Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 13 (IPR2016-01111)
`Paper 13 (IPR2016-01112)
`Entered: October 31, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DR. REDDY’S LABORATORIES, LTD. AND
`DR. REDDY’S LABORATORIES, INC.,
`
`Petitioner,
`v.
`MONOSOL RX, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01111 (Patent 8,603,514 B2)
` Case IPR2016-01112 (Patent 8,017,150 B2)
`____________
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 13 (IPR2016-01111)
`Paper 13 (IPR2016-01112)
`Entered: October 31, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DR. REDDY’S LABORATORIES, LTD. AND
`DR. REDDY’S LABORATORIES, INC.,
`
`Petitioner,
`v.
`MONOSOL RX, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01111 (Patent 8,603,514 B2)
` Case IPR2016-01112 (Patent 8,017,150 B2)
`____________
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2016-01111 (8,603,514 B2)
`IPR2016-01112 (8,017,150 B2)
`
`
`INTRODUCTION
`I.
`In each of the captioned proceedings, MonoSol RX, LLC (“Patent
`Owner”) requests reconsideration of the Decision Denying Patent Owner’s
`Motion for Additional Discovery. Paper 11 (“Reh’g Req.”).
`In the Decision, we addressed Patent Owner’s request to serve four
`Requests for Production of documents relating to agreements and
`communications between Dr. Reddy’s Laboratories, Ltd. and Dr. Reddy’s
`Laboratories, Inc. (collectively, “Petitioner”) and Teva Pharmaceuticals
`USA, Inc. (“Teva”) concerning Petitioner’s acquisition from Teva of a
`portfolio of Abbreviated New Drug Applications (“ANDAs”) for
`buprenorphine HCl/naloxone HCl oral film, i.e., a generic version of
`Suboxone® Film. Paper 9 (“Dec.”). Upon considering Patent Owner’s
`Motion, Petitioner’s Opposition to the Motion (“Opp.”), and the evidence of
`record, we determined that Patent Owner did not meet its burden of
`showing that additional discovery was in the interest of justice. Dec. 8.
`Accordingly, we denied the Motion.
`In the Rehearing Request, Patent Owner seeks reconsideration of our
`Decision only with respect to its proposed second Request for Production.
`Reh’g Req. 1.
`
`II. ANALYSIS
`Patent Owner’s first proposed Request for Production is directed to
`
`the “definitive agreement” between Petitioner and Teva referenced in
`Petitioner’s June 11, 2016 press release (“the Agreement”), along with “any
`drafts of the Agreement, any term sheets or letter of intent related to the
`Agreement, and any common interest or other related agreements.” Mot.
`Appendix 1. The second proposed Request for Production is directed to
`
`2
`
`
`
`
`
`IPR2016-01111 (8,603,514 B2)
`IPR2016-01112 (8,017,150 B2)
`
`“Correspondence or communications related to (a) the agreements or term
`sheets identified in category (1) above or (b) the Suboxone® Film-related
`ANDAs.” Id.
`Patent Owner asserts that the Board misapprehended Petitioner’s
`response to the second Request for Production in Petitioner’s Opposition to
`the Motion for Additional Discovery. Reh’g. Req. 1 (citing Dec. 8 and
`Paper 8, 18). In the Decision, we stated that “Petitioner represents that no
`responsive documents exist” with respect to the second Request for
`Production. Dec. 8. Specifically, notwithstanding its objections to the
`Request, Petitioner responded to the second Request for Production by
`stating that “no correspondence or communications directed to terms sheets
`or letters of intent exist. No common interest agreements or other
`agreements related to the Agreement prior to the execution of the ‘definitive
`agreement’ identified in category (1) exist.” Opp. 18.
`Patent Owner asserts that Petitioner’s response did not address the
`entire scope of the second Request for Production. Reh’g. Req. 1. In
`particular, Patent Owner asserts that “absent from Petitioner’s response is
`correspondence or communications related to the Agreement itself, or drafts
`of the Agreement … [which] would have come into existence in the months
`leading up to the August 3, 2016 press release (Ex. 1042) announcing the
`successful acquisition of Teva’s ANDAs.” Id. According to Patent Owner,
`those items, “dated prior to the filing of the present petition, would be
`indicia that privity existed between Teva and Petitioner at that time, but
`Petitioner has made no representations whether these documents exist.” Id.
`at 1–2.
`
`
`
`
`3
`
`
`
`IPR2016-01111 (8,603,514 B2)
`IPR2016-01112 (8,017,150 B2)
`
`
`As we discussed in the Decision, Dec. 5–6, Petitioner explained in
`response to the first Request for Production that none of the requested
`agreements, or drafts thereof executed on or before May 31, 2016 exist.
`Opp. 17. May 31, 2016 is the date that Petitioner filed its petitions in these
`proceedings. In the Decision, we explained, among other things, that,
`generally, the Board has considered the relationship between entities alleged
`to be in privity at the time of the service of the complaint and that Patent
`Owner has not alleged privity existed between Petitioner and Teva at that
`time. Dec. 7. We explained further that “[e]ven accepting arguendo that
`Petitioner’s acquisition of Teva’s ANDAs . . . established privity between
`Petitioner and Teva, Patent Owner has not proffered persuasive evidence
`that indicia of privity existed at any time prior to the filing of the present
`Petition.” Id. (citing Taylor v. Sturgell, 553 U.S. 880, 893–95 (2008)).
`Those reasons alone support our determination that Patent Owner has failed
`to demonstrate that the proposed additional discovery would uncover
`something useful in support of its contention that Petitioner and Teva were
`in privity at the relevant time.
`Thus, we are not persuaded that our Decision should be modified
`based upon Patent Owner’s assertion that Petitioner’s response to the second
`Request for Production leaves open the possibility that correspondence or
`communications, dated prior to May 31, 2016, relating to the later-executed
`agreements, or drafts thereof, may exist and provide something useful to
`support Patent Owner’s contention that privity existed between Petitioner
`and Teva on or before the filing date of the Petitions. Reh’g. Req. 6. As we
`stated in the Decision, “Patent Owner’s evidence and argument in support of
`
`
`
`
`4
`
`
`
`IPR2016-01111 (8,603,514 B2)
`IPR2016-01112 (8,017,150 B2)
`
`its discovery requests fail to demonstrate more than a mere possibility or
`mere allegation that something useful will be found.” Dec. 7.
`III. CONCLUSION
`For the reasons discussed above, we conclude that Patent Owner has
`
`not met its burden of showing that our Decision should be modified. See 37
`C.F.R. § 42.71(d) (“The burden of showing a decision should be modified
`lies with the party challenging the decision.).
`IV. ORDER
`In accordance with the foregoing, it is hereby:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`PETITIONER:
`Jeffery B. Arnold
`jarnold@cantorcolburn.com
`Leslie-Anne Maxwell
`amaxwell@cantorcolburn.com
`Peter B. Hagerty
`phagerty@cantorcolburn.com
`Andrew C. Ryan
`ryan@cantorcolburn.com
`
`
`PATENT OWNER:
`Harold H. Fox
`hfox@steptoe.com
`John L. Abramic
`jabramic@steptoe.com
`
`
`
`
`
`5
`
`
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