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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MYLAN PHARMACEUTICALS INC.,
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`Petitioners,
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`v.
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`BIOGEN MA INC.,
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`Patent Owner.
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`____________
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`Case IPR2019-01403
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`Patent 8,399,514
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`____________
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`Biogen’s Motion to Compel
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`Case IPR2019-01403
`Motion to Compel
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`Contents
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`I. Mylan Must Secure Cross-Examination of Its Declarant, Mr. Butler ............. 2
`II.
`Cross-Examination of Mr. Butler is Required Under the Good Cause
`Standard ........................................................................................................... 5
`III. Conclusion ....................................................................................................... 7
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`Case IPR2019-01403
`Motion to Compel
`Mylan obtained the direct testimony of Mr. Christopher Butler (“Butler
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`Declaration,” Ex. 1012, p. 1), prepared specifically for and submitted by Mylan in
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`this proceeding, by paying fees to the Internet Archive. As recognized by the
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`Board and conceded by Mylan, the Butler Declaration is subject to routine
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`discovery (Order at 2), which entails the self-executing requirement for Mylan to
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`provide Mr. Butler for cross-examination. 37 CFR § 42.51(b)(1); BlackBerry Corp.
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`v. Wi-Lan USA Inc., IPR2013-00126, Paper 15 at 2 (PTAB Aug. 19, 2013) (noting
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`that “routine discovery under 37 C.F.R. § 42.51(b)(1) is self-executing and self-
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`enforcing”). This required cross-examination is central to “our system of
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`jurisprudence to test the credibility and reliability of proferred [sic] testimony,”
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`Borror v. Herz, 666 F.2d 569, 573 (C.C.P.A. 1981) (in the interference context).
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`This motion stems from Mylan’s failure to provide Mr. Butler for cross-
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`examination, as required, and its efforts to hinder this routine discovery. Mylan,
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`apparently, did not secure Mr. Butler’s agreement to appear for cross-examination
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`when it paid the Internet Archive fees to obtain his direct testimony. And Mylan
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`has further indicated that it (1) refuses to seek a subpoena for Mr. Butler to make
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`him available, (2) opposes Biogen seeking to compel Mr. Butler’s testimony,
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`(3) will not withdraw the Butler declaration, and (4) opposes Biogen filing a
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`motion to exclude the Butler declaration. Order at 2; Ex. 2126.
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`Rather than allow Mylan to flout its obligations under the Board’s rules to
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`Case IPR2019-01403
`Motion to Compel
`Biogen’s prejudice, Mylan should be ordered to subpoena, or otherwise secure, Mr.
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`Butler for cross-examination.
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`In the alternative, Biogen is willing to file for a subpoena of Mr. Butler for
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`cross-examination on the Butler Declaration with the Board’s authorization, even
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`though it is not Biogen’s burden to do so. Int’l. Bus. Machs. Co. v Intellectual
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`Ventures II, LLC., IPR2015-01323, Paper 15 at 3 (PTAB Feb. 2, 2015). In order to
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`limit the burden on Mr. Butler, Biogen agrees to reduce the time for cross-
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`examination to one hour.
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`I. Mylan Must Secure Cross-Examination of Its Declarant, Mr. Butler
`Mylan failed to produce Mr. Butler for cross-examination after using the
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`Butler Declaration offensively in this proceeding. Order at 2; Ex. 1041, 30:23-24.
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`Mr. Butler’s organization, the Internet Archive, is not, however a disinterested
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`third party for which any exception to cross-examination is warranted. Cf. Toshiba
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`Corp. v. Optical Devices, LLC, IPR2014-01445, Paper 14 (PTAB May 8, 2015)
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`(denying cross-examination of a third party who had not prepared a declaration
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`submitted in the proceeding). Although not disclosed in the Butler Declaration or
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`Mylan’s Petition, declarations from the Internet Archive are a fee-based, revenue
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`generating service. Ex. 2127; Ex. 2129, 15:10-17.
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`Notwithstanding its routine discovery obligations, Mylan affirmatively seeks
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`to prevent and impede cross-examination of Mr. Butler, indicating that it (1) will
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`Case IPR2019-01403
`Motion to Compel
`not seek a subpoena for Mr. Butler to make him available, (2) will oppose
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`Biogen’s motion to compel Mr. Butler’s testimony, (3) will not withdraw the
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`Butler declaration, and (4) will oppose Biogen filing a motion to exclude the Butler
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`declaration. Order at 2; Ex. 2126. Mylan’s efforts to simultaneously rely on Mr.
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`Butler’s testimony while seeking to prevent his cross-examination contravene the
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`core basis of adversarial proceedings as well as the controlling rules and
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`regulations. See Borror, 666 F.2d at 573.
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`The PTAB rules, in particular, provide for routine cross-examination of
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`declarants. 37 CFR § 42.51(b)(1). This is consistent with the statutory requirement
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`that “[t]he Director shall prescribe regulations… setting forth standards and
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`procedures for discovery of relevant evidence, including… the deposition of
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`witnesses submitting affidavits or declarations.” 35 U.S.C. § 316. It is likewise
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`consistent with the Administrative Procedure Act, which provides that “[a] party is
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`entitled… to conduct such cross-examination as may be required for a full and true
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`disclosure of the facts.” 5 U.S.C. § 556(d); Dell Inc. v. Acceleron, LLC, 818 F.3d
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`1293, 1301 (Fed. Cir. 2016) (applying 5 U.S.C. § 556(d) to IPRs). Further
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`implementing these requirements, the Trial Practice Guide advises that a “party
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`presenting a witness’s testimony by affidavit should arrange to make the witness
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`available for cross-examination.” 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012)
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`(emphasis added). Notably, it is clear that “[t]his applies to witnesses employed by
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`Case IPR2019-01403
`Motion to Compel
`a party as well as experts and non-party witnesses.” Id. (emphasis added).
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`It would not even be sufficient, however, for Mylan to simply withdraw its
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`opposition to Biogen seeking a subpoena for Mr. Butler’s testimony. “Petitioner’s
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`obligations… are not satisfied by merely not opposing a motion to compel by
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`Patent Owner.” IBM, IPR2015-01323, Paper 15 at 3. That holding makes sense,
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`and Mylan should be compelled to a seek a subpoena for Mr. Butler’s cross-
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`examination, for multiple reasons.
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`First, the Board’s rules dictate that Mylan, as the proponent of Mr. Butler’s
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`testimony, “shall bear all… reasonable costs associated with making the witness
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`available for the cross-examination.” 37 C.F.R. § 42.53(g). Second, the
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`“responsibility for its declarant’s refusal to participate in the deposition ultimately
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`must rest with… the party proffering the witness.” HTC v. NFC Technology,
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`IPR2014-01198, Paper 41 at 5 (PTAB Nov. 6, 2015); see also, e.g., IBM, IPR2015-
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`01323, Paper 15 at 3 (“As the proponent of the testimony, if the declarant is not
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`made available for cross-examination, Petitioner runs the risk that the direct
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`testimony will not be considered.”); IBG v. Trading Techs., CBM2015-00179,
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`Paper 39 at 3 (PTAB Aug. 15, 2016) (same); Arista Networks v. Cisco Sys.,
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`IPR2016-00303, Paper 29 at 2-3 (PTAB Jan. 25, 2017) (same).
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`Thus, Mylan must secure, and given its refusals be compelled to secure, the
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`availability of its paid declarant, Mr. Butler, for cross-examination.
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`Case IPR2019-01403
`Motion to Compel
`II. Cross-Examination of Mr. Butler is Required Under the Good Cause
`Standard
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01453, cited in the
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`Order for the standard for compelling testimony, related to a nearly identical Butler
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`declaration. Paper 16 at 3 (PTAB Mar. 14, 2016). The Board there granted the
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`motion and authorized a subpoena of Mr. Butler under the good cause standard.
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`Id., Paper 36. The Board similarly compelled the cross-examination of Mr. Butler
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`under routine discovery in EMC Co. v. Acqis LLC, IPR2014-01462, Paper 21
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`(PTAB May 18, 2015) (authorizing the request because it was routine discovery
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`and unopposed) and in Activision Blizzard, Inc. v. Acceleration Bay, LLC,
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`IPR2015-01996, Paper 17 (PTAB Jun. 3, 2016) (same). There is likewise good
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`cause here for a subpoena for Mr. Butler’s cross-examination.
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`In Johns Manville, Patent Owner identified several admissions from Mr.
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`Butler that called into question the reliability of his testimony:
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`1. He only began working for the Internet Archive in 2009,
`after the purported date of the document(s) enclosed with his
`declaration;
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`2. He has no knowledge of whether the printouts attached to his
`affidavit were actually posted at an accessible location on the
`Internet at the time indicated in the URL assigned to the file;
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`3. The Wayback Machine is not searchable; and
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`Case IPR2019-01403
`Motion to Compel
`4. The printouts attached to his affidavit were not collected by
`the Internet Archive but rather were donated by third parties,
`and he has no knowledge of how the third parties created them.
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`Johns Manville, IPR2015-01453, Ex. 3004 at 3-4. Having considered those facts,
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`the Board granted, over Petitioner’s objections, authorization to compel cross-
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`examination of Mr. Butler. Id., Paper 36 at 1.
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`Here, all the same facts, and more, establish good cause to authorize a
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`subpoena for Mr. Butler’s cross-examination: (1) the purported webpage archival
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`addressed in Ex. 1012 occurred in 2004—before Mr. Butler’s employment began
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`in 2009; (2) Biogen believes that Mr. Butler “has no knowledge of whether the
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`printouts attached to his affidavit were actually posted at an accessible location on
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`the Internet at the time indicated in the URL assigned to the file;” (3) to Biogen’s
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`knowledge, the Wayback Machine remains “not searchable;” and (4) the website
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`Mr. Butler seeks to authenticate was purportedly obtained (“crawled”) by an
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`independent third party (Alexa Crawls), not by Mr. Butler’s employer, the Internet
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`Archive:
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`Case IPR2019-01403
`Motion to Compel
`Ex. 2128. Mr. Butler admits to having no knowledge of the operations of “Alexa
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`Internet,” and thus his declaration is not based on personal knowledge. Ex. 2129,
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`19:12-16. Moreover, if Mr. Butler is not made available for cross-examination, his
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`direct testimony should not be considered. IBM, IPR2015-01323, Paper 15 at 3.
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`Based on this record, which exceeds that of Johns Manville where the Board
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`authorized application for subpoena from Federal District Court to cross-examine
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`Mr. Butler, good cause exists for the Board to authorize a subpoena of Mr. Butler
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`for cross-examination on the Butler Declaration that Mylan obtained for and
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`submitted in this proceeding.
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`III. Conclusion
`For the reasons above, Biogen requests that the Board order Mylan to apply
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`to subpoena Mr. Butler or, in the alternative, authorize Biogen to apply for one.
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`Respectfully submitted,
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`
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`By: /Barbara C. McCurdy/
`Barbara C. McCurdy, Reg. No. 32,120
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`Counsel for Patent Owner
`Biogen MA Inc.
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`7
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`Dated: May 16, 2019
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`Case IPR2019-01403
`Motion to Compel
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Patent Owner’s Motion
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`to Compel, Exhibit List and Exhibits 2126-2129 were filed and served electronically
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`via the PTAB electronic filing system on May 16, 2019, in its entirety on the
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`following:
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`Brandon M. White
`Perkins Coie LLP
`700 13th St., NW, Suite 600
`Washington, D.C. 20005
`Telephone: (202) 654-6206
`E-mail: bmwhite@perkinscoie.com
`David L. Anstaett
`Emily Greb
`Perkins Coie LLP
`One East Main St., Suite 201
`Madison, WI 53703
`Telephone: (608) 663-7494
`E-mail: danstaett@perkinscoie.com
`E-mail: egreb@perkinscoie.com
`Petitioner has agreed to electronic service.
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`Dated: May 16, 2019
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`By: / Catherine A. Sadler /
`Catherine A. Sadler
`Case Manager
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`8
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