parallel,
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`continued filing the ’280 petition through the first PRPS account.
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`18. Second, the firm’s Office Services vendor, which was printing hard-
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`copies of the documents associated with the three proceedings for service, was
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`directed to exit any and all PDFs associated with the proceedings until the filings
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`were complete, in the event that their accessing of the PDFs was exacerbating the
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`upload times. (The PDF documents associated with the filings were located on a
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`network storage drive.)
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`19. Unfortunately, as discussed in detail below, during the course of
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`filing the ’281 petition documents, I experienced the same unexpected and
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`unusual PRPS upload delays in connection with filing the exhibits to the petition
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`as Ms. Rogers experienced during the course of filing the ’280 petition. PRPS’s
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`“spinning wheel” that appears during the document upload process froze on my
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`screen on several occasions, and in some cases, more than once per document.
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 6
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`20. On such occasions, the PRPS system completely stopped
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`responding. This necessitated force-closing the browser, re-opening the browser,
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`logging back into the PRPS system, and proceeding through the “lock/unlock”
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`error process described above. These technical difficulties made the overall
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`filing process take significantly longer than usual.
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`21.
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`I expect that the PRPS metadata will substantiate that my PRPS
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`account was locked and unlocked several times during the course of the filings on
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`December 3rd. I also believe that the metadata will further substantiate the length
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`of time the three filings took overall.
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`22.
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`In my case, when the PRPS server would crash more than once in
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`connection with a particular document, I tried to re-upload it. On at least one
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`occasion, when repeatedly unsuccessful, I skipped the document to upload the
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`next document, in order of exhibit number. I expect that the metadata will show
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`that the exhibit numbers were filed sequentially, as per the usual practice.
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`Certain documents, however, may be shown as uploaded out of sequential order.
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`For these documents in particular, PRPS repeatedly crashed during the upload
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`process. They were eventually filed in new PRPS sessions.
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`23.
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`In my experience, the PRPS difficulties we encountered during the
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`course of the filing of the three petitions were highly unusual. Both Ms. Rogers
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`and I have previously completed PRPS filings using the same computers running
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 7
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`
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`the same Internet Explorer browser without these difficulties. In fact, in the past,
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`similar documents were uploaded from my computer using the same Internet
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`browser and connected through the same system to PRPS in a matter of seconds.
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`24.
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`In my experience, a complete filing with a similar number of exhibits
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`to that of the ’280 and ’281 petitions typically takes 20 minutes or less each. In
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`all, the total time to upload the complete the filings in the three proceedings took
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`hours—significantly longer than expected and experienced in other, similar PRPS
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`filings. The ’280 filing, for example, took approximately an hour and a half,
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`nearly an hour and ten minutes longer than usual.
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`25.
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`I believe that the repeated crashes and restarts were caused by the
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`malfunctioning of the PRPS system.
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`26. Ms. Rogers ultimately uploaded the complete set of ’280 petition
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`documents and paid the required fee before midnight on December 3rd. Rogers
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`Decl. at ¶ 15. PRPS generated a notice of the successful filing at approximately
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`11:11PM (see ’281 IPR Exhibit 1043, ’282 IPR Exhibit 1052), and Ms. Rogers
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`was instructed to immediately begin the filing what would become the ’282
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`petition, while I continued to upload the required documents in connection with
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`the ’281 petition.
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`27.
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`I eventually successfully uploaded the petition and exhibits
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`associated with the ’281 proceeding to the PRPS server, prior to midnight EST.
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 8
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`After uploading all of the documents, I then attempted to submit payment for the
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`filings prior to midnight, which, in PRPS, must be entered, submitted and
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`actually “clear” before users are provided the opportunity to click “submit” and
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`complete the overall filing.
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`28.
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`I attempted to use several different firm American Express credit
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`cards to submit payment. In one case, the PRPS system immediately produced a
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`red “x” next to the credit card number when entered and the system would not
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`process the transaction. In another case, the credit card information was
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`processed, but then formally “declined”. For example, in one case, I submitted
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`payment via a credit card (ending in -1104) and was sent an email notification by
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`the PRPS server indicating that payment was attempted prior to midnight, but
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`“[u]nfortunately, the Patent Review Processing System was unable to complete
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`the transaction.” See screenshot below (also filed as ’281 IPR Exhibit 1044, ’282
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`IPR Exhibit 1053). At the time I was inputting these different payment methods,
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`I did not know the reasons why the payments were declined.
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`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 9
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`29. With the midnight filing deadline rapidly approaching, I eventually
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`entered and submitted my own, personal credit card (credit card ending in -3027) and
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`received a notification, at the stroke of midnight, that the credit card payment was
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`finally accepted. The notification is shown below (also filed as ’281 IPR Exhibit
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`1045, ’282 IPR Exhibit 1054):
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`
`
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 10
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`30. The successful filing notification for the overall submission of the ’281
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`petition arrived one minute later. See ’281 IPR Exhibit 1046, ’282 IPR Exhibit 1055.
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`31.
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`In uploading documents and payment information in connection with the
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`’282 petition, Ms. Rogers experienced some of the same system and payment
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`problems described above. See Rogers Decl. at ¶ 16.
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`32. Ms. Rogers believes that all of the required documents in connection
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`with the ’282 petition filing were uploaded prior to midnight EST. See id. at ¶ 17.
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`
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`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 11
`
`
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`
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`Payment was also attempted, but denied, prior to midnight EST. Payment was
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`eventually successfully made, and the entire filing successfully confirmed at 12:09
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`AM EST. See Rogers Decl. at ¶ 18; ’281 IPR Exhibit 1047 (confirming payment
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`attempt on December 3, 2015), Exhibits 1048-52; ’282 IPR Exhibit 1056 (confirming
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`payment attempt on December 3, 2015), Exhibits 1057-61.
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`33. Both the ’281 and ’282 filings took approximately an hour each to
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`complete, nearly forty minutes longer than usual.
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`34.
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`Immediately following the submission of the ’282 petition, I prepared
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`and transmitted an email to the Board identifying the technical issues we experienced
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`when filing the petitions, and requested that the Board correct the provisional filing
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`date accorded to the ’281 and ’282 petitions:
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`
`
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 12
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`
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`
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`Also filed as ’281 IPR Exhibit 1053, ’282 IPR Exhibit 1062.
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`35. After this time, the firm’s Office Services vendor was instructed to
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`resume printing. The hard-copies of the petitions and supporting documents were
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`tendered to FedEx® at 3:02 am on Friday, December 4, 2015. ’281 IPR Exhibit 1054,
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`’282 IPR Exhibit 1063. In the aftermath of the filing issues, I neglected to appreciate
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`that the Certificates of Service attached to the documents uploaded on December 3
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`still said December 3, and needed to be updated to reflect that the documents were not
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`tendered to FedEx® until December 4th.
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`
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`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 13
`
`
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`
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`36. FedEx® tracking indicates that Patent Owner’s counsel received the
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`delivery on Monday, December 7, 2015. ’281 IPR Exhibit 1054, ’282 IPR Exhibit
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`1063.
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`37. On December 4th, I received an email from Paralegal Operations
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`Manager Maria Vignone (’281 IPR Exhibit 1055, ’282 IPR Exhibit 1064), stating
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`“we do not yet have a panel for these cases. Please wait a couple of weeks and
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`resend your request.”
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`38. On December 9th I called the Board’s direct line seeking additional
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`information regarding when a panel would be assigned and was sent to voicemail. I
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`then responded directly to Ms. Vignone’s email of December 4th, and asked
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`whether there is a rough estimate as to when a panel would be assigned.
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`39. On December 10th, Ms. Vignone responded “a couple of weeks.” ’281
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`IPR Exhibit 1057, ’282 IPR Exhibit 1066.
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`40. On December 15th, Teva received the Notice of Filing Date Accorded
`
`to Petition in each of the three proceedings. See IPR2016-00280, Paper 3;
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`IPR2016-00281, Paper 3; IPR2016-00282, Paper 3. The Notices required certain
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`corrections to exhibits and the Certificates of Service. In particular, the Notice
`
`required that we affirmatively state in the Certificates of Service that the exhibits
`
`were served with the petitions.
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`
`
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 14
`
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`
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`41. On December 17th, I coordinated the filing and service of the corrected
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`exhibits and Certificates of Service. I did not correct the date of service from
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`December 3rd to December 4th in the Certificates at that time because I believed I
`
`needed authorization from the Board to do so, and a panel had not been appointed
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`from which I could seek authorization.
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`42. On December 18th, the Board issued a Notice of Accepting Corrected
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`Petition in each of the cases and sent e-mail notifications that the Petitions have
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`been verified and accorded a filing date. See IPR2016-00280, Paper 5; IPR2016-
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`00281, Paper 6; IPR2016-00282, Paper 5.
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`43. On December 18th, counsel for patent owner Monosol RX, LLC
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`(“Monosol”) appeared in the ’281 and ’282 proceedings.
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`44. On December 23rd, counsel for patent owner Monosol RX sent an
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`email to Petitioner requesting a meet and confer regarding service and filing of the
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`petitions, and identifying alleged service deficiencies, including identifying
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`documents that were allegedly missing from the service copies.
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`45. On December 24th, Petitioner served counsel for Monosol with
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`electronic and hard copies of the following documents:
`
`•
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`IPR2016-00282 (8,017,150): (1) IPR Petition for the 8,017,150 patent;
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`(2) Exhibit 1003 (Declaration of Nandita Das, PhD.); and (3) Exhibit
`
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 15
`
`
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`
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`1014.
`
`•
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`IPR2016-00281 (8,603,514): (1) Exhibit 1003 (Expert Declaration of
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`Jayanth Panyam, Ph.D.); and (2) endorsed copies of Exhibits 37-39.
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`46. On December 28th, the parties conducted a meet and confer. I
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`understand that counsel for petitioner advised Monosol that the documents were
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`tendered to FedEx® on December 4, 2015.
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`47. On December 29th, counsel for patent Owner Indivior UK appeared in
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`the ’280 proceeding.
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`48. On January 6th, Ms. Rogers called the Board’s direct line seeking
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`additional information regarding when a panel would be assigned and Eric
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`Hawthorne informed her that no panels had yet been assigned, and that we could
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`continue to call back once a week to check on the status.
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`49. On January 7th, counsel for Petitioner and Patent Owners attended a
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`meet and confer concerning the filing dates and alleged service issues.
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`50. On January 8th, counsel for Patent Owner Monosol sent an email to the
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`Board requesting a conference call in connection with these issues. That same day,
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`Ms. Vignone responded that no panel had yet been assigned, and directing counsel
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`to check back in another week or so.
`
`51. On January 15th, Ms. Rogers again called the Board seeking additional
`
`
`
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 16
`
`
`
`
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`information regarding when panels would be assigned and Mr. Hawthorne informed
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`her that no panels had yet been assigned and that we could call back once a week to
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`check on the status.
`
`52. On January 22nd, I received an email from Ms. Vignone asking
`
`whether the filing date issue identified in my December 4th email (’281 IPR Exhibit
`
`1056; ’282 IPR Exhibit 1065) had been resolved. I called Ms. Vignone directly and
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`informed her that the issues were not yet resolved. She stated that panels had been
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`assigned and that Petitioner’s request would be forwarded to the panels.
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`53. On February 1st, the parties received two e-mails from Ms. Vignone
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`with instructions to meet-and-confer regarding the filing date issues, and to respond
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`to the Board in a joint email regarding whether patent owners oppose any changes
`
`in the filing dates.
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`54. Pursuant to the Board’s instructions the parties held another meet-and-
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`confer on February 3rd and were unable to reach agreement.
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`
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`
`
`IPR2016-00281 Exhibit 1041
`IPR2016-00282 Exhibit 1050
`Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLC
`Page | 17
`
`
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`55.
`
`I hereby declare that all statements made herein of my own knowledge
`
`are true and that all statements made on information and belief are believed to be
`
`true, and further that these statements were made with the knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, or
`
`both, under Section 1001 of Title 18 of the United States Code.
`/A
`
`Dated: February 29, 2016
`
`\\
`/Z ,-
`
`.'
`0
`/
`0/
`
`',»_’
`Eleanor Yost
`
`"
`
`_“"/"*1
`if
`(-46-?
`1!
`
`L ’ 7, ‘N.
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`
`.\
`
`IPR20l6—00281 Exhibit 1041
`
`IPR2016—00282 Exhibit 1050
`
`Teva Pharmaceuticals USA, Inc. V. Monosol RX, LLC
`Page| 18
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