UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`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
`
`
`
`
`
`
`______________________
`
`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
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
