HEARING
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
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`August 30, 2018
`August 30, 2018
`1
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`· · · · · · · · · · · STATE OF GEORGIA
`
`MYLAN PHARMACEUTICALS INC.,
`
`· · · · · Plaintiffs,
`
`· · ·v.· · · · · · · · · · · ·IPR 2018-00892
`
`BRISTOL-MYERS SQUIBB COMPANY
`And PFIZER, INC.,
`
`· · · · · Defendants.
`
`· · · · ·HEARING BEFORE THE HONORABLE JUDGE STANTON
`
`· · · · · · · · · · · · & JUDGE YANG
`
`· · · · · · · · · · · AUGUST 30, 2018
`
`· · · · · · · · · · · · ·12:02 p.m.
`
`· · · · ·Lauren A. Fox, CCR No. 4764-7952-2293-7600
`
`800.211.DEPO (3376)
`800.211.DEPO (3376)
`EsquireSolutions.com
`EsquireSolutions.com
`MYLAN EXHIBIT 1036
`
`
`HEARING
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
`
`August 30, 2018
`August 30, 2018
`1
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`· · · · · · · · · · · STATE OF GEORGIA
`
`MYLAN PHARMACEUTICALS INC.,
`
`· · · · · Plaintiffs,
`
`· · ·v.· · · · · · · · · · · ·IPR 2018-00892
`
`BRISTOL-MYERS SQUIBB COMPANY
`And PFIZER, INC.,
`
`· · · · · Defendants.
`
`· · · · ·HEARING BEFORE THE HONORABLE JUDGE STANTON
`
`· · · · · · · · · · · · & JUDGE YANG
`
`· · · · · · · · · · · AUGUST 30, 2018
`
`· · · · · · · · · · · · ·12:02 p.m.
`
`· · · · ·Lauren A. Fox, CCR No. 4764-7952-2293-7600
`
`800.211.DEPO (3376)
`800.211.DEPO (3376)
`EsquireSolutions.com
`EsquireSolutions.com
`MYLAN EXHIBIT 1036
`
`
`
`HEARING
`HEARING
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
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`August 30, 2018
`August 30, 2018
`2
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`· · · · · · · · · · · · APPEARANCES:
`
`FOR THE PATENT OWNER:
`
`MR. KEVIN PRUSSIA
`WILMER HALE
`60 State Street
`Boston, Massachusetts· 02109
`(617) 526-6243
`Kevin.prussia@wilmerhale.com
`
`MR. TIM COOK
`WILMER HALE
`60 State Street
`Boston, Massachusetts· 02109
`(617) 526-6005
`Tim.cook@wilmerhale.com
`
`MS. HEATHER PETRUZZI
`WILMER HALE
`175 Pennsylvania Avenue Northwest
`Washington D.C.· 20006
`(202) 663-6028
`Heather.petruzzi@wilmerhale.com
`
`FOR THE PETITIONER:
`
`MR. ROBERT FLORENCE
`PARKER POE
`1180 Peachtree Street Northeast
`Suite 3300
`Atlanta, Georgia· 30309
`(678) 690-5701
`robertflorence@parkerpoe.com
`
`MR. MICHAEL BINNS
`PARKER POE
`1180 Peachtree Street Northeast
`Suite 3300
`Atlanta, Georgia· 30309
`(678) 690-5703
`michaelbinns@parkerpoe.com
`
`800.211.DEPO (3376)
`800.211.DEPO (3376)
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`HEARING
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`August 30, 2018
`August 30, 2018
`3
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`· · · · · · · ·APPEARANCES CONT’D:
`
`FOR THE PETITIONER:
`
`MS. KAREN CARROLL
`PARKER POE
`1180 Peachtree Street Northeast
`Suite 3300
`Atlanta, Georgia· 30309
`(678) 690-5704
`Karencarroll@parkerpoe.com
`
`MR. SHARAD BIJANKI
`PARKER POE
`1180 Peachtree Street Northeast
`Suite 3300
`Atlanta, Georgia· 30309
`(678) 690-5713
`sharadbijanki@parkerpoe.com
`
`800.211.DEPO (3376)
`800.211.DEPO (3376)
`EsquireSolutions.com
`EsquireSolutions.com
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`August 30, 2018
`August 30, 2018
`4
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`· · · · · · · · ·INDEX TO EXHIBITS
`
`(No exhibits were presented during this hearing.)
`
`800.211.DEPO (3376)
`800.211.DEPO (3376)
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`August 30, 2018
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`5
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`·1· · · · · · · · · · · TELEPHONE HEARING
`
`·2· · · · · · · · · · · ·August 30, 2018
`
`·3· · · · THE COURT:· Good morning, this is Judge Stanton,
`
`·4· ·I have with me on the line Judge Yang.· This is a
`
`·5· ·teleconference for IPR 2018 – 00892.· Who do we have
`
`·6· ·on the line for petitioner?
`
`·7· · · · MR. FLORENCE:· Yes, this is Robert Florence on
`
`·8· ·the line for petitioner with the law firm of Parker,
`
`·9· ·Poe, Adams, and Bernstein.
`
`10· · · · THE COURT:· And, for patent owner?
`
`11· · · · MS. PETRUZZI:· Yes, this is Heather Petruzzi and
`
`12· ·with me are my colleagues Kevin Prussia and Tim Cook
`
`13· ·all from Wilmer Hale representing patent owners.
`
`14· · · · THE COURT:· Mrs. Petruzzi, will you be speaking
`
`15· ·for patent owner?
`
`16· · · · MS. PETRUZZI:· My colleague, Kevin Prussia, will
`
`17· ·start the conversation today.
`
`18· · · · MR. PRUSSIA:· Good morning, or good afternoon.
`
`19· · · · THE COURT:· And, do we have a court reporter on
`
`20· ·the line?
`
`21· · · · COURT REPORTER:· Yes.
`
`22· · · · THE COURT:· Okay, and who requested the court
`
`23· ·reporter?
`
`24· · · · MR. FLORENCE:· This is Robert Florence, counsel
`
`25· ·for petitioner.· We requested the court reporter, Your
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`·1· ·Honor.
`
`·2· · · · THE COURT:· Okay.· Mr. Florence, after the
`
`·3· ·conclusion of the call if you could submit the
`
`·4· ·transcript as an exhibit, that would be appreciated.
`
`·5· · · · MR. FLORENCE:· Absolutely.
`
`·6· · · · THE COURT:· Okay.· Mr. Florence, so you have
`
`·7· ·several items to talk today.· I will start with a
`
`·8· ·comment on the length of the e-mail.· You do agree
`
`·9· ·with patent owner that it might have gone a little
`
`10· ·overboard and included some arguments and those
`
`11· ·arguments will not be considered, have not been
`
`12· ·considered, and so we will consider everything that is
`
`13· ·said now going forward.· And, Mr. Florence, you’ve
`
`14· ·requested this call, so I’ll let you begin.
`
`15· · · · MR. FLORENCE:· Yes, first of all, I’d like to
`
`16· ·thank the board for taking the time to do the call.
`
`17· ·As stated in our e-mail, we believe that there are
`
`18· ·several issues that we are seeking leave to file a
`
`19· ·short reply to for the board that were raised in the
`
`20· ·patent owner’s preliminary response.· And, those
`
`21· ·issues, you know, they were late.· First of all, they
`
`22· ·were late to the real party of interest issue, which
`
`23· ·is an issue that I know the board is aware of that the
`
`24· ·patent owner’s raised previously regarding some
`
`25· ·discovery that they requested.
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`·1· · · · The second issue is the issue of whether or not
`
`·2· ·the petitioner has met its burden establishing that
`
`·3· ·certain prior art is indeed printed publications.
`
`·4· ·And, then the third issue is whether or not, pursuant
`
`·5· ·to Section 325(d), patent owner -- petitioner has met
`
`·6· ·his burden for demonstrating that there’s something
`
`·7· ·new here for the board to consider.· And, we believe
`
`·8· ·that there’s good cause for each of these issues if we
`
`·9· ·-- if I may, and please feel free to stop me at any
`
`10· ·point if there are any questions -- but if I may, I’d
`
`11· ·like to go through each one briefly one at a time.
`
`12· · · · THE COURT:· Yeah, I think -- just so I can keep
`
`13· ·everything straight, if we can just tackle one issue
`
`14· ·at a time.· So, for example, lets start with the RPI
`
`15· ·issue.· I’ll let you speak and then I’ll have Mr.
`
`16· ·Prussia respond and then we can decide how to proceed
`
`17· ·with respect to each of these issues.· That might be
`
`18· ·easier for Judge Yang and I.
`
`19· · · · MR. FLORENCE:· I think that makes sense as well,
`
`20· ·thank you.· Beginning with the RPI issue, as the board
`
`21· ·is aware, the patent owner has right in a preliminary
`
`22· ·response that the contention is that petitioner has
`
`23· ·failed to name all the real parties of interest and
`
`24· ·based essentially on what’s available in the public
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`25· ·domain regarding Mylan’s overall corporate structure
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`·1· ·for all of the Mylan entities.
`
`·2· · · · And, as the board is aware, at this point in
`
`·3· ·time, three entities have been named as the real party
`
`·4· ·of interest.· The petitioner itself, which is Mylan
`
`·5· ·Pharmaceuticals Inc., Mylan Inc., which is the
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`·6· ·corporate parent of Mylan Pharmaceuticals Inc., and
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`·7· ·then farther up the chain, Mylan M.B., which is the
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`·8· ·ultimate corporate parent of all the Mylan entities.
`
`·9· ·And, there are somewhere in the neighborhood of, you
`
`10· ·know, a couple hundred Mylan entities in the Mylan
`
`11· ·family chain.· And, the petitioners have raised, based
`
`12· ·on the corporate structure in an argument that,
`
`13· ·because the petitioner named Mylan M.B. as a real
`
`14· ·party in interest and necessarily petitioner should
`
`15· ·have named any entity that fell between Mylan M.B. and
`
`16· ·Mylan Inc. and Mylan Pharmaceuticals Inc., and namely
`
`17· ·certain other holding companies.
`
`18· · · · And, petitioner doesn’t cite anything in the
`
`19· ·record, doesn’t attach anything from the public
`
`20· ·record, just relies solely on attorney argument.· But,
`
`21· ·in doing so, they also ignore, most importantly, other
`
`22· ·information that’s available in the public record
`
`23· ·regarding Mylan M.B. itself.· And, to the issue of
`
`24· ·whether or not Mylan M.B. can, or does, exercise any
`
`25· ·control over any IPR proceedings and that -- in the
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`·1· ·deposition that was taken, there’s a declaration
`
`·2· ·submitted in that case.· The deposition was taken and
`
`·3· ·that testimony was publicly filed and is publicly
`
`·4· ·labeled to this day on the board’s website in IPR
`
`·5· ·2015-01069 and establishes that, as a holding company,
`
`·6· ·Mylan M.B. doesn’t have any employees.· It doesn’t
`
`·7· ·have anything to do with the underlying litigation
`
`·8· ·that’s related to this case.
`
`·9· · · · And, in fact, it doesn’t have the authority to
`
`10· ·control any IPR.· And, so, we believe that, you know,
`
`11· ·because there are factual legal errors in this very
`
`12· ·case this issue, petitioner would believe there’s good
`
`13· ·cause for us to address it and address this other
`
`14· ·information that they did not include that’s in the
`
`15· ·public domain regarding the inability of Mylan M.B. to
`
`16· ·control any IPR, which would be including this
`
`17· ·particular IPR.
`
`18· · · · THE COURT:· So, are you -- we have a recent
`
`19· ·Federal circuit case application is in Applications in
`
`20· ·Internet Time, LLC versus RPX Corporation.· Are you
`
`21· ·familiar with this case?
`
`22· · · · MR. FLORENCE:· We are familiar with it to the
`
`23· ·extent that patent orders attached a publication of it
`
`24· ·from a legal news organization that published it.· And
`
`25· ·we’re aware that, you know, the Federal circuit had
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`·1· ·pulled that text and then subsequently reissued a
`
`·2· ·redacted version.
`
`·3· · · · So, yes, we’re aware of that case and we’re aware
`
`·4· ·of patent owner’s contention that the Federal circuit,
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`·5· ·you know, held in that case that the board had been
`
`·6· ·applying unduly restricted test for determining
`
`·7· ·whether a party is a real party of interest.· We
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`·8· ·disagree with their reading of that case.· Certainly -
`
`·9· ·- it’s absolutely intervening law that has been issued
`
`10· ·that gives a little bit more flavor regarding what the
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`11· ·Federal circuit thinks about the issue, but it was not
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`12· ·-- certainly was not available at the time that we
`
`13· ·filed our petition.
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`14· · · · THE COURT:· All right.· Okay.· Anything further
`
`15· ·Mr. Florence?
`
`16· · · · MR. FLORENCE:· Only to say that, you know, what
`
`17· ·we envisioned that we would be filing in response to
`
`18· ·this particular issue would -- certainly, we would
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`19· ·submit the transcript from the deposition from the
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`20· ·prior IPR proceeding and that of course, you know, we
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`21· ·-- we feel that we, you know, ought to be able to also
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`22· ·address the, you know, what we believe are legal
`
`23· ·errors regarding what the patent owner has raised
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`24· ·regarding this issue.· So, we would envision attaching
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`25· ·and providing the board a copy of that transcript
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`·1· ·addressing it and some argument along with it.
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`·2· · · · And, in conjunction with that, the patent owners
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`·3· ·have also raised the issue that because the
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`·4· ·petitioners have failed to name other entities as real
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`·5· ·parties of interest, which obviously, we disagree
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`·6· ·with, that they wouldn’t be able to correct that.
`
`·7· ·And, that petition would be time barred.· I think
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`·8· ·that’s legally incorrect.· There are certainly --
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`·9· ·there are certainly decisions from both the board and
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`10· ·from the Federal circuit that says that’s incorrect
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`11· ·and there are instances where it can be corrected.
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`12· ·And, so we would want to address that as well.
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`13· · · · And, we don’t think that it was improper to
`
`14· ·voluntarily name Mylan M.B., which we did, and which
`
`15· ·we explained to the board when we had our prior call.
`
`16· ·But, should the board, you know, request it, I think
`
`17· ·there’s precedent that would allow us to either remove
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`18· ·Mylan M.B. or to add these other entities and it would
`
`19· ·not interfere with –- well, would not time bar the
`
`20· ·petition in any way.· So, certainly, we would like to
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`21· ·address that.
`
`22· · · · THE COURT:· The, you know, the real parties in
`
`23· ·interest issue is not jurisdictional, but there are
`
`24· ·requirements that any -- that any change be filed
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`25· ·within 21 days or -- and I think that comes from Rule
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`·1· ·42-8-3.· And, so wouldn’t you be -- If you wanted to
`
`·2· ·change the real parties of interest, wouldn’t you then
`
`·3· ·have to request up for an excuse to the late action?
`
`·4· · · · MR. FLORENCE:· Well, under the rules, yes, we
`
`·5· ·would have to have a request with the board to alter
`
`·6· ·the real parties of interest, without a doubt.· But,
`
`·7· ·the case log was pretty clear that, you know, unless
`
`·8· ·we were doing something nefarious, or trying to hide
`
`·9· ·the ball, that we had the ability to correct it in
`
`10· ·those instances.· Certainly, we would like to address
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`11· ·that.
`
`12· · · · Are you -- and, what I will say -- I mean, we
`
`13· ·don’t think it was improper to voluntarily name Mylan
`
`14· ·M.B..· And, I think it’ll show that, you know, based
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`15· ·on the testimony and the facts, that Mylan M.B.
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`16· ·doesn’t actual control the proceeding, in fact, can’t.
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`17· ·So, any intervening entity in between couldn’t either.
`
`18· ·So, we don’t think a change is required, but should
`
`19· ·the board, you know, think that we should make an
`
`20· ·alteration to the RPI, we think that there’s precedent
`
`21· ·that allows us to do that.
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`22· · · · THE COURT:· Okay, understood.· All right,
`
`23· ·anything further before we move to Mr. Prussia?
`
`24· · · · MR. FLORENCE:· No, not on that issue.· Thank you.
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`25· · · · THE COURT:· All right, Mr. Prussia, you may
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`·1· ·respond.
`
`·2· · · · MR. PRUSSIA:· Thank you, Your Honor, it’s
`
`·3· ·Prussia.
`
`·4· · · · THE COURT:· Okay, sorry.
`
`·5· · · · MR. PRUSSIA:· No, it’s quite all right.· So,
`
`·6· ·there are really three arguments why patent --
`
`·7· ·petitioners should not be allowed to file a reply on
`
`·8· ·the RPI issue.· The first is, they haven’t showed good
`
`·9· ·cause.· First principles here they need to identify
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`10· ·some good cause for a leave and to file a reply.· And,
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`11· ·what we just heard from my colleague is an argument
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`12· ·that they would like to address what they perceive to
`
`13· ·be incorrect factual and legal arguments that we made
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`14· ·in our P.O.P.R.
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`15· · · · While I disagree with that, there are several
`
`16· ·cases from the board saying that responding to
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`17· ·misstatements -- alleged misstatements in facts and
`
`18· ·laws, not good cause.· Now, I’ll give you one citation
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`19· ·as an example.· It’s IPR 2016-00593 Paper 11.· So, I
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`20· ·think that they haven’t met those threshold burdens to
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`21· ·request a reply, because all they want to do is to
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`22· ·address something that they disagree with in our
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`23· ·P.O.P.R.· That’s one.
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`24· · · · Two, the request is untimely.· If the –- If Your
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`25· ·Honor will remember, we were on a call with you about
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`·1· ·two and a half months ago about this RPI issue.· And,
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`·2· ·when -- on that call, we don’t have a transcript, but
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`·3· ·Your Honor may remember that petitioner’s response on
`
`·4· ·the RPI issue was that no further evidence was needed.
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`·5· ·Now, here we are two and a half months later and, not
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`·6· ·only do they now say that new evidence is needed, but
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`·7· ·they still haven’t yet settled on whether or not the
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`·8· ·RPI –- the entities whom they’ve identified as RPI’s
`
`·9· ·should still be so named in the petition.· And, as
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`10· ·Your Honor correctly pointed out, there are rules that
`
`11· ·force a time period under which a petitioner would
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`12· ·have to make an election one way or the other when
`
`13· ·there are changed circumstances impacting who the
`
`14· ·appropriate parties are for an RPI.
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`15· · · · Not only that time period has passed, but in the
`
`16· ·context of this proceeding, we’re two and a half
`
`17· ·months past when we initially raised this issue.· We
`
`18· ·since filed a P.O.P.R., and now they want to introduce
`
`19· ·new evidence after telling the board that no
`
`20· ·additional evidence was necessary.· And, we think that
`
`21· ·there are cases and other circumstances involving
`
`22· ·requests for a reply for periods -- for comparable
`
`23· ·periods of time where the board has found the requests
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`24· ·had just come too late.· I’ll give you one example.
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`25· ·It’s IPR 2017-2008 Paper 10.· There, the petitioner
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
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`August 30, 2018
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`·1· ·waited five weeks.· Here, petitioner approached us for
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`·2· ·the first time, I think it was three weeks after our
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`·3· ·P.O.P.R. with a request for a reply.· There was no
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`·4· ·explanation from petitioner why they waited so long
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`·5· ·after we filed our P.O.P.R. to first waive this issue,
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`·6· ·especially given that it came two months after we
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`·7· ·raised the RPI issue with petitioner before we filed
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`·8· ·our P.O.P.R.· So, they’ve been on notice for the issue
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`·9· ·for a very long time and they waited for over two and
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`10· ·a half -- for two and half months to request a reply.
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`11· · · · Which brings me to my third point, which is what
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`12· ·they are trying to do here is significantly
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`13· ·prejudicial.· It’s a patent image.· What they’re
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`14· ·asking Your Honor to do, is to give them permission to
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`15· ·file, in this proceeding, a declaration and a
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`16· ·deposition that occurred in a different IPR, not
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`17· ·involving patent owners, relating to a different RPI
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`18· ·issue.· One that -- the RPI issue that we’re raising
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`19· ·in this proceeding is different from the one that was
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`20· ·raised in that proceeding.· And, even if it were
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`21· ·identical issues, we had no opportunity to cross
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`22· ·examine the individual who sat for the deposition and
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`23· ·submitted the declaration.
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`24· · · · So, they’re asking for the opportunity to put in
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`25· ·hearsay evidence.· They’re offering it for its truth
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
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`August 30, 2018
`August 30, 2018
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`·1· ·without any opportunity for us to cross examine to
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`·2· ·test the assertions that are made.· I just think
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`·3· ·that’s not proper.· I think it’s highly prejudicial.
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`·4· ·I can’t think of any exception to the hearsay rules
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`·5· ·that would allow that.· And, I can’t find anything in
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`·6· ·the panel’s precedence that would allow petitioner to
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`·7· ·do that.· So, those are the three reasons that we
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`·8· ·think on this RPI issue, they should not be granted a
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`·9· ·reply.
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`10· · · · THE COURT:· Okay.· Understood.
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`11· · · · MS. PETRUZZI:· Your Honor, I just wanted to add
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`12· ·one note that –- this is Heather for patent owners --
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`13· ·that, in addition to what my colleague said, we just
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`14· ·want to point out that that IPR proceeding -- those
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`15· ·depositions were happening in 2015.· We’re now in
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`16· ·2018.· And, you know, the corporate situation with
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`17· ·Mylan could have changed.· We just wanted to also note
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`18· ·the time difference.· Thank you.
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`19· · · · THE COURT:· All right.· Mr. Florence, anything to
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`20· ·respond?· I’ll allow a few minutes to each side before
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`21· ·I confer with Judge Yang.
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`22· · · · MR. FLORENCE:· Yeah, if I may, I would like to
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`23· ·respond to a couple of those issues.· First of all, we
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`24· ·believe the petitioner has shown good cause.· I can -–
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`25· ·I, too, can give the board a citation to Dealing
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
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`August 30, 2018
`August 30, 2018
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`·1· ·Systems Inc versus Primer Systems Inc, IPR 2016-01425
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`·2· ·Paper number 10, PTAB November 2016.· In that
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`·3· ·particular case, the board held that, because of
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`·4· ·factual legal issues in the RPI and the fact that it
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`·5· ·was a case dispositive issue, that that is good cause.
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`·6· ·And, we have the same thing here.
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`·7· · · · You know, moving on to the prejudice, I find it
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`·8· ·ironic that the patent owner raises prejudice, but the
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`·9· ·patent owner has not attached anything, any evidence
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`10· ·whatsoever in addressing the RPI issue and its -- and
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`11· ·its preliminary response.· In fact, they don’t cite to
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`12· ·a single thing.· They -- they don’t cite any facts.
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`13· ·They have attorney argument and then they leave out a
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`14· ·crucial fact that isn’t a public record, which is this
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`15· ·deposition.
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`16· · · · And, in fact, they go as far as saying in their
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`17· ·petition and in their response that they don’t know of
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`18· ·any evidence, of any reason why Mylan M.B. would not
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`19· ·be an RPI.· Well, they were aware of this other case.
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`20· ·They brought this other case up to me when they first
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`21· ·raised the issue when they wanted discovery.· So,
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`22· ·clearly, they were aware of it.· I don’t see how it
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`23· ·could be prejudicial -- prejudicial to them.
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`24· · · · Now, on the issue of it being untimely.· It’s not
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`25· ·untimely.· There was no preliminary response for us to
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`·1· ·seek a reply to until they filed it.· And, as patent
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`·2· ·owner’s counsel pointed out, we reached out to them a
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`·3· ·little less than three weeks, and then, you know, we
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`·4· ·promptly met and conferred with them.· We sought a
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`·5· ·call with the board.· We provided dates that patent
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`·6· ·owner agreed they were available for, their counsel.
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`·7· ·And, those were pushed out because they were out of
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`·8· ·the country, and then when the day came, they were
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`·9· ·unavailable for one of those dates, so it got pushed
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`10· ·out further.· So, now we’re at the six week mark, but
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`11· ·back --
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`12· · · · THE COURT:· We understand that delay, so…· Okay.
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`13· ·Mr. Florence –- Okay.· So, are you requesting -- I’m
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`14· ·kind of confused with this respect to your request.
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`15· ·Are you requesting that we consider authorizing a
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`16· ·motion to change the RPI, or are we looking at a reply
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`17· ·to basically indicate that the two holding companies
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`18· ·should not be named RPI?
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`19· · · · MR. FLORENCE:· Well, it’s more the latter. I
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`20· ·mean, certainly, we feel that we, you know, precedent
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`21· ·would allow us to change the RP if need be, but we
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`22· ·don’t think the RPI needs to be changed.· We can
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`23· ·certainly address that in any -- in any reply if the
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`24· ·board would like to -- would like to see us address
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`25· ·that issue of motion of whether or not we could change
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`August 30, 2018
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`19
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`·1· ·it.· I think that’s something we can address in a
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`·2· ·paragraph or --
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`·3· · · · THE COURT:· I just need to know which request I’m
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`·4· ·looking to grant.
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`·5· · · · MR. FLORENCE: Well, I -- I don’t rule it out that
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`·6· ·-- I would certainly -- we’d certainly accept just
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`·7· ·replying without a motion to change the RPI.· So, I
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`·8· ·mean, so if the board is inclined to grant the one
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`·9· ·rather than the latter, well certainly, we’ll take
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`10· ·what we can get.
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`11· · · · THE COURT:· Okay, Mr. Prussia, anything further
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`12· ·there?
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`13· · · · MR. PRUSSIA:· Thank you, Your Honor, just this --
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`14· ·and I haven’t had a chance to take a look at the --
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`15· ·the decision that he cited, but what I will say is
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`16· ·this is not the typical situation where a petitioner
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`17· ·is seeking leave to file a reply on an RPI issue.
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`18· ·What’s different about this case is that we raised
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`19· ·this with petitioner before filing our P.O.P.R. with a
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`20· ·request for discovery.· And, part of the basis for the
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`21· ·discovery was this issue as to whether Mylan M.B., the
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`22· ·parent entity whom they are saying is not -- has no
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`23· ·control over the IPR, whether they were -- whether
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`24· ·they should have properly have been named as an RPI.
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`25· ·And, now, they’re trying -- and they resisted that
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`·1· ·effort.· They resisted that effort for discovery.
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`·2· ·They represented to the board that no discovery was
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`·3· ·needed.
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`·4· · · · And, now, two plus months later, they’re turning
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`·5· ·around to say well, forget that.· We didn’t -- They
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`·6· ·didn’t get an opportunity for discovery, but none the
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`·7· ·less, we want to be able to introduce testimonial
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`·8· ·hearsay evidence from another proceeding and rely on
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`·9· ·that for the truth of the matter, after foreclosing
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`10· ·the opportunity for patent owners to get that same
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`11· ·discovery two plus months ago.· And, I think that --
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`12· ·that chronology makes this different from the typical
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`13· ·situation where a petitioner is seeking leave to file
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`14· ·a reply on an RPI issue.· What they’re trying to do
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`15· ·here is backdoor in material from another proceeding
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`16· ·for which we had no opportunity for cross examination
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`17· ·and use that to rely -- to rely on that -- that
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`18· ·testimony for the truth of the matter in a way that
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`19· ·would be highly prejudicial for us and not endorsed by
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`20· ·any of the federal rules of evidence.
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`21· · · · THE COURT:· All right, understood.· Okay, let’s
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`22· ·take a break -- take a break and confer with Judge
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`23· ·Yang, if you can give us a moment please.
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`24· · · · Okay, this is Judge Stenton, I’m back on the
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`25· ·call, and with Judge Yang.· And, Mr. Florence?
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
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`·1· · · · MR. FLORENCE:· Yes.
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`·2· · · · THE COURT:· And Mr. Prussia?
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`·3· · · · MR. PRUSSIA:· Yes, sir.
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`·4· · · · THE COURT:· Okay.· So, we are inclined to allow a
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`·5· ·reply on the RPI issue.· And so, Mr. Florence, we’ll
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`·6· ·ask you, how many pages do you think you’ll need and
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`·7· ·when can you get it to us?
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`·8· · · · MR. FLORENCE:· Well, it -- if it’s confined to
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`·9· ·the RPI issue, I think we would need five to seven
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`10· ·pages due to the font size limitations that are
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`11· ·required of us when we submit something to the board
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`12· ·and we could get it to you within a week.
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`13· · · · THE COURT:· Okay.· That sounds good.· So, I’m
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`14· ·going to go ahead and authorize a seven page reply
`· · · · · · · · · · · · · · · · · · · · · · · · th
`15· ·limited to the RPI issue and due September 7 .· At
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`16· ·this time, we’re at the D.I. stage, and we’ll just use
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`17· ·this information in the reply to determine whether or
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`18· ·not we’re going to institute or go forward with the
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`19· ·trial.· And, so at this time, we’re not inclined to
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`20· ·grant a suRreply, but should we go forward to trial,
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`21· ·then patent owner then may continue to pursue our
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`22· ·justice issue including renew their request for
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`23· ·additional discovery.
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`24· · · · MR. PRUSSIA:· Your Honor, can I just be heard --
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`25· ·can I just be heard briefly on that?
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`·1· · · · THE COURT:· Sure.
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`·2· · · · MR. PRUSSIA:· I understand Your Honor -- Your
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`·3· ·Honor’s ruling.· I just wanted to put on the record
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`·4· ·that we would like an opportunity for a surreply, and
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`·5· ·I could give your honor a couple of examples where
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`·6· ·that has happened in other circumstances.· We think
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`·7· ·that in situations like this, it’s extremely routine
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`·8· ·for the patent owner to be granted a surreply of equal
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`·9· ·length to address the new material presented by the
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`10· ·petitioner and in the reply.· So, we would ask for
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`11· ·that opportunity.· One example, Your Honor, where you
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`12· ·were on the panel is 2018-795 Paper 19, where a five
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`13· ·page reply to five page surreply was authorized. I
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`14· ·also just wanted to put on the record, as a request,
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`15· ·given the nature -- and I understand Your Honor’s
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`16· ·ruling on this, but given the nature of the evidence
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`17· ·that petitioner wishes to submit here --
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`18· · · · THE COURT:· Let me pause you right there. I
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`19· ·forgot to mention that we would not allow the new
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`20· ·evidence to come in so, the transcripts from the
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`21· ·previous IPR would not be allowed to come in.· It
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`22· ·would be -- and so we – There would be no new evidence
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`23· ·with the reply.· Sorry for failing to mention that.
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`24· · · · MR. PRUSSIA:· Okay.· Thank you for that -- for
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`25· ·clarification, Your Honor.· So, it’s just -- just to
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
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`August 30, 2018
`August 30, 2018
`23
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`·1· ·be clear, what Your Honor is envisioning -- you raised
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`·2· ·the new Federal circuit case, is that what Your Honor
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`·3· ·is envisioning?· The briefing -- the briefing is
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`·4· ·intended to address the impact of the Federal
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`·5· ·circuit’s decision?· Or, is there something else that
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`·6· ·we haven’t gotten?
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`·7· · · · THE COURT:· I just want to -- to continue to
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`·8· ·flush this out, but you raised a good point.
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`·9· · · · MR. PRUSSIA:· And -- and, I did raise that
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`10· ·because I actually would like an opportunity to
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`11· ·address that point.· We didn’t have an opportunity
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`12· ·because the decision was under seal at the time.· We
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`13· ·referenced it in a footnote.· But, I do think its
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`14· ·relevant and I do think we would appreciate the
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`15· ·opportunity to submit additional briefing on the
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`16· ·impact of that decision and how it should apply here.
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`17· · · · THE COURT:· You raised a good point, let me --
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`18· ·let me take a break and confer one more time with
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`19· ·Judge Yang.· Give us a few minutes.
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`20· · · · MR. PRUSSIA:· Thank you, Your Honor.
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`21· · · · THE COURT:· Okay, a very persuasive Mr. Prussia.
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`22· ·I think, in light of that, where we are also inclined
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`23· ·to give you a surreply.· How about seven pages due
`· · · · · · · · th
`24· ·September 14 ?
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`25· · · · MR. PRUSSIA:· Thank you very much, Your Honor.
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`MYLAN PHARMACEUTICALS vs BMSCMYLAN PHARMACEUTICALS vs BMSC
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`·1· · · · Yes, that works.
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`·2· · · · · · ·THE COURT:· Okay.· So, with that we are ready to
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`·3· · · · move on to the next issue.
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`·4· · · · · · ·MR. FLORENCE:· If I may, Your Honor, this is
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`·5· · · · Robert Florence for the petitioner.· I was just
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`·6· · · · wondering if I could get some clarification.· Is the
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`·7· · · · surreply goi
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