Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 37
` Entered: April 27, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATSON LABORATORIES, INC.
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS, CORP.
`Patent Owner.
`____________
`
`Case IPR2017-01621 and IPR2017-01622
`Patents 9,358,240 B2 and 9,339,507 B2
`____________
`
`
`Before TONI R. SCHEINER, ERICA A. FRANKLIN, and DAVID
`COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Motions for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 37
` Entered: April 27, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATSON LABORATORIES, INC.
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS, CORP.
`Patent Owner.
`____________
`
`Case IPR2017-01621 and IPR2017-01622
`Patents 9,358,240 B2 and 9,339,507 B2
`____________
`
`
`Before TONI R. SCHEINER, ERICA A. FRANKLIN, and DAVID
`COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Motions for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
`I.
`
`INTRODUCTION
`
`With authorization of the Board, Paper 22,1 Watson Laboratories, Inc.
`
`(“Petitioner”) filed a motion for additional discovery in each captioned
`
`proceeding. Petitioner asserts that the additional discovery relates to the
`
`“the contribution of the named inventors to the challenged claims,” and thus
`
`bears on the issue of whether Ghofrani (Ex. 1005), a prior art reference
`
`relied upon in the instituted ground, is the work of “another” under 35
`
`U.S.C. § 102(a). Paper 26 (“Mot.”), 1, 6. Specifically, Petitioner seeks an
`
`unredacted copy of the November 30, 2007 Declaration of Rachel Turow
`
`(“the Turow Declaration,” Ex. 1172) submitted to the Patent Office during
`
`prosecution of a parent application to each of the challenged patents. United
`
`Therapeutics, Corp. (“Patent Owner”) opposes the Motion. Paper 30
`
`(“Opp.” or “Opposition”). For the reasons that follow, we deny Petitioner’s
`
`Motion.
`
`II. ANALYSIS
`
`A party seeking discovery beyond what is expressly permitted by our
`
`rules must establish that such additional discovery is “necessary in the
`
`interest of justice.” 35 U.S.C. § 316(a)(5); see also 37 C.F.R. § 42.51(b)(2)
`
`(“The moving party must show that such additional discovery is in the
`
`interest of justice.”). Discovery in an inter partes review proceeding is more
`
`
`
`1 There are slight differences in the numbering of Papers and Exhibits in
`IPR2017-01621 and IPR2017-01622. Notwithstanding these differences, the
`papers relating to the motions addressed herein are substantively identical.
`Unless otherwise noted, for the convenience of the Board, citations to Papers
`and Exhibits referenced herein are only to IPR2017-01621, with the
`understanding that there exists a corresponding, substantively identical,
`Paper or Exhibit in IPR2017-01622.
`
`2
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`limited than in district court patent litigation, as Congress intended our
`
`proceedings to provide a more efficient and cost-effective alternative to such
`
`litigation. H. Rep. No. 112-98 at 45–48 (2011). Thus, we take a
`
`conservative approach to granting additional discovery. 154 Cong. Rec.
`
`S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl).
`
`The Board has identified five factors (the “Garmin factors”) to be
`
`considered in determining whether additional discovery is in the interest of
`
`justice. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-
`
`00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (precedential)
`
`(“Garmin”). In particular, the first Garmin factor requires essentially that
`
`the party seeking additional discovery establish that it already is in
`
`possession of a threshold amount of evidence or reasoning tending to show
`
`beyond speculation that something useful will be uncovered. Garmin at 7.
`
`A redacted version of the Turow Declaration was submitted in U.S.
`
`Application No. 11/748,205 (“the ’205 application”), a parent of the
`
`applications that ultimately issued as the patents at issue in these
`
`proceedings. Ex. 1172. It was submitted under 37 C.F.R. § 1.47(a) to
`
`request that the Patent Office accept inventors’ oaths without the signatures
`
`of Horst Olschewski, Thomas Schmehl, Werner Seeger, and Robert
`
`Voswinckel, all four of whom are identified as inventors on the patents at
`
`issue. Opp. 6; Ex. 1001.
`
`The Turow Declaration attaches a number of exhibits, including email
`
`correspondence with the non-signing inventors. Ex. 1172. Some of this
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`correspondence has been redacted. Petitioner seeks to discover unredacted
`
`copies of the correspondence.
`
`3
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
`We agree with the Petitioner that the redacted correspondence would
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`be relevant if it reflected “the contribution of the named inventors to the
`
`challenged claims” (Mot. 6), or otherwise speaks to the identity of the
`
`inventorship entity for the patent claims at issue. However, on the record
`
`before us, we find it unlikely that discovery of the redacted material would
`
`yield such information.
`
`Petitioner speculates that the redacted subject matter speaks to the
`
`inventorship of claims similar to those at issue and asserts that, in the
`
`redacted email correspondence, Dr. Seeger (a named inventor) and Mr.
`
`Mahon (Executive Vice President and General Counsel of UTC) appear to
`
`be discussing “the contributions of the Giessen team to the inventions
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`disclosed in the pending application.” Mot. 8. But, the focus of the email
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`correspondence accompanying the Turow Declaration is a difference of
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`opinion between the non-signing inventors and UTC as to whether the work
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`of the non-signing inventors related to the ’205 application was covered by a
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`previously executed agreement. There does not appear to be any dispute
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`about, or substantive discussion of, what any of the non-signing inventors,
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`individually or collectively, contributed to the claimed subject matter.
`
`Indeed, inventorship appears tangential to the focus of the correspondence –
`
`i.e., whether the subject matter invented was covered by a pre-existing
`
`contract.
`
`That the correspondence at issue does not speak to inventorship is
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`reinforced by the testimony of Ms. Turow in her Declaration, which
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`unequivocally states that none of the inventors have “indicated that some
`
`other entity besides Inventor (1) Olschewski; Inventor (2) Roscigno,
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`Inventor (3) Rubin, Inventor (4) Schmehl, Inventor (5) Seeger; Inventor (6)
`
`4
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`Steritt and Inventor (7) Voswinckel invented the subject matter of the
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`present invention.” Ex. 1172, 6; see also, id. at 28 (email from UTC
`
`representative stating that “all inventors have to be named for the patent to
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`be valid and enforceable . . . [s]o it seems that the four of you need to be
`
`included. . .”).
`
`We agree with Patent Owner that Petitioner’s evidence and argument
`
`in support of its motion for additional discovery fail to demonstrate more
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`than a mere possibility or mere allegation that something useful will be
`
`found. Thus, the first Garmin factor weighs heavily against granting
`
`Petitioner’s request for additional discovery. We note that Petitioner also
`
`addresses the remaining factors set forth in Garmin. Mot. 8–10. Even if we
`
`considered those factors to weigh in favor of Petitioner, however, Petitioner
`
`still has not met its burden to show that the additional discovery would serve
`
`the interest of justice, for the reasons provided above.
`
`Having considered the evidence and arguments proffered in support of
`
`the Petitioner’s motion, we are not persuaded that granting the requested
`
`discovery would uncover something useful in support of Petitioner’s
`
`contention that Ghofrani is the work of another.
`
`III. CONCLUSION
`
`
`
`For the reasons discussed above, and in consideration of our
`
`conservative approach to granting additional discovery, we conclude that
`
`Petitioner has not met its burden to show that the additional discovery
`
`sought is necessary in the interest of justice.
`
`5
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
`IV. ORDER
`
`
`
`
`
`In accordance with the foregoing, it is hereby:
`
`ORDERED that Petitioner’s Motions for additional discovery are
`
`denied.
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`6
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`PETITIONER:
`
`Michael K. Nutter
`Andrew R. Sommer
`WINSTON & STRAWN LLP
`mnutter@winston.com
`asommer@winston.com
`
`
`PATENT OWNER:
`
`Stephen B. Maebius
`George Quillin
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`
`Douglas Carsten
`Richard Torczon
`Robert Delafield
`Veronica Ascarrunz
`WILSON, SONSINI, GOODRICH & ROSATI
`dcarsten@wsgr.com
`rtorczon@wsgr.com
`bdelafield@wsgr.com
`vascarrunz@wsgr.com
`
`
`
`
`7
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`
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