`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
`
`v.
`
`CORCEPT THERAPEUTICS, INC.,
`Patent Owner
`_______________________
`
`Case PGR2019-00048
`U.S. Patent No. 10,195,214
`_______________________
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`Page
`
`Introduction ...................................................................................................... 1
`I.
`Exhibit 1075 Lacks Foundation and Should Be Excluded .............................. 1
`II.
`III. Conclusion ....................................................................................................... 5
`
`
`
`i
`
`
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`Apotex Inc. v. Celgene Corp.,
`IPR2018-00685, Paper 8 (P.T.A.B. Sept. 27, 2018) ............................................. 2
`Conoco Inc. v. Dep’t of Energy,
`99 F.3d 387 (Fed. Cir. 1996).................................................................................. 1
`Ford Motor Co. v. Versata Dev. Grp.,
`IPR2016-01019, Paper 9 (P.T.A.B. Oct. 4, 2016) ................................................. 2
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) .........................................................................3, 5
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986)............................................................................2, 5
`Kayak Software Corp. v. International Business Machines Corp.,
`CBM2016-00076, Paper 16 at 8 (P.T.A.B. Dec. 15, 2016) ......................... passim
`Eli Lilly & Co. v. Teva Pharm. Int’l,
`IPR2018-01710, Paper 69 (P.T.A.B. Mar. 31, 2020) ............................................ 4
`Open Text S.A. v. Box, Inc.,
`No. 13-cv-04910, 2015 WL 428365 (N.D. Cal. Jan. 30, 2015) ............................ 1
`
`
`Rules and Regulations
`
`37 C.F.R. § 42.62 ....................................................................................................... 1
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`Fed. R. Evid. 901 ...................................................................................................1, 5
`
`
`Other
`
`Motion to Exclude, Eli Lilly & Co. v. Teva Pharm. Int’l,
`IPR2018-01710, Paper 51 at 6 (P.T.A.B. Dec. 11, 2019) ...................................... 4
`
`
`
`
`ii
`
`
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Patent Owner Corcept
`
`Therapeutics, Inc. (“Patent Owner”) submits this motion to exclude Exhibit 1075.
`
`Patent Owner timely objected to this Exhibit through written Objections to
`
`Evidence on June 11, 2020.
`
`The Federal Rules of Evidence (“FRE”) govern the admissibility of evidence
`
`in post-grant review proceedings. 37 C.F.R. § 42.62. As shown herein, the
`
`challenged exhibit is unauthenticated in violation of FRE 901. Accordingly, the
`
`Board should exclude the objected-to exhibit for the reasons that follow.
`
`II. Exhibit 1075 Lacks Foundation and Should Be Excluded
`
`Exhibit 1075 should be excluded pursuant to FRE 901 because Petitioner has
`
`failed to offer sufficient information establishing its authenticity as a publicly
`
`accessible document as of the priority date of the ’214 patent. The public
`
`accessibility of Exhibit 1075 is an essential part of the foundation analysis under
`
`FRE 901 because “the sufficiency of the foundation evidence must be assessed in
`
`light of the nature of the documents at issue.” Conoco Inc. v. Dep’t of Energy, 99
`
`F.3d 387, 392 (Fed. Cir. 1996); see also Open Text S.A. v. Box, Inc., No. 13-cv-
`
`04910, 2015 WL 428365, *2 (N.D. Cal. Jan. 30, 2015) (granting patentee summary
`
`judgment that a computer program could not be used as prior art because the
`
`accused infringer failed to authenticate the documentary evidence). Patent Owner
`
`
`
`1
`
`
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`objected to Exhibit 1075 in a timely manner, and Petitioner’s efforts to correct the
`
`evidentiary deficiencies with supplemental evidence only serve to highlight why
`
`Exhibit 1075 should be excluded.
`
`Petitioner represents that Exhibit 1075 is a doctoral thesis written by Dr.
`
`Aart Johannes van der Lelij while attending Erasmus University in Rotterdam,
`
`Netherlands. Petitioner has failed to establish that this thesis was publicly
`
`available before the March 2017 priority date. Indeed, while the thesis bears a date
`
`of “Woensdag 27 Mei 1992,” the Board has held on numerous occasions that a
`
`purported copyright or publication date, “standing alone, does not establish public
`
`availability as of that date.” See Apotex Inc. v. Celgene Corp., IPR2018-00685,
`
`Paper 8 at 29-30 (P.T.A.B. Sept. 27, 2018) (citing Ford Motor Co. v. Versata Dev.
`
`Grp., IPR2016-01019, Paper 9 at 5-6 (P.T.A.B. Oct. 4, 2016)). Instead, in order to
`
`prove that a thesis was publicly available, the Petitioner must provide evidence
`
`regarding “when the thesis was indexed in the library catalog” and the “general
`
`library procedure as to indexing, cataloging, and shelving of theses.” In re Hall,
`
`781 F.2d 897, 899 (Fed. Cir. 1986). The Board has therefore held that
`
`“[d]etermining public accessibility of a thesis for prior art purposes requires a
`
`showing of both shelving and meaningful indexing/cataloging” at the relevant
`
`library as of the priority date. Kayak Software Corp. v. International Business
`
`Machines Corp., CBM2016-00076, Paper 16 at 8 (P.T.A.B. Dec. 15, 2016)
`
`
`
`2
`
`
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`(emphasis original). Theses are only meaningfully indexed or cataloged when the
`
`library’s procedure is “sufficient to make them reasonably accessible to the
`
`public.” In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) (holding that “theses
`
`were not accessible to the public because they had not been either cataloged or
`
`indexed in a meaningful way”).
`
`Petitioner has put forth insufficient evidence indicating that Exhibit 1075
`
`was cataloged in any library (and therefore accessible to the public) as of the
`
`priority date. The “evidence” Petitioner provides is a purported email chain
`
`between Petitioner’s counsel and an employee at the National Library of the
`
`Netherlands. See Ex. 1076.1 But as a corporate affiliate of Petitioner (and
`
`
`1 Petitioner also cites Exhibit 1077 to support the public availability of
`
`Exhibit 1075, but Exhibit 1077 is webpage dated 5/21/2020 and provides no
`
`indication that Exhibit 1075 was publicly available (or meaningfully indexed in the
`
`Erasmus University Repository) in 1992 (or any other date before May 2020). At
`
`most, Exhibit 1077 shows that an interested party could have located Exhibit 1075
`
`as of May 2020. The same can be said of the Declaration of William H. Milliken
`
`Pursuant to 37 C.F.R. § 42.64, which merely states that attorney Milliken
`
`“obtained” Exhibit 1075 on May 21, 2020.
`
`
`
`3
`
`
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`Petitioner’s lead counsel) recently argued before the Board, relying on an email
`
`from a library employee to establish public availability of a thesis is:
`
`[T]he epitome of hearsay. It is an out-of-court statement
`(an email) offered to prove the truth of whether [the
`library] made the [challenged] thesis publicly available.
`
`See Motion to Exclude, Eli Lilly & Co. v. Teva Pharm. Int’l, IPR2018-01710,
`
`Paper 51 at 6 (P.T.A.B. Dec. 11, 2019). On the basis of these arguments, the
`
`Board refused to consider an email similar to Exhibit 1076 in its analysis of the
`
`public availability of the thesis at issue in that proceeding. See IPR2018-01710,
`
`Paper 69 at 157 (P.T.A.B. Mar. 31, 2020). Here too, the Board should refuse to
`
`consider the hearsay contained within Exhibit 1076 to establish the public
`
`availability of Exhibit 1075.
`
`Even if Petitioner could rely on Exhibit 1076, Petitioner has still failed to
`
`establish the public availability of Exhibit 1075. The email simply states:
`
`The physical thesis was included in the Central Catalog of
`Dutch libraries on 11-05-1992. This thesis is part of our
`library collection since 25-06-1992. It is present at several
`libraries in the Netherlands. The online copy is registered
`in the Central Catalog of Dutch libraries on 23-04-2013.
`
`Ex. 1076 at 1. These statements, even if accepted for their truth, do not establish
`
`the public availability of Exhibit 1075. The law is clear: “Determining public
`
`accessibility of a thesis for prior art purposes requires a showing of both shelving
`
`and meaningful indexing/cataloging.” Kayak Software, CBM2016-00076, Paper
`
`
`
`4
`
`
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`16 at 8 (emphasis original). Exhibit 1076 states that “[t]he physical thesis was
`
`included in the Central Catalog of Dutch libraries on 11-05-1992,” but Petitioner
`
`has failed to offer any evidence of what it means to be “included” in the “Central
`
`Catalog of Dutch libraries” or that “included” means that the thesis was “accessible
`
`to the public.” In re Cronyn, 890 F.2d at 1161.2 This is why the Federal Circuit
`
`requires evidence regarding “general library procedure as to indexing, cataloging,
`
`and shelving of theses” – evidence that Petitioner has failed to provide. In re Hall,
`
`781 F.2d at 899. Exhibit 1076, standing alone, does not indicate that Exhibit 1075
`
`was meaningfully catalogued (so that persons of ordinary skill in the art could find
`
`it) before the critical date.
`
`Accordingly, Petitioner has not established sufficient foundation for Exhibit
`
`1075 under FRE 901, and it should be excluded from this proceeding.
`
`III. Conclusion
`
`For the foregoing reasons, the challenged evidence does not meet the
`
`threshold for admissibility and should be excluded from the record.
`
`
`
`
`2 Likewise, Exhibit 1076 provides no indication that registration of an
`
`online copy of the thesis “in the Central Catalog of Dutch libraries” would have
`
`allowed a member of the public to access the thesis as of the priority date.
`
`
`
`5
`
`
`
`Date: July 30, 2020
`
`Respectfully Submitted,
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`
`
`
`F. Dominic Cerrito (Reg. No. 38,100)
`Eric C. Stops (Reg. No. 51,163
`Daniel C. Wiesner (pro hac vice)
`Frank C. Calvosa (Reg. No. 69,064)
`John Galanek (Reg. No. 74,512)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`ericstops@quinnemanuel.com
`danielwiesner@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`johngalanek@quinnemanuel.com
`
`Counsel for Patent Owner
`
`
`
`
`6
`
`
`
`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on the date indicated below a copy of the
`
`foregoing Patent Owner’s Motion to Exclude was served electronically by filing
`
`these documents through the PTAB E2E System, as well as by e-mailing copies to
`
`counsel of record for Petitioners at dsterling-PTAB@sternekessler.com,
`
`opartington-PTAB@sternekessler.com, jcrozendaal-PTAB@sternekessler.com,
`
`ueverett-PTAB@sternekessler.com, wmilliken-PTAB@sternekessler.com.
`
`Date: July 30, 2020
`
`Respectfully Submitted,
`
`
`
`F. Dominic Cerrito (Reg. No. 38,100)
`Eric C. Stops (Reg. No. 51,163
`Daniel C. Wiesner (pro hac vice)
`Frank C. Calvosa (Reg. No. 69,064)
`John Galanek (Reg. No. 74,512)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`ericstops@quinnemanuel.com
`danielwiesner@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`johngalanek@quinnemanuel.com
`Counsel for Patent Owner
`
`
`
`
`
`
`
`