`Filed: May 13, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`ALTAIRE PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`PARAGON BIOTECK, INC.,
`Patent Owner.
`_____________________________
`
`Case PGR2015-00011
`Patent 8,859,623
`
`_____________________________
`
`
`
`PARAGON’S OBJECTIONS TO UNTIMELY REPLY EVIDENCE
`
`
`
`Case PGR2015-00011
`Patent 8,859,623
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Paragon BioTeck, Inc.
`
`(“Paragon”) objects to Exhibit 1025 (Declaration No. 3 of Assad Sawaya), Exhibit
`
`1027 (TMQC# 247-01), Exhibit 1028 (TMQC# 247-00), Exhibit 1029 (Declaration
`
`of Rashid Zaman), Exhibit 1030 (STU0346), Exhibit 1031 (Transmittal letter from
`
`M. Sawaya to L. Bluett), Exhibit 1032 (Declaration No. 2 of Michael Sawaya),
`
`Exhibit 1033 (Email from L. Bluett to M. Sawaya), and Exhibit 1035 (Orange
`
`Book listing for U.S. Patent No. 8,859,623), all as filed by Petitioner Altaire
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`Pharmaceuticals, Inc. (“Petitioner”) with Petitioner’s Reply on May 6, 2016,
`
`because each identified Exhibit is untimely, irrelevant, unduly prejudicial, and
`
`improper under the Board’s rules governing the conduct of the present proceeding.
`
`The above-identified Exhibits were filed with Petitioner’s Reply on May 6,
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`2016 in violation of 37 C.F.R. § 42.204(b), including § 42.204(b)(5), which
`
`requires, inter alia, that all evidence relied on to support a ground of challenge in a
`
`PGR be identified in the Petition. See also 35 U.S.C. § 322(a)(3) (same). The
`
`untimely filing of the above-identified Exhibits is further in violation of 37 C.F.R.
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`§ 42.23(b) which requires that all arguments be made in the Petition and limits the
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`permissible scope of Reply. See also 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012)
`
`(“Oppositions and replies may rely upon appropriate evidence to support the
`
`positions asserted. Reply evidence, however, must be responsive and not merely
`
`new evidence that could have been presented earlier to support the movant’s
`
`
`
`-1-
`
`
`
`Case PGR2015-00011
`Patent 8,859,623
`
`motion.” (emphasis added). The above-identified Exhibits, including the three
`
`declarations containing new testimonial evidence, are improper because they
`
`address issues that were required to be addressed in Petitioner’s Petition. See
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. 2015-1693, slip op at
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`16 (Fed. Cir. May 9, 2016) (“It is of the utmost importance that petitioners in the
`
`IPR proceedings adhere to the requirement that the initial petition identify ‘with
`
`particularity’ the ‘evidence that supports the grounds for the challenge to each
`
`claim.’ 35 U.S.C. § 312(a)(3). ‘All arguments for the relief requested in a motion
`
`must be made in the motion. A reply may only respond to arguments raised in the
`
`corresponding opposition or patent owner response.’ 37 C.F.R. § 42.23(b).”).
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`Paragon further objects to the above-identified Exhibits as irrelevant and
`
`inadmissible under Fed. R. Evid. 401/402, because they do not have any tendency
`
`to make any fact of consequence in this proceeding more or less probable than it
`
`would be without the evidence, including because they were not timely submitted.
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`Patent Owner further objects to the above-identified Exhibits under Fed. R.
`
`Evid. 403, to the extent determined relevant, because any probative value is
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`substantially outweighed by a danger of unfair prejudice, confusing the issues,
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`undue delay, and wasting time and resources, including because they were not
`
`timely submitted.
`
`
`
`-2-
`
`
`
`
`
`Date: May 13, 2016
`
`
`
`
`
`
`Case PGR2015-00011
`Patent 8,859,623
`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`-3-
`
`
`
`CERTIFICATE OF SERVICE
`
`Case PGR2015-00011
`Patent 8,859,623
`
`The undersigned certifies that the foregoing PARAGON’S OBJECTIONS
`
`TO UNTIMELY REPLY EVIDENCE was served on May 13, 2016 on the
`
`Petitioner at the correspondence address of the Petitioner as follows:
`
`Dipu A. Doshi
`Jonathan W. S. England
`Mark J. Thronson
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Tel: (202)420-2604
`Fax: (202)420-2201
`Email: DDoshi@BlankRome.com
`Email: JWEngland@BlankRome.com
`Email: MThronson@BlankRome.com
`
`
`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`
`
`Date: May 13, 2016
`
`
`
`
`
`-4-
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