Paper No. ___
`Filed: November 11, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
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`MYLAN LABORATORIES LIMITED
`Petitioner,
`
`v.
`
`AVENTIS PHARMA S.A.,
`Patent Owner
`_____________________________
`
`Case IPR2016-00712
`Patent No. 8,927,592
`_____________________________
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`
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO FILE
`SUPPLEMENTAL INFORMATION
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`Filed: November 11, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`MYLAN LABORATORIES LIMITED
`Petitioner,
`
`v.
`
`AVENTIS PHARMA S.A.,
`Patent Owner
`_____________________________
`
`Case IPR2016-00712
`Patent No. 8,927,592
`_____________________________
`
`
`
`
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION TO FILE
`SUPPLEMENTAL INFORMATION
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`
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`Petitioner replies to the Patent Owner’s opposition (Paper 15) to the Motion
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`to submit two public documents as Supplemental Information (Paper 14) under
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`Rule 42.123(a): a Final Office Action in a related pending continuation application,
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`and a district court Claim Construction Order on the same claims involved in the
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`present trial. Patent Owner asserts three bases for opposing Petitioner’s Motion:
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`that the Final Office Action is an improper response to Patent Owner’s Preliminary
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`Response (“POPR”), that each piece of supplemental information is not relevant,
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`and that the supplemental information improperly bolsters Petitioner’s case. Each
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`of these bases fails, for at least the reasons discussed below.
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`A. The Final Office Action is not an Improper Reply to the POPR
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`Patent Owner contends that the Final Office Action from its continuation
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`application constitutes an improper reply to the POPR, arguing that Wireless
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`Seismic, Inc. v. Fairfield Indus., Inc., IPR2014-01113 holds that supplemental
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`information is improper when it is “in effect . . . a reply to the Preliminary
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`Response.” Paper 15 at 3-4 (quoting Wireless Seismic, Paper 8 at 2). But Wireless
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`Seismic involved a request to submit supplemental information prior to institution.
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`Here, the Motion to submit supplemental information was filed after institution.
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`Moreover, the Final Office Action is a public document of the PTO’s response to
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`Patent Owner’s arguments to similar claims, as has been set forth in the Motion
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`(Paper 14). It does not constitute a reply by Petitioner to the POPR.
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`-1-
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`Patent Owner also suggests that the supplemental information is an improper
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`attempt “to preemptively respond to” Patent Owner’s Response (“POR”). Paper 15
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`at 4. However, Patent Owner’s proposal that Petitioners be barred from submitting
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`supplemental information until after the POR runs contrary to the plain language of
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`the applicable rule, which requires that a motion be filed within one month of
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`institution, 37 C.F.R. 42.123(a)(1). The argument that supplemental information
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`cannot be filed if it touches on issues discussed in the POPR or potentially in the
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`POR ignores the timing requirement and the requirement that the supplemental
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`information be relevant to an instituted claim. 37 C.F.R. 42.123(a)(2).
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`B.
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`Each Piece of Supplemental Information is Relevant
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`Regardless of what Patent Owner chooses to do in the POR, the
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`supplemental information is permissible because it is relevant and informative to at
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`least one instituted claim, as discussed in Petitioner’s Motion (Paper 14). The
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`supplemental information is relevant at least to the meaning of the instituted claims,
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`the meaning and weight to be given the prosecution history, and to factual disputes
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`between the parties regarding likelihood of success. See Paper 14 at 7, 9-13.
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`Patent Owner essentially concedes Petitioner’s factual description of each
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`piece of proposed supplemental information. It is undisputed that the Claim
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`Construction Order construes the claims also at issue in this proceeding. Yet the
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`Patent Owner argues that “the district court decision is not binding on the Board,”
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`-2-
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`a point not even remotely asserted in the Motion. Paper 15 at 8. Patent Owner also
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`does not dispute that the Final Office Action rejected the continuation claims from
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`the ’592 patent that are similar to yet narrower than the issued claims of the ’592
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`patent, and that this finding was based on art that is either identical or substantively
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`identical to that asserted in the instituted grounds. Id. at 5 (recognizing Petitioner’s
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`argument that the “Final Office Action is relevant because it concerns narrower
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`claims than those of the ’592 patent,” and arguing only that the Final Office Action
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`“is not a final determination,” that the Examiner had not reviewed the POR, and
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`that the Examiner is not an APJ). Because the supplemental information relates to
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`the meaning of the instituted claims and the asserted prior art, there should be no
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`reasonable dispute that this information is relevant to at least one instituted claim.
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`Patent Owner argues that its submission of the Petition and Seth Declaration
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`to the Examiner in the related application were pursuant to its “duty of candor” to
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`the Office (Paper 15 at 6), but at the same time attempts to prevent the Board from
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`receiving the Final Office Action from that case. Even though the Final Office
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`Action was issued on June 9, 2016 (EX1040 at cover), the Patent Owner repeatedly
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`argued two weeks later in its POPR that the Board should defer to the Examiner’s
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`original prosecution findings. The Patent Owner apparently did not feel compelled
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`to inform the Board that the same Examiner had changed his position after
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`reviewing Petitioner’s evidence from this proceeding. Even now, Patent Owner
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`-3-
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`argues that it would be unduly prejudicial for the Board to consider findings in the
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`related prosecution. Paper 15 at 5-7. Patent Owner’s argument that the Board is
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`unable to evaluate the probity of relevant information as to the instituted claims
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`should be rejected.
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`C. The Supplemental Information is not “Improper Bolstering”
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`Patent Owner argues that supplemental information is only appropriate if it
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`will not help (“bolster”) the Petitioner’s case. Contrary to Patent Owner’s
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`arguments, it is entirely proper to submit supplemental information that supports
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`arguments made in the Petition. Indeed, “[s]upplemental information . . . is
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`evidence a party intends to support an argument on the merits.” ServiceNow, Inc. v.
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`BMC Software, Inc. (IPR2015-01176), Paper 15 at 3 (quoting Handi Quilter, Inc. v.
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`Bernina Int’l AG (IPR2013-00364), Paper 30 at 2-3). Accordingly, that the
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`supplemental information that is the subject of the present Motion confirms and
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`supports Petitioner’s original arguments, and is relevant to the instituted claims and
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`the trial as instituted, fully complies with Rule 42.123(a).
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`Patent Owner relies on Mitsubishi Plastics, Inc. v. Celgard, LLC (IPR2015-
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`00524) to suggest that it is improper to receive supplemental information that
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`“bolster[s] the evidence by submitting . . . additional confirmatory evidence.”
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`Paper 15 at 10, see also id. at 8-9. However, in Mitsubishi Plastics, the petitioner
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`sought to submit new expert witness declarations. Mitsubishi Plastics, Paper 30 at
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`-4-
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`2. These declarations included a second declaration by the petitioner’s expert. Id. at
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`3 n.3. As pointed out by the patent owner in that proceeding, “there [was] no
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`reason why [petitioner] could not have included in its petition any of the
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`information it now seeks to add to this proceeding.” Mitsubishi Plastics, Paper 26
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`at 8. But here, both pieces of supplemental information became available only after
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`the filing date of the Petition. Ex. 1039 at 0001 (October 7, 2016); Ex. 1040 at
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`cover (June 9, 2016). Furthermore, the Board denied the motion in Mitsubishi
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`Plastics because the petitioner sought “to change the evidence it relied upon in
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`making its original challenge” by relying on new expert testimony. Mitsubishi
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`Plastics, Paper 30 at 6. By contrast, the present Motion does not attempt to submit
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`additional testimony from its own expert that it could have submitted with the
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`Petition, nor does it attempt to alter the scope of the instituted proceeding.
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`Accordingly, Mitsubishi Plastics does not weigh against acceptance of the present
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`supplemental information.
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`Accordingly, Petitioner respectfully requests that the Motion be granted.
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`Dated: November 11, 2016
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`Respectfully submitted,
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`/ Steven W. Parmelee /
` Steven W. Parmelee, Lead Counsel
` Reg. No. 31,990
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`-5-
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Petitioner’s Reply In Support Of
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`Motion to File Supplemental Information was served on November 11, 2016, on
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`the Patent Owner at the correspondence address of the Patent Owner as follows:
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`Dominick A. Conde
`William E. Solander
`Jason A. Leonard
`Whitney L. Meier
`Daniel J. Minion
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 1014-3800
`Email: dconde@fchs.com
`Email: wsolander@fchs.com
`Email: jleonard@fchs.com
`Email: wmeier@fchs.com
`Email: dminion@fchs.com
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`
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`Dated: November 11, 2016
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`
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`Respectfully submitted,
`
`/ Steven W. Parmelee /
` Steven W. Parmelee, Lead Counsel
` Reg. No. 31,990
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