Case 1:13-cv-01206-LPS Document 300 Filed 06/17/16 Page 1 of 3 PageID #: 5981
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`Pilar G. Kraman
`P 302.576.3586
`F 302.576.3742
`pkraman@ycst.com
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`June 17, 2016
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`BY CM/ECF & HAND DELIVERY
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`The Honorable Leonard P. Stark
`United States District Court
`For the District of Delaware
`844 North King Street
`Wilmington, DE 19801
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` Re: UCB, Inc., et al. v. Accord Healthcare, Inc., et al., C.A. No. 13-1206-LPS (consol.)
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`Dear Chief Judge Stark:
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`Defendants Mylan Pharmaceuticals Inc. and Mylan Inc. submit this letter to update the
`Court that the U.S. Patent and Trademark Office (“PTO”) recently instituted an Ex Parte
`Reexamination of the patent at issue in the pending litigation, Reissue Patent No. 38551 (“the
`RE’551 patent”). See Ex. A (Order Granting Request for Ex Parte Reexamination).
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`This Ex Parte Reexamination is the second instance, in recent months, where the PTO
`has questioned the patentability of the RE’551 patent. As Defendants previously reported to the
`Court, the Patent Trial and Appeal Board (“Board”) instituted Inter Partes review (“IPR”) of the
`RE’551 patent in May 2016. D.I. 294.
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`As the Court may recall, Plaintiffs’ counsel attempted to marginalize the significance of
`that IPR by informing the Court that the “[t]he sole ground on which the PTAB instituted the
`IPR was obviousness over the ‘methoxyamino compound,’” which was not the primary focus of
`the Defendants’ litigation. D.I. 296. In the Ex Parte Reexamination, however, the PTO
`instituted proceedings based upon four prior art references extensively relied upon by Defendants
`as invalidating references at trial and in post-trial briefing, including the LeGall thesis. In
`granting the Request for Ex Parte Reexamination, the PTO stated:
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`There is a substantial likelihood that a reasonable examiner would consider
`the teachings of the ’301 Patent, the ’729 Patent, Kohn 1991, and LeGall
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`MYLAN - EXHIBIT 1105
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`Case 1:13-cv-01206-LPS Document 300 Filed 06/17/16 Page 2 of 3 PageID #: 5982
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`The Honorable Leonard P. Stark
`June 17, 2016
`Page 2
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`[thesis] important in deciding the patentability of claims 1-13 of United
`States Reissued Patent No. RE38,551 E, which question had not been
`decided in a previous examination of this patent.
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`See Ex. A at 7.
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`It is important to note that the reason that the Board did not institute IPR proceedings
`based on the LeGall thesis (at least initially)1 was because the Petitioner was unable to show that
`the LeGall thesis qualified as prior art. D.I. 294. As the Court is aware, the Plaintiffs stipulated
`that the LeGall thesis is prior art. See D.I. 257-1, Ex. 1 ¶ 87. This stipulation was made after
`Defendants obtained conclusive evidence—including the deposition transcript of a librarian, Mr.
`John Lehner, of the University of Houston—showing that the LeGall thesis was made available
`to the public as a printed publication before the RE’551 patent’s priority date, and thus
`establishing the prior art status of the LeGall thesis (“the Lehner Deposition”).
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`Notably, the Petitioner in the IPR attempted to acquire this same evidence from the
`University of Houston to likewise substantiate the LeGall thesis’ prior art status to the Board, but
`was stonewalled. Petitioner requested a copy of the deposition transcript from the University of
`Houston under the Texas Public Information Act, but the University refused.2 Ex. B (Argentum
`Petition for Inter Partes Review) at 22-23. Also, despite the stipulation in this case, the Patent
`Owner, Research Corporation Technologies, Inc., contended in the IPR that Petitioner’s
`stipulation was not sufficient to show that the LeGall thesis was prior art. Ex. C (Patent Owner’s
`Preliminary Response) at 19-20.
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`To Mylan’s knowledge, the Lehner Deposition transcript was never designated as
`“Confidential” under the Protective Order governing this case and is unaware of any justifiable
`basis for the University to have refused production under the Information Act. Therefore, Mylan
`intends to submit the Lehner Deposition and Exhibits thereto to the Board for the Board’s
`consideration.
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`Out of an abundance of caution, Mylan has reached out to the outside counsel for the
`University of Houston to meet-and-confer regarding this issue. Ex. D (6.16.2016 Li Email to
`Bernhardt). If the University of Houston were to insist on designating the Lehner Deposition
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`1 The IPR Petitioner has requested reconsideration of the Board’s decision with respect to the
`LeGall thesis, based on public statements made by Plaintiffs in this litigation that it is prior art.
`That request is pending with the Board. Ex. E (Argentum Petition for Rehearing).
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` The University of Houston has a pecuniary interest in the RE’551 patent. In denying
`Argentum’s information request, the University of Houston stated that its “‘revenue stream will
`be lost or severely diminished . . . as a result of the requested information being produced,’” and
`that “‘it is critical that this information be withheld in order to protect the University from
`competitive interests.’” Ex. B at 22-23; see also, Trial Tr. at 918:16-22.
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`Case 1:13-cv-01206-LPS Document 300 Filed 06/17/16 Page 3 of 3 PageID #: 5983
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`The Honorable Leonard P. Stark
`June 17, 2016
`Page 3
`transcript and/or the documents used during the deposition as “Confidential,” Mylan intends to
`challenge any confidential designation and/or seek de-designation of the confidential status
`under Paragraph 14 of the Protective Order.
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`Counsel are available at the Court’s convenience should Your Honor have any questions.
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` Respectfully submitted,
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`YOUNG CONAWAY STARGATT & TAYLOR, LLP
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`/s/ Pilar G. Kraman
`Adam W. Poff (#3990)
`Pilar G. Kraman (#5199)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`pkraman@ycst.com
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`Attorneys for Defendants Mylan
`Pharmaceuticals Inc. and Mylan, Inc.
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`Of Counsel:
`WILSON SONSINI GOODRICH ROSATI, P.C.
`Nicole W. Stafford
`Eric C. Arnell
`Aden M. Allen
`900 South Capital of Texas Highway
`Las Cimas IV, Fifth Floor
`Austin, TX 78746
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`David S. Steuer
`650 Page Mill Road
`Palo Alto, CA 94304
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`Yongdan Li
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071-2027