`571-272-7822
`
`
`
`
`Paper 11
`Entered: February 22, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERIGEN PHARMACEUTICALS LIMITED,
`Petitioner
`
`
`
`
`
`
`
`
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner
`
`
`Case IPR2016-00286
`Patent 8,822,438 B2
`
`
`
`Before LORA M. GREEN, RAMA G. ELLURU, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2016-00286
`Patent 8,882,438 B2
`
`
`A conference call in the above proceeding was held on February 16,
`2016, amongst respective counsel for Petitioner, Amerigen Pharmaceuticals,
`Ltd., and Patent Owner, Janssen Oncology, Inc., and Judges Green, Elluru,
`and Kalan. Patent Owner requested the call to seek authorization to file a
`motion to exclude the declaration of Petitioner’s expert (“declaration”) and
`related arguments in the petition addressing the commercial success of U.S.
`Patent No. 8,882,438. In the alternative, if the Board did not grant Patent
`Owner’s request to file a motion to exclude the declaration and related
`arguments, Patent Owner requested authorization to submit a new
`declaration of its own with its preliminary response to address Petitioner’s
`commercial success arguments.
`During the teleconference, Patent Owner argued that the declaration
`on commercial success referred to documents that were not prior art patents
`and printed publications, and was improper under 35 U.S.C. § 311(b). This
`provisions reads as follows: “[a] petitioner in an inter partes review may
`request to cancel as unpatentable 1 or more claims of a patent only on a
`ground that could be raised under section 102 or 103 and only on the basis of
`prior art consisting of patents and printed publications.” Thus, Patent Owner
`contended that the declaration and related arguments on commercial success
`should be excluded. In the alternative, Patent Owner argued that if the
`Board were going to consider commercial success at the Decision on
`Institution stage, it should have opportunity “in the interests of justice” to
`submit new testimonial evidence in support of its preliminary response to
`address Petitioner’s arguments relating to commercial success.
`We denied Patent Owner’s request for authorization to file a motion
`for the following reasons. We may or may not address commercial success
`
`2
`
`
`
`IPR2016-00286
`Patent 8,882,438 B2
`
`in our Decision on Institution, which is merely a preliminary decision if we
`institute trial. Furthermore, the underlying factual considerations in a 35
`U.S.C. § 103 obviousness analysis include secondary considerations of
`nonobviousness, such as commercial success. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). There is no authority for excluding Petitioner’s
`arguments and evidence addressing commercial success at the petition stage.
`Moreover, as Petitioner notes, the petition is the first and last chance for a
`petitioner to present its case. Subsequent to an institution of trial, a
`petitioner can only submit responsive argument and evidence. In addition,
`under our current rules, a patent owner may not submit new testimonial
`evidence in support of its preliminary response. If we do institute a trial,
`Patent Owner may submit testimonial evidence in support of its Response.
`
`IT IS:
`ORDERED that Patent Owner’s request for authorization to file a
`motion to exclude Petitioner’s declaration and related arguments addressing
`commercial success, or in the alternative, to submit testimonial evidence in
`support of its preliminary response, is denied.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00286
`Patent 8,882,438 B2
`
`PETITIONER:
`
`William Hare
`Gabriela Materassi
`McNEELEY HARE & WAR LLP
`bill@miplaw.com
`materassi@miplaw.com
`
`PATENT OWNER:
`
`Dianne B Elderkin
`Barbara L. Mullin
`Ruben H. Munoz
`AKIN GUMP STRAUSS HAUER & FELD LLP
`delderkin@akingump.com
`bmullin@akingump.com
`rmunoz@akingump.com
`
`
`
`4
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