UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`MYLAN PHARMACEUTICALS INC.
`
`Petitioner
`
`v.
`
`BIOGEN MA INC.
`
`Patent Owner
`____________________________
`
`Case No. IPR2018-01403
`U.S. Patent No. 8,399,514
`____________________________
`
`MYLAN’S OPPOSITION TO BIOGEN’S MOTION TO COMPEL
`
`
`
`
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`MYLAN PHARMACEUTICALS INC.
`
`Petitioner
`
`v.
`
`BIOGEN MA INC.
`
`Patent Owner
`____________________________
`
`Case No. IPR2018-01403
`U.S. Patent No. 8,399,514
`____________________________
`
`MYLAN’S OPPOSITION TO BIOGEN’S MOTION TO COMPEL
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`
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`
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`In its Order authorizing Biogen MA Inc.’s (“Biogen’s”) motion, the Board
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`instructed that “[t]he motion must describe the general relevance of the testimony”
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`sought and “must be very specific as to exactly what evidence [Biogen is] seeking.”
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`Paper 30, 4 (citations omitted). Biogen’s motion neither identifies what evidence
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`Biogen seeks, nor explains the relevance of any such testimony. Instead, Biogen’s
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`motion—and the unspecified cross-examination testimony it seeks—appears to be a
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`generalized attempt to attack clear statements in the Butler declaration, which mirror
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`declaration statements the Board has previously accepted in other IPRs. Biogen has
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`failed to meet its burden.
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`Biogen also spends four of
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`its seven pages arguing
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`that Mylan
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`Pharmaceuticals Inc. (“Mylan”) should seek Mr. Butler’s testimony. But the Board
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`did not authorize Biogen to file a motion to compel Mylan to do anything (including
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`making Mr. Butler available for deposition). Biogen was authorized only to file a
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`motion seeking a third-party subpoena of Mr. Butler. See Paper 30, 3–4. Therefore,
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`pages 1–4 of Biogen’s motion, which do not apply the relevant standard to compel
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`third-party cross-examination testimony, should be disregarded.
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`- 1 -
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`
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`I.
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`BACKGROUND
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`Biogen’s motion relates to a single exhibit—Exhibit 1012, the Schimrigk
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`2004 poster by a company acquired by Biogen1—which also includes an affidavit
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`from Internet Archives Office Manager Christopher Butler. Ex. 1012. The Butler
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`affidavit explains how the Wayback Machine operates. Ex. 1012, 1. Similar
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`affidavits from Mr. Butler have been accepted by the PTAB to establish the public
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`availability of archived webpages, without Mr. Butler’s deposition having been
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`taken. See, e.g., Samsung Elecs. Co. v. Rosetta-Wireless Corp., IPR2016-00622,
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`Paper 48, 64, 66–67 (P.T.A.B. Aug. 21, 2017); Intel Corp. v. Alacritech, Inc.,
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`IPR2017-01392, Paper 81, 12–14 (P.T.A.B. Nov. 26, 2018); Fisher & Paykel
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`Healthcare Ltd. v. Resmed Ltd., IPR2017-00062, 2018 WL 1605264, at *1 n.3 & n.6
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`(P.T.A.B. Mar. 29, 2018). Mr. Butler is a third-party and will not make himself
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`available voluntarily for cross-examination. Ex. 2041, 34:15–18.
`
`
`1 The Schimrigk 2004 poster is a poster presentation published on behalf of
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`Fumapharm AG. In 2006, Biogen acquired Fumapharm. Ex. 1058. To the extent
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`Biogen intends to argue that the Schimrigk 2004 poster is not prior art, Biogen
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`should already have in its possession all necessary information related to the
`
`publication of the poster, including historical details of the Fumapharm website that
`
`published the poster.
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`
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`- 2 -
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`
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`II. ARGUMENT
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`Biogen’s motion fails to meet the standard to compel Mr. Butler’s deposition
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`testimony. Biogen nowhere explains the general relevance of the testimony it
`
`seeks—indeed, it does not even identify specific evidence it seeks to elicit from a
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`cross-examination of Mr. Butler as instructed by the Board. Paper 33, 5–7.2
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`A. Biogen does not describe the general relevance of any sought cross-
`examination testimony, specifically point to the evidence Biogen
`seeks, or show good cause for cross-examination testimony.
`
`Despite the Board’s directive, Biogen fails to “describe the general relevance
`
`of the testimony” it seeks, nor is it “very specific as to exactly what evidence [Biogen
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`is] seeking.” Paper 30, 4 (citation omitted). To succeed in its motion, Biogen needed
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`to make both showings, in addition to demonstrating good cause for Mr. Butler’s
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`deposition.
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`If a third-party declarant is not willing to be voluntarily deposed, the
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`applicable rule is 37 C.F.R. § 42.52(a). Paper 30, 3–4; Coastal Indus., Inc. v. Shower
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`Enclosures Am., Inc., IPR2017-00573, 2018 WL 1005356, at *1 (P.T.A.B. Feb. 20,
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`2018) (citing Rules of Practice for Trials Before the Patent Trial and Appeal Board
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`and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed.
`
`
`2 Biogen has already embarked on a similar fishing expedition during its deposition
`
`of Jennifer Rock. See Ex. 1059.
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`
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`- 3 -
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`
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`Reg. 48,612, 48,622 (Aug. 14, 2012)). Under 37 C.F.R. § 42.52(a), “[a] party
`
`seeking to compel testimony . . . must describe the general relevance of the
`
`testimony.” Paper 30, 3–4. Biogen was also required to specify “exactly what
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`evidence [Biogen is] seeking, and must show good cause.” Id. at 4 (quoting Johns
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`Manville Corp. v. Knauf Insulation, Inc., IPR2015-01453, Paper 16, 3 (P.T.A.B.
`
`Mar. 14, 2016)).
`
`Biogen made no such showing. Instead, Biogen selected examples of
`
`testimony Mr. Butler has given in another proceeding to speculate that similar facts
`
`may be present here.3 Paper 33, 5–6. But such speculation does not meet the good
`
`cause standard to compel cross-examination testimony of Mr. Butler.
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`Even if the Board accepts Biogen’s speculation as postulated “admissions” it
`
`may be able to elicit from Mr. Butler in this case, Biogen has not shown good cause
`
`to take Mr. Butler’s deposition—Mr. Butler did not make any statements in his
`
`affidavit that contradicted any of these purported “admissions.” For example, Mr.
`
`Butler never asserted that he began working for the Internet Archive before 2009.
`
`
`3 To the extent Biogen simply seeks to have Mr. Butler restate what he has already
`
`testified to in Johns Manville, that deposition is publicly available. Johns Manville,
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`IPR2015-01453, Ex. 2016. No further deposition is required, particularly for an
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`uninterested third party like Mr. Butler.
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`
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`- 4 -
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`
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`Ex. 1012, 1. More importantly, however, any cross-examination testimony related
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`to Mr. Butler’s employment date is irrelevant. The PTAB has already accepted Mr.
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`Butler’s testimony on Wayback Machine archiving of documents before his
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`employment start date. See, e.g., Johns Manville Corp. v. Knauf Insulation, Inc.,
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`IPR2015-01453, 2017 WL 378547, at *6 (P.T.A.B. Jan. 11, 2017).
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`Regarding Biogen’s argument related to “Alexa Crawls” (Paper 33, 6–7), Mr.
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`Butler actually admits in his affidavit that the Wayback Machine is compiled using
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`such crawlers. Ex. 1012, 1.4 Therefore, Biogen has identified no cross-examination
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`testimony that would yield useful information.
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`Biogen’s other speculations—namely, that Mr. Butler “has no knowledge of
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`whether the printouts…were actually posted at an accessible location on the Internet
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`at the time indicated in the URL” and that “[t]he Wayback Machine is not
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`searchable” (Paper 33, 5)—similarly fail. Coastal, 2018 WL 1005356, at *2 (finding
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`Patent Owner did not meet its burden of showing it should be authorized to compel
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`Mr. Butler’s testimony on “inferences of wrongdoing” such as accusations of non-
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`authenticity).
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`4 The deposition testimony Biogen includes as Ex. 2129, in fact, demonstrates that
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`Mr. Butler is very familiar with the practices of the crawler Alexa Internet, which
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`was founded by the founder of Internet Archive himself. Ex. 2129, 18:6–13.
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`
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`- 5 -
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`
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`While Biogen proffers examples of IPRs where Mr. Butler was deposed, these
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`are inapposite at least because Mr. Butler’s deposition was unopposed, and therefore
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`the PTAB waived the requirement to file a motion for authorization. EMC Co. v.
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`Acquis LLC, IPR2014-01462, 2015 WL 2381018 (P.T.A.B. May 18, 2015);
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`Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2015-01996, Paper 17, 2–3
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`(P.T.A.B. June 3, 2016). Here, Biogen has failed to make the requisite showing for
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`its motion to be granted.
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`B.
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`Biogen does not agree to limit the scope of the testimony it seeks.
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`Biogen’s only offered limitation is a time limitation, agreeing to a one-hour
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`deposition. Paper 33, 2. Aside from that offer, Biogen contemplates no limitations
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`on the subject matter of the testimony it seeks. Biogen’s planned fishing
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`expedition—even a one-hour fishing expedition—should weigh against granting
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`Biogen a subpoena to compel Mr. Butler’s deposition testimony. Samsung Elecs.
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`Co. v. Black Hills Media, LLC, IPR2014-00717, Paper 31, 5 (P.T.A.B. Jan. 22,
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`2015).
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`C. Biogen’s motion to compel Mylan to offer Mr. Butler for deposition
`is not authorized.
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`Finally, Biogen’s motion is largely an unauthorized motion to compel Mylan
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`to obtain the subpoena that the Board authorized Biogen to seek. Compare Paper
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`33, 1–4, with Paper 30, 2–4. However, in the April 12, 2019 teleconference the
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`Board already rejected that approach. Ex. 2041, 33:7–15. In its present motion,
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`- 6 -
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`
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`seeming to recognize that it cannot meet its burden to compel Mr. Butler’s
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`testimony, Biogen attempts to instead place its burden to obtain such a subpoena on
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`Mylan. Compare Paper 33, 2 (“In the alternative, Biogen is willing to file for a
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`subpoena of Mr. Butler for cross-examination on the Butler Declaration with the
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`Board’s authorization, even though it is not Biogen’s burden to do so.” (citation
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`omitted)), with Paper 30, 4 (“As the moving party, Patent Owner has the burden of
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`proof to establish that it is entitled to the requested relief.” (citation omitted)); see
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`also Coastal, 2018 WL 1005356, at *1–2 (burden on party seeking Butler
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`testimony). Biogen’s unauthorized attempt to shift its burden to Mylan and compel
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`Mylan to seek a subpoena should be denied.
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`III. CONCLUSION
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`Petitioner respectfully requests that the Board deny Biogen’s Motion.
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`May 21, 2019
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`
`
`Respectfully submitted,
`
`/s/ Emily J. Greb
`Emily J. Greb
`Reg. No. 68,244
`Perkins Coie LLP
`33 East Main Street
`Suite 201
`Madison, WI 53703
`egreb@perkinscoie.com
`Tel: 608-663-7494
`Fax: 608-283-4494
`
`Counsel for Petitioner
`Mylan Pharmaceuticals Inc.
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`
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`- 7 -
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served a true and
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`correct copy of the foregoing: MYLAN’S OPPOSITION TO BIOGEN’S MOTION
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`TO COMPEL and Exhibits 1058 and 1059 by email to the electronic service
`
`addresses for Patent Owner:
`
`Barbara C. McCurdy
`Erin M. Sommers
`Pier D. DeRoo
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`barbara.mccurdy@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`
`Dated: May 21, 2019
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`/s/ Emily J. Greb
`Emily J. Greb
`Reg. No. 68,244
`
`Counsel for Petitioner Mylan Pharmaceuticals Inc.
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