Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 30
`Entered: May 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01403
`Patent No. 8,399,514 B2
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 30
`Entered: May 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-01403
`Patent No. 8,399,514 B2
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`I. INTRODUCTION
`With its Petition, Petitioner submitted an Affidavit of Christopher
`Butler ( “Affidavit”), an Office Manager at the Internet Archives, to support
`its position that Schimrigk 2004 Poster is available as prior art to the ’514
`patent. Ex. 1012 (including Mr. Butler’s Affidavit and Schimrigk 2004
`Poster). A conference call in this proceeding was held on April 12, 2019,
`among respective counsel for Petitioner and Patent Owner, and Judges
`Snedden and Harlow. A transcript of the conference call is entered as
`Ex. 2041.
`During the call, the parties agreed that the Affidavit is evidence
`subject to routine discovery. Id. at 23:5–21. Cross-examination of the
`opposing party’s declarants typically is provided for under routine
`discovery. 37 C.F.R. § 42.51(b)(1)(ii); Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012). Counsel for Petitioner,
`however, indicated that it was his belief that Mr. Butler will not make
`himself available for deposition voluntarily. Ex. 1041, 30:23–24.
`Subsequently, in an email correspondence sent to the Board on May 6,
`2019, counsel for Patent Owner requested authorization to file a “motion to
`compel and/or exclude Mr. Butler’s declaration and cross-examination.”
`The relevant portion of the email reads as follows:
`
`Patent Owner Biogen conferred with Petitioner Mylan regarding
`the Mylan declarant, Mr. Butler, who Mylan is unable to make
`available for cross-examination. Mylan indicated today that it
`(1) will not seek a subpoena for Mr. Butler to make him
`available, (2) will oppose Biogen from seeking to file a motion
`to compel Mr. Butler’s testimony, (3) will not withdraw the
`
`2
`
`
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`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`Butler declaration, and (4) will oppose Biogen filing a motion to
`exclude the Butler declaration.
`Accordingly, Biogen renews its request for authorization to file
`a motion to compel and/or exclude in regard to Mr. Butler’s
`declaration and cross-examination.
`II. DISCUSSION
`A. Patent Owner’s Request for a Motion to Compel Testimony of
`Mr. Butler
`A party in a contested case may apply to a United States court for a
`subpoena to compel testimony. 35 U.S.C. § 24. A party seeking a subpoena
`must first obtain authorization from the Board. 37 C.F.R. § 42.52(a). Upon
`consideration of the parties’ positions, we grant Patent Owner the requested
`authorization to file a motion for authorization to compel testimony of Mr.
`Christopher Butler (Office Manager of the non-profit digital Library known
`as the “Internet Archive”), limited to 7 pages and due within 3 business days
`of the date of this Order. Petitioner may, if it desires, file an opposition, also
`limited to 7 pages and due within 3 business days of the date of filing of
`Patent Owner’s motion. If Petitioner chooses not to file an opposition, the
`panel would appreciate the earliest notification thereof possible.
`The parties are reminded that the applicable rule for compelled
`testimony is 37 C.F.R. § 42.52(a), which provides:
`
`(a) Authorization required. A party seeking to compel
`testimony or production of documents or things must file a
`
`3
`
`
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`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`motion for authorization. The motion must describe the general
`relevance of the testimony, document, or thing, and must:
`(1) In the case of testimony, identify the witness by name
`or title . . . .
`See Rules of Practice for Trials Before the Patent Trial and Appeal Board
`and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule,
`77 Fed. Reg. 48,612, 48,622 (Aug. 14, 2012):
`
`A party in a contested case may apply for a subpoena to compel
`testimony in the United States, but only for testimony to be used
`in the contested case. See 35 U.S.C. 24. Section 42.52(a)
`requires the party seeking a subpoena to first obtain authorization
`from the Board; otherwise, the compelled evidence would not be
`admitted in the proceeding.
`As the moving party, Patent Owner has the burden of proof to
`establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c).
`“[T]he motion must be very specific as to exactly what evidence the parties
`are seeking, and must show good cause before we will grant such a motion.”
`Johns Manville Corp. v. Knauf Insulation, Inc., Case IPR2015–01453, slip
`op. at 3 (PTAB Mar. 14, 2016) (Paper 16).
`
`This is of particular importance because Mr. Butler is an
`uninterested third-party witness, and a cross examination is a
`significant inconvenience in time and energy where he has
`already submitted what appears to be an appropriate attestation
`to his knowledge and actions with respect to the evidence at
`issue.
`Id. Limitations as to time and scope of the cross-examination weigh in favor
`of granting the request, whereas the lack of such limitations weigh against it.
`Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, Case IPR2014–
`00717, slip op. at 5 (PTAB Jan. 22, 2015) (Paper 31) (“[W]e will not permit
`Mr. Cho’s deposition to turn into a ‘fishing expedition’ on other issues.”).
`
`4
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`B. Patent Owner’s Request for Motion to Exclude
`Regarding Patent Owner’s request for authorization to file a motion to
`exclude, Patent Owner may file its motion to exclude as is currently
`authorized under the Scheduling Order for this case. See Paper 13 (Due
`Date 5). To the extent Patent Owner is requesting an additional motion to
`exclude, that request is denied.
`
`III. ORDER
`It is
`ORDERED that Patent Owner is authorized to file a Motion to
`Compel Testimony of Mr. Butler, limited to 7 pages and due within 3
`business days of the date of this Order.
`FURTHERED ORDERED that Petitioner is authorized to file an
`Opposition to Patent Owner’s Motion, limited to 7 pages and due within 3
`business days of the date of filing of Patent Owner’s Motion.
`FURTHERED ORDERED that any request for a motion to exclude in
`addition to what is currently authorized under the Scheduling Order
`(Paper 13) is denied.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`PETITIONER:
`
`Brandon White
`Emily Greb
`PERKINS COIE LLP
`White-ptab@perkinscoie.com
`Greb-ptab@perinscoie.com
`
`
`PATENT OWNER:
`
`Barbara McCurdy
`Erin Sommers
`Pier DeRoo
`Mark Feldstein
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Barbara.mccurdy@finnegan.com
`Erin.sommers@finnegan.com
`Pier.deroo@frinnegan.com
`Mark.feldstein@finnegan.com
`
`
`
`6
`
`
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