Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper: 41
`Entered: June 7, 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
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Patent Owner’s Motion to Compel
`37 C.F.R. § 42.52
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper: 41
`Entered: June 7, 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
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Patent Owner’s Motion to Compel
`37 C.F.R. § 42.52
`
`
`
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`I. INTRODUCTION
`With its Petition, Petitioner submitted an Affidavit of Christopher
`Butler (Ex. 1012; “Affidavit”), an Office Manager at the Internet Archive, to
`support its position that Schimrigk 2004 Poster is available as prior art to the
`’514 patent, so cross-examination of Mr. Butler is authorized as routine
`discovery. 37 C.F.R. § 42.51(b)(1)(ii). However, Petitioner represents that
`Mr. Butler is a third-party and will not make himself available voluntarily
`for cross-examination. Ex. 2041, 34:15–18.1 Under such circumstances,
`when a declarant is unwilling to be voluntarily deposed, 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 . . . must file a motion for authorization. The motion
`must describe the general relevance of the testimony. . . 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
`
`
`1 Ex. 2041, Transcript of teleconference held on April 12, 2019, among
`respective counsel for Petitioner and Patent Owner, and Judges Snedden and
`Harlow.
`
`2
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`from the Board; otherwise, the compelled evidence would not be
`admitted in the proceeding.
`In this case, we authorized Patent Owner to file a motion under
`37 C.F.R. § 42.52(a) to seek authorization to request a subpoena from the
`requisite federal district court for the cross-examination of Mr. Christopher
`Butler. Paper 30, 3. On May 16, 2019, Patent Owner filed its Motion to
`Compel. Paper 33 (“Motion” or “Mot.”). On May 21, 2019, Petitioner filed
`an Opposition to Patent Owner’s Motion. Paper 36 (“Opp.”).
`Upon consideration of the Motion and Opposition, we deny Patent
`Owner’s Motion.
`
`II. ANALYSIS
`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). In
`our Order authorizing the Motion, we instructed Patent Owner that the
`“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.”
`Paper 30, 4 (quoting Johns Manville Corp. v. Knauf Insulation, Inc., Case
`IPR2015–01453, slip op. at 3 (PTAB Mar. 14, 2016) (Paper 16)). We
`further noted that
`
`[t]his 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. (quoting Johns Manville Corp., IPR2015–01453, Paper 16, slip op. at 3).
`In this case, Patent Owner contends that there is good cause to
`authorize a subpoena for Mr. Butler’s cross-examination because “the
`3
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`purported webpage archival addressed in Ex. 1012 occurred in 2004—before
`Mr. Butler’s employment began in 2009.” Mot. 6. We are not persuaded,
`however, that compelled testimony related to the start date of Mr. Butler’s
`employment would yield any additional useful information. That Mr. Butler
`began employment in 2009 does not seem to be in dispute (see Opp. 4), and
`Patent Owner does not explain how further clarification as to the start date of
`Mr. Butler’s employment is relevant in this case.
`Patent Owner contends that it “believes that Mr. Butler ‘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’” and that “the Wayback Machine remains “not
`searchable.’” Mot. 6. We are not persuaded that compelled testimony on
`either of these points would yield useful information. Other than indicate
`that the Board has compelled the testimony of Mr. Butler in cases with
`similar facts, Patent Owner does not explain how further clarification on
`either of these topics is of particular importance or relevant in this case.
`Mot. 5–6 (citing Johns Manville Corp., IPR2015-01453, Paper 36). We note
`that Mr. Butler’s testimony does not aver that he has personal knowledge as
`to whether the printouts attached to his affidavit were actually posted at an
`accessible location on the Internet; Mr. Butler’s testimony instead is directed
`to the general workings of the Internet Archive’s Wayback Machine.
`Patent Owner also contends that “the website Mr. Butler seeks to
`authenticate was purportedly obtained (‘crawled’) by an independent third
`party (Alexa Crawls), not by Mr. Butler’s employer, the Internet Archive.”
`Mot. 6 (citing Ex. 2128). As Patent Owner notes, however, “Mr. Butler
`admits to having no knowledge of the operations of ‘Alexa Internet.’”
`
`4
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`Mot. 7 (citing Ex. 2129, 19:12–16); see also Ex. 1012, 1 (Mr. Butler
`testifying that the Wayback Machine is compiled using such crawlers) (cited
`at Opp. 5). Accordingly, that the Internet Archive uses Alexa Crawls is not
`disputed and Patent Owner does not explain how cross-examination
`testimony on the matter would yield useful information.
`In view of the above, we determine that Patent Owner has not met its
`burden of showing that it should be authorized to compel testimony from
`Mr. Butler on any issue identified in its Motion. To the extent that Patent
`Owner’s Motion makes requests outside the scope of our Order authorizing
`Patent Owner’s motion, such requests are also denied for being outside the
`scope of our authorization. See, e.g., Mot. 2 (Patent Owner requesting that
`we order Petitioner to subpoena Mr. Butler for cross-examination).
`We note, however, that cross-examination of Mr. Butler is authorized
`as routine discovery and we will consider the absence of cross-examination
`of Mr. Butler when determining the weight, if any, to be given to his
`Affidavit testimony (Ex. 1012). As the proponent of the testimony, if
`Mr. Butler is not made available for cross-examination, Petitioner “runs the
`risk that the direct testimony will not be considered.” Coastal Indus., Inc. v.
`Shower Enclosures Am., Inc., Case IPR2017-00573, slip op. at 4 (PTAB
`Feb. 20, 2018) (Paper 27) (quoting Int’l Bus. Machs. Corp. v. Intellectual
`Ventures II LLC, Case IPR2015-01322, slip op. at 3 (PTAB Feb. 2, 2016)
`(Paper 15)). Rather than jointly seeking a motion to compel, however,
`Petitioner has opted to oppose Patent Owner’s Motion.
`
`5
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that that Patent Owner’s Motion to Compel (Paper 33) is
`denied.
`
`PETITIONER:
`
`Brandon M. White
`Emily J. Greb
`PERKINS COIE LLP
`bmwhite@perkinscoie.com
`egreb@perkinscoie.com
`
`PATENT OWNER:
`
`Barbara C. McCurdy
`Mark J. Feldstein
`Erin M. Sommers
`Pier D. DeRoo
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`barbara.mccurdy@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`
`
`
`
`6
`
`
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