`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`EVERGREEN THERAGNOSTICS, INC.,
`
`Petitioner,
`
`v.
`
`ADVANCED ACCELERATOR APPLICATIONS S.A.,
`
`Patent Owner.
`
`______________________
`
`Case PGR2021-00001
`
`U.S. Patent No. 10,596,278
`______________________
`
`
`PATENT OWNER RESPONSE TO PETITIONER’S EXPLANATION OF
`PARALLEL PETITIONS
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`I.
`
`Evergreen’s PGR2021-00002 Petition Should Be Denied For Improper
`Parallel Petitioning if the PGR2021-00001 Petition Is Instituted
`
`Evergreen has filed two separate petitions challenging the ’278 patent: (1)
`
`PGR2021-00001 (the “Protocol petition,” relying on the Protocol document as a
`
`putatively-anticipatory reference, and also relying on the Maus article and various
`
`ancillary references to argue obviousness, and (2) PGR2021-00002 (the “Maus
`
`petition”), relying primarily on the Maus article as the principal basis for both
`
`anticipation and obviousness arguments. Recognizing that institution of multiple
`
`petitions challenging a single patent is disfavored, Evergreen filed an “Explanation”
`
`paper in hopes of justifying this extraordinary request. But Evergreen has made no
`
`persuasive showing justifying the institution of multiple petitions. The Board should
`
`decline to institute the Maus petition if the Board institutes the Protocol petition, and
`
`vice-versa.
`
`The PTO’s November 2019 Consolidated Trial Practice Guide (“TPG”) 1
`
`outlines a straightforward principle: one petition is typically sufficient to challenge
`
`the claims of a patent, and exceptions to that rule should be scarce. As the Board
`
`recognizes, multiple petitions not only place a substantial burden on the Board but
`
`also the patent owner. The PTO’s TPG states that:
`
`Based on the Board’s experience, one petition should be sufficient to
`challenge the claims of a patent in most situations. Two or more
`
` 1 https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL= (last
`visited December 26, 2020) (“Trial Practice Guide”)
`
`1
`
`
`
`
`petitions filed against the same patent at or about the same time (e.g.,
`before the first preliminary response by the patent owner) may place a
`substantial and unnecessary burden on the Board and the patent owner
`and could raise fairness, timing, and efficiency concerns. See 35 U.S.C.
`§ 316(b). In addition, multiple petitions by a petitioner are not
`necessary in the vast majority of cases. To date, a substantial majority
`of patents have been challenged with a single petition.
`
`
`Id. at 59. The TPG also affirms that, while circumstances may justify instituting
`
`more than one petition, it “should be rare” for a petitioner to need two petitions. Id.
`
`Accordingly, the Board has repeatedly denied instituting parallel petitions
`
`challenging the same patent. See Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-
`
`01470, Paper 7 (PTAB Feb. 11, 2020); see also Square, Inc. v. 4361423 Canada
`
`Inc., IPR2019-01630, Paper 13 (PTAB Apr. 2, 2020); Apple Inc. v. Seven Networks,
`
`LLC, IPR2020-00281, Paper 10 (PTAB Aug. 14, 2020); Volkswagen Grp. Of Am.,
`
`Inc., v. Carucel Investments, L.P., IPR2019-01106, Paper 8 (PTAB Dec. 2, 2019);
`
`Intel Corp. v. Tela Innovations, Inc., IPR2019-01220, Paper 19 at 4 (PTAB Jan. 30,
`
`2020); Nalox-1 Pharms., LLC v. Opiant Pharms., Inc., IPR2019-00696, Paper 10 at
`
`8–14 (PTAB Oct. 1, 2019). This is not a “rare” case; as explained below,
`
`Evergreen’s excuses for instituting multiple petitions are inadequate.
`
`II. Evergreen’s “Explanation” Does Not Meet Any of the Exceptions
`Outlined in the Trial Practice Guide.
`
`
`
`The TPG itself outlines the “rare” conditions that justify multiple petitions:
`
`[1] when the patent owner has asserted a large number of claims in litigation
`or [2] when there is a dispute about priority date requiring arguments under
`
`2
`
`
`
`
`multiple prior art references. In such cases two petitions by a petitioner may
`be needed, although this should be rare.
`
`
`Trial Practice Guide at 59. Neither exception applies here.
`
`
`
`First, neither Advanced Accelerator Applications, S.A. nor its parent
`
`corporation has asserted any patent claims against Petitioner in any litigation. This
`
`exception is therefore entirely inapplicable. Regardless, Petitioner asserts that
`
`“filing a single petition” is “complicated by the number of claims (25) in the ’278
`
`patent.” Paper 3 at 4. Not so. In Apple Inc. v. Seven Networks, LLC, the Board
`
`denied institution of multiple petitions, noting that “twenty challenged claims” is
`
`“not a large number of claims to address in multiple grounds against.” IPR2020-
`
`00281, Paper 10 (PTAB Aug. 14, 2020). In fact, the Board has denied institution
`
`where a petitioner has challenged more claims than are at issue here. See Nalox-1
`
`Pharms., IPR2019-00696, Paper 10 at 6–14 (denying institution of parallel petitions
`
`challenging thirty claims). The Board’s prior practice shows that twenty-five claims
`
`is not a “large number” that might justify instituting parallel proceedings.
`
`
`
`Second, there is no dispute about the ’278 patent’s priority date. Instead, there
`
`is a dispute regarding whether Petitioner has demonstrated that the Protocol is prior
`
`art. Under this circumstance multiple petitions are discouraged. In Square, Inc. v.
`
`4361423 Canada Inc., the Board explained that the TPG’s exception regarding a
`
`“dispute about priority date” does “not convey that whenever a priority issue is
`
`3
`
`
`
`
`involved, Petitioner is entitled to file two petitions against the same claims of the
`
`same patent.” IPR2019-01630, Paper 13 at 9-10 (PTAB Apr. 2, 2020).
`
`
`
`Recognizing these deficiencies, Evergreen attempts to create a new exception
`
`by arguing that there would have been insufficient space to address unpatentability
`
`under both the Protocol and Maus references in one petition. Paper 3 at 3. But
`
`petitioners frequently assert multiple challenges resting upon different base
`
`references in one petition. See Volkswagen Grp. Of Am., Inc. v. Amerachem
`
`Holdings, LLC, IPR2014-01557, Paper 13 at 3-5 (PTAB Mar. 16, 2015) (petitioner
`
`asserting obviousness grounds based on different primary references); Skechers
`
`U.S.A., Inc. v. Nike, Inc., IPR2017-00620, Paper 13 at 5 (PTAB July 6, 2017) (same).
`
`Evergreen’s only support for abandoning this principle is a conclusory statement that
`
`“word limitations” would make it “not possible,” which carries no weight. Id.
`
`Evergreen admits that the Protocol petition substantially overlaps arguments based
`
`on Maus. Paper 3 at 3 (the Protocol petition still “uses Maus as a secondary
`
`reference” regarding all of its obviousness arguments); see also Paper 2 at
`
`Challenges 2-7. This concession further belies Petitioner’s argument that it would
`
`have been impossible to address both references in a single petition. See Nalox-1
`
`Pharms., LLC v. Opiant Pharms., Inc., IPR2019-00696, Paper 10 at 11 (PTAB Oct.
`
`1, 2019) (denying multiple institutions where “Petitioner’s arguments in the Davies
`
`Petition largely rely on the teachings in Wyse, just as they do in the Wyse Petition”).
`
`4
`
`
`
`
` While Evergreen may want more words with which to raise more grounds
`
`against the same set of claims, such an excuse does not justify instituting multiple
`
`proceedings. For example, in Volkswagen Grp. Of Am., Inc., v. Carucel Investments,
`
`L.P., the petitioner relied on different primary references for its various petitions,
`
`and argued that the petitions thus “recite different theories of unpatentability.”
`
`IPR2019-01106, Paper 8 at 8 (PTAB Dec. 2, 2019). Regardless, the Board
`
`determined that petitioner did “not present an argument that either of the two
`
`exceptional situations described in the Practice Guide are present here.” Id. at 11.
`
`The Board has concluded likewise on other occasions. Apple Inc., IPR2020-00281,
`
`Paper 10 at 9-10 (denying institution of second petition where petitions relied on
`
`different primary reference); see also Paypal, Inc. v. IOENGINE, LLC, IPR2019-
`
`00887, Paper 21 at 17-18 (PTAB Oct. 3, 2019) (denying institution of multiple
`
`petitions where petitions were based on different prior art). Evergreen’s challenges
`
`do not pose one of the “rare” circumstances envisioned by the Board.
`
`Having failed to meet these exceptions to the rule against multiple petitions,
`
`the Board should exercise its discretion to deny the Petition for PGR2021-00002 if
`
`the Board decides to institute this Petition, and vice-versa.
`
`
`
`
`
`
`
`
`
`
`Dated: January 19, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Jane M. Love, Ph.D./
`Jane M. Love, Ph.D.
`Reg. No. 42,812
`
`
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: January 19, 2021
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on January 19, 2021, true
`
`and accurate copies of the foregoing Patent Owner Response to Petitioner’s
`
`Explanation of Parallel Petitions for PGR2021-00001 were served via electronic
`
`mail, on the following counsel of record for Petitioner:
`
`C. Kyle Musgrove, kylemusgrove@parkerpoe.com
`Paul Dietze, pauldietze@parkerpoe.com
`Elizabeth Crompton, elizabethcrompton@parkerpoe.com
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Jane M. Love, Ph.D./
`Jane M. Love, Ph.D.
`Reg. No. 42,812
`
`6
`
`
`