UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC,
`Patent Owner.
`______________
`
` Case IPR2016-00281 (Patent 8,603,514 B2)
`Case IPR2016-00282 (Patent 8,017,150 B2)1
`______________
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO CORRECT FILING DATE
`
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`1 Petitioner attests that the word-for-word identical paper is filed in each
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`proceeding identified in the heading.
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`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC,
`Patent Owner.
`______________
`
` Case IPR2016-00281 (Patent 8,603,514 B2)
`Case IPR2016-00282 (Patent 8,017,150 B2)1
`______________
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO CORRECT FILING DATE
`
`
`1 Petitioner attests that the word-for-word identical paper is filed in each
`
`proceeding identified in the heading.
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`
`
`
`
`
`
`
`
`
`
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`Petitioner respectfully submits that the filing dates for the ’281 and ’282
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`IPRs should be corrected to December 3, 2015, the date on which its counsel
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`undisputedly uploaded the petitions and supporting evidence, attempted payment,
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`and had intended to effect service. Patent Owner (“PO”) does not seriously dispute
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`that Petitioner has met the statutory requirements for filing an IPR petition. Nor
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`does it identify any prejudice to itself from Petitioner’s clerical errors in complying
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`with regulatory requirements. Instead, it asserts that this entire proceeding is
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`prejudicial and that Petitioner made bad-faith “misrepresentations.” But PO has
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`not established any bad faith on Petitioner’s part; the record shows technical and
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`clerical failures, not malice. Petitioner therefore respectfully requests that the
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`Board exercise its authority and waive its regulations in this case.
`
`A.
`
`PO Has Not Shown That the Errors Caused Prejudice
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`PO has not alleged that Petitioner’s minutes-long filing delays or service
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`shortly after midnight prejudiced its ability to timely prepare its preliminary
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`response. Nor could it, as the complete filings were available on PRPS
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`immediately, and were in fact accessed by PO’s staff online by Monday, December
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`7. (Exhibit 2006, ¶¶ 3-4.) PO’s counsel concedes that he did not even open the
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`box containing the service copy until December 14. (ʼ281 Exhibit 1040/ʼ282
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`Exhibit 1049 at 24:10-25:3.) Instead, PO asserts that changing the filing date
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`would result in PO “[l]osing the benefit of the one year statutory bar.” (PO Opp. at
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`1
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`
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`
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`6.) That is not “prejudice”; a litigant would always be better off if its opponent’s
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`
`
`
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`filing were stricken. What matters is that the minutes-long delay itself caused no
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`prejudice. It also follows from PO’s concession that adding email service to mail
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`service would not have remedied any prejudice; there was none to remedy.
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`B.
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`PO Cites No Authority That Prevents Changing the Filing Date
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`PO does not claim that 35 U.S.C. §§ 312(a) or 315(b) conditions the
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`timeliness of a petition on the payment or service date. Nor could it, given the
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`Board’s clear holdings. (See Teva Br. at 7-8.) PO nevertheless contends that
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`Petitioner’s motion should be denied because, in the cases Petitioner cited, service
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`was accomplished or attempted before the statutory bar date.2 (PO Opp. at 6, 9.)
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`But as those cases state, the statute does not require that service be effected before
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`papers uploaded that day may be treated as filed that day. (Teva Br. at 7-8.)
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`PO also contends—without citation—that Petitioner’s alleged failure to
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`include certain documents in the service copy is “sufficient to deny Petitioner a
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`change in the filing dates, for the petitions may not be considered until Petitioner
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`has provided the complete petition to PO’s counsel.” (PO Opp. at 9.) Petitioner,
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`2 PO also suggests that Petitioner should have filed the petitions by email (PO Opp.
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`at 5), citing a procedure for PRPS “outage.” (Exhibit 2008, at 4-5.) Where, as
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`here, PRPS is technically accessible but exceptionally slow, switching to email
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`filing is not required and, indeed, might well consume even more time.
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`
`
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`2
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`
`
`
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`however, was unaware of any alleged issues with the service copy for more than
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`
`
`
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`two weeks after PO received it. It was not until December 23 that PO’s counsel
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`emailed Petitioner’s counsel, asserting that specific documents were missing. (’281
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`Exhibit 1041/’282 Exhibit 1050 (“Yost Decl.”), at ¶ 44.) In response, on December
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`24, Petitioner emailed and couriered to PO’s counsel the allegedly missing
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`documents. (Id. at ¶ 45.) In the interim, of course, the documents had been
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`available on PRPS since at least December 4, and had been actually accessed by
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`PO via PRPS at least as early as December 7. (Exhibit 2006, ¶¶ 3-4.)
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`Moreover, to the extent the service copy was incomplete, it was due to
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`clerical errors like those the Board has previously excused. 37 C.F.R. § 42.104(c).
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`For example, in Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC, the Board
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`found that the petitioner had not filed or served copies of foreign-language
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`references cited in its petition, but held that this was a correctable clerical error,
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`which had no material effect on patent owner’s ability to file its patent owner
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`preliminary response. (IPR2013-00631, Paper 20, at 7-8 (PTAB April 16, 2014).)
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`Here, too, as discussed above, PO’s electronic access to all the materials prevents it
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`from claiming any material effect on its preliminary response, and the Board can
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`excuse any omission from the service copies.
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`
`
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`3
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`
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`
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`C.
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`
`
`
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`PO Has Failed to Establish “Unclean Hands”
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`Finally, PO contends—again without citation—that Petitioner’s Certificates
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`of Service showing a December 3 service date are “sufficient” grounds to deny
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`Petitioner’s motion. (PO Opp. at 9-10.) This is incorrect. First, PO cites no case
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`law supporting its contention. Indeed, in Terremark North America LLC v. Joao
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`Control & Monitoring Systems, LLC, the original certificate of service likewise
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`indicated an incorrect service date, but the Board nevertheless declined to deny the
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`petition. (IPR2015-01466, Paper 2, at 38 and Paper 10, at 6.)
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`Second, PO’s suggestion of bad faith does not comport with the facts. In the
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`aftermath of the filing issues, Petitioner’s counsel neglected to appreciate that the
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`Certificates of Service uploaded on December 3 needed to be updated to reflect
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`that the documents were not tendered to FedEx®
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` until December 4th. (Yost Decl. ¶
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`35.) On December 15, the Board’s Trial Paralegal directed Petitioner to make
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`certain corrections to the Certificates of Service. Id. at ¶ 40; Paper 3. Counsel
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`made the requested corrections, but did not correct the service date, because she
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`believed that she needed the Board’s authorization to make changes to the record
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`other than those requested by the Board, and a panel had not been appointed from
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`which she could seek authorization. (Yost Decl. ¶ 41.)
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`Nevertheless, as of the parties’ first meet and confer (on December 28,
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`2015), Petitioner’s counsel had advised PO’s counsel that the documents were
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`4
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`tendered to FedEx®
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` on December 4, 2015 (id. at ¶ 46), and at the first available
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`opportunity, it sought the Board’s guidance as to how to amend the Certificate of
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`Service. (ʼ281 Exhibit 1040/’282 Exhibit 1049, at 21:21-22:17.) Indeed, to ensure
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`that she obtained such guidance as soon as possible, Petitioner’s counsel repeatedly
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`contacted the Board at regular intervals after December 3 to ascertain whether a
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`panel had been appointed. (Yost Decl. ¶¶ 34, 37-41, 48, 50-54.) Far from showing
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`bad faith, Petitioner’s conduct shows that it was upfront with PO regarding the
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`service date, and was diligent in getting in front of the Board to obtain guidance
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`regarding the filing and service issues.
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`PO places most of the weight on an email sent to the Board immediately
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`after the filing, which referred to service being timely effected. That email merely
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`sought to document the filing delay (requiring it to be written and submitted
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`quickly after the midnight deadline) and sought the opportunity to place the
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`relevant facts before the Board as soon as possible. While it was mistaken as to
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`service, the surrounding circumstances amply refute the unfounded accusation of
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`bad faith. (Yost Reply Declaration, ʼ281 Exhibit 1058/ʼ282 Exhibit 1067, ¶¶ 2-8.)
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`Accordingly, for the reasons discussed here and in Petitioner’s motion,
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`Petitioner respectfully requests that the filing date of the ’281 and ’282 IPRs be
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`changed from December 4, 2015 to December 3, 2015.
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`
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`Dated: March 15, 2016 /Elizabeth J. Holland/
` Elizabeth J. Holland (Reg. #47,657), Petitioner’s Counsel
`
`5
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that “PETITIONER’S REPLY IN
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`SUPPORT OF ITS MOTION TO CORRECT FILING DATE,” including the Yost
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`Reply Declaration referenced therein (ʼ281 Exhibit 1058/ʼ282 Exhibit 1067), were
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`served electronically via e-mail on March 15, 2016 on the following:
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`/Cynthia Lambert Hardman/
`Cynthia Lambert Hardman
`(Reg. No. 53,179)
`
`Daniel A. Scola, Jr.
`Michael I. Chakansky
`Hoffman & Baron LLP
`6 Campus Drive
`Parsippany, NJ 07054
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`using the below email addresses:
`
`dscola@hbiplaw.com
`mchakansky@hbiplaw.com
`514ipr@hbiplaw.com
`150ipr@hbiplaw.com
`
`
`
`Dated: March 15, 2016
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