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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`GRÜNENTHAL GMBH,
`Petitioner
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner
`
`______________________
`
`Case PGR2019-00028
`U.S. Patent No. 10,052,338
`______________________
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S REPLY
`EVIDENCE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner hereby submits the
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`following objections to the evidence Petitioner filed with its Reply dated January
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`13, 2020. Patent Owner’s objections apply equally to Petitioner’s reliance on these
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`Exhibits in any subsequently filed documents in this proceeding.
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`Ex. 1040
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`Patent Owner objects that this document constitutes evidence having no
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`tendency to make a fact of consequence more or less probable than it would be
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`without the evidence. Petitioner concedes that it is not relying on Internet
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`publication of Varenna 2011 (Ex. 1006) and is instead “relying on the actual
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`printing and circulation of the journal issue to establish Varenna 2011 as prior art.”
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`(Reply, 11 n. 3.) This document states nothing about actual printing or circulation,
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`nor does it suggest anything about whether or how a person of ordinary skill in the
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`art could have located Varenna 2011 (Ex. 1006) before the priority date. This
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`document is therefore irrelevant under Fed. R. Evid. 401 and inadmissible under
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`Fed. R. Evid. 402.
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`Alternatively, if the document is deemed relevant, Patent Owner objects to it
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`as untimely evidence that Petitioner could have included with the Petition, in that it
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`purports to establish facts necessary for Petitioner to make a prima facie showing
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`that Exhibit 1006 qualifies as a “printed publication” under 35 U.S.C. § 102.
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`2
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`Petitioner elected to present no argument and no evidence with the Petition to show
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`that Varenna 2011 was disseminated before the priority date. It is a violation of the
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`rules and the Consolidated Trial Practice Guide for Petitioner to present such
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`evidence and argument for the first time in its Reply. 37 C.F.R. 42.23(b); Guide,
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`73-75. This document should be excluded or disregarded accordingly.
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`Ex. 1043
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`Patent Owner objects that this document constitutes evidence having no
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`tendency to make a fact of consequence more or less probable than it would be
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`without the evidence. The declarant’s retrieval of the reference (Ex. 1007) from a
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`library in December 2017, many years after the priority date for the patent at issue,
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`has no bearing upon whether Ex. 1007 was disseminated or otherwise available to
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`the public such that persons of ordinary skill in the art exercising reasonable
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`diligence could have located it before the priority date. In addition, the declarant
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`represents himself to be a specialist in “document retrieval and delivery of medical
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`and biomedical articles obtained from the National Institutes of Health National
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`Library of Medicine” and does not purport to convey any information about the
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`ability of reasonably diligent persons of ordinary skill in the art pertaining to the
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`patent at issue, and lacking his level of research expertise. The declarant does not
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`purport to be a person having ordinary skill in the art of the patent at issue, or to
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`3
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`have an understanding of the knowledge of such a person. Furthermore, the ability
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`to locate or retrieve a reference by name is not relevant to whether a person of
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`ordinary skill in the art researching the subject matter could have located the
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`reference before the priority date. The declarant provides no information to suggest
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`that he or any other person could have located the reference using a subject matter
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`search. The declarant does not testify that the NLM was a resource to which
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`persons of ordinary skill in the art would have turned before the priority date when
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`researching the subject matter of the patent at issue. The declarant does not provide
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`any information about the library’s cataloguing and indexing system other than to
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`state that he “requested the specific issue containing Muratore.” None of this
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`information tends to make it any more likely that Muratore was accessible before
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`the priority date such that persons of skill in the art could have located it when
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`researching the subject matter. This document is therefore irrelevant under Fed. R.
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`Evid. 401 and inadmissible under Fed. R. Evid. 402. To the extent deemed
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`relevant, the document is inadmissible under Fed. R. Evid. 403 because its
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`probative value is substantially outweighed by a danger of unfair prejudice,
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`confusing the issues, or misleading the Board.
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`Patent Owner objects that the testimony presented in this document includes
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`matters beyond the witness’s personal knowledge. The declarant speculates at ¶ 7,
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`4
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`for example, as to the meaning of the library’s markings applied to the reference.
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`The declarant admits his testimony is based on inference and not on first-hand
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`information. The declarant does not state, for example, that he has worked for the
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`library, or read any of its policies vis-à-vis date stamps and intake and shelving, or
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`had any conversations with any person having such knowledge. It is pure
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`speculation to then declare that Muratore or other date-stamped materials are
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`“added to the NLM’s General Collection—and therefore available and accessible
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`to the public … within 7-10 days of receipt of the publication.” Such testimony is
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`made without personal knowledge and is inadmissible under Red. R. Evid. 602.
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`Alternatively, if the document is deemed relevant and the testimony based
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`on personal knowledge, Patent Owner objects to it as untimely evidence that
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`Petitioner could have included with the Petition, in that it purports to establish facts
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`necessary for Petitioner to make a prima facie showing that Exhibit 1007 qualifies
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`as a “printed publication” under 35 U.S.C. § 102. Petitioner elected to present no
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`argument and no evidence with the Petition to show that Muratore was
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`disseminated or otherwise made available before the priority date such that
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`reasonably diligent and interested persons of skill in the art could have located it. It
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`is a violation of the rules and the Consolidated Trial Practice Guide for Petitioner
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`to present such evidence and argument for the first time in its Reply. 37 C.F.R.
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`5
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`42.23(b); Guide, 73-75. This document should be excluded or disregarded
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`accordingly.
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`Ex. 1044
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`Patent Owner objects that this document constitutes evidence having no
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`tendency to make a fact of consequence more or less probable than it would be
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`without the evidence. Nothing in the declaration, including the testimony that Gatti
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`(Exhibit 1008) was posted to a website, tends to show that the reference was
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`meaningfully indexed such that an interested artisan exercising reasonable
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`diligence before the priority date would have found it. Nothing in the declaration
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`tends to show that the website was one to which persons of ordinary skill in the art
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`would have turned when researching the subject matter of the patent at issue before
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`the priority date. The declarant does not purport to be a person having ordinary
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`skill in the art of the patent at issue, or to have an understanding of the knowledge
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`of such a person, and thus cannot convey any information about the ability of
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`reasonably diligent persons of ordinary skill in the art to locate Gatti before the
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`priority date. Nothing in the testimony tends to make any more or less probable
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`that Gatti was accessible before the priority date such that persons of skill in the art
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`could have located it when researching the subject matter. This document is
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`therefore irrelevant under Fed. R. Evid. 401 and inadmissible under Fed. R. Evid.
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`6
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`402. To the extent deemed relevant, the document is inadmissible under Fed. R.
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`Evid. 403 because its probative value is substantially outweighed by a danger of
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`unfair prejudice, confusing the issues, or misleading the Board.
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`Alternatively, if the document is deemed relevant, Patent Owner objects to it
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`as untimely evidence that Petitioner could have included with the Petition, in that it
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`purports to establish facts necessary for Petitioner to make a prima facie showing
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`that Exhibit 1008 qualifies as a “printed publication” under 35 U.S.C. § 102.
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`Petitioner elected to present no argument and no evidence with the Petition to show
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`that Gatti was disseminated or otherwise made available before the priority date
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`such that reasonably diligent and interested persons of skill in the art could have
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`located it. It is a violation of the rules and the Consolidated Trial Practice Guide
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`for Petitioner to present such evidence and argument for the first time in its Reply.
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`37 C.F.R. 42.23(b); Guide, 73-75. This document should be excluded or
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`disregarded accordingly.
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`Ex. 1045
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`Patent Owner objects that this document constitutes evidence having no
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`tendency to make a fact of consequence more or less probable than it would be
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`without the evidence. The declarant does not purport to be a person having
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`ordinary skill in the art of the patent at issue, or to have an understanding of the
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`7
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`knowledge of such a person, and thus cannot convey any information about the
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`ability of reasonably diligent persons of ordinary skill in the art to locate Varenna
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`2011 (Ex. 1006) before the priority date. The testimony purports to present
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`evidence of the dissemination of Varenna 2011, but provides none of the
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`information required to support a showing of accessibility via dissemination, such
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`as evidence that it was publicized or placed in front of the interested public. The
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`declarant provides no testimony, for example, that the reference was announced,
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`read, or handed out at the conference, or that the publisher’s booth was positioned
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`such that conference-goers would visit it, or that the conference attendees would
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`understand the teachings of the reference. Nothing in the testimony tends to make
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`any more or less probable that Varenna 2011 was disseminated before the priority
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`date. This document is therefore irrelevant under Fed. R. Evid. 401 and
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`inadmissible under Fed. R. Evid. 402. To the extent deemed relevant, the document
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`is inadmissible under Fed. R. Evid. 403 because its probative value is substantially
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`outweighed by a danger of unfair prejudice, confusing the issues, or misleading the
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`Board.
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`Patent Owner objects to paragraph 5 of this document as constituting
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`inadmissible hearsay. Specifically, the statement “this internal documentation
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`could not be provided due to privacy concerns” was not made by a declarant
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`8
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`testifying under oath in connection with the present trial, but Petitioner offers in
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`evidence to prove the truth of the matter asserted in the statement. The statement
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`was made by an unidentified third party with whom the declarant purports to have
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`spoken. This statement constitutes hearsay under Fed. R. Evid. 801 and is
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`inadmissible under Fed. R. Evid. 802.
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`Patent Owner objects to Exhibit 1 attached to Exhibit 1045 as constituting
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`inadmissible hearsay. Specifically, the attachment purports to be a declaration but
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`is not made by an individual, but rather by a company, and is not signed under oath
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`and does not qualify as a sworn declaration or affidavit under United States law
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`(28 U.S.C. § 1746). It is a statement not made by a declarant testifying under oath
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`in connection with the present trial that Petitioner offers in evidence to prove the
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`truth of the matter asserted in the statement. The statement in Exhibit 1 was made
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`by an unsworn and unidentified out-of-court declarant and constitutes hearsay
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`under Fed. R. Evid. 801 and is inadmissible under Fed. R. Evid. 802.
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`Alternatively, if the document and attachment are deemed relevant and
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`admissible over hearsay objections, Patent Owner objects to Exhibit 1045 as
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`untimely evidence that Petitioner could have included with the Petition, in that it
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`purports to establish facts necessary for Petitioner to make a prima facie showing
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`that Exhibit 1006 qualifies as a “printed publication” under 35 U.S.C. § 102.
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`9
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`Petitioner elected to present no argument and no evidence with the Petition to show
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`that Varenna 2011 was disseminated before the priority date. It is a violation of the
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`rules and the Consolidated Trial Practice Guide for Petitioner to present such
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`evidence and argument for the first time in its Reply. 37 C.F.R. 42.23(b); Guide,
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`73-75. This document should be excluded or disregarded accordingly.
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`Ex. 1046
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`Patent Owner objects to this document, a translation of the attachment
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`(Exhibit 1) to Exhibit 1045, for the same reasons stated above with respect to
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`Exhibit 1045. Specifically, Patent Owner objects that this document constitutes
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`evidence having no tendency to make a fact of consequence more or less probable
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`than it would be without the evidence. The declarant does not purport to be a
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`person having ordinary skill in the art of the patent at issue, or to have an
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`understanding of the knowledge of such a person, and thus cannot convey any
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`information about the ability of reasonably diligent persons of ordinary skill in the
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`art to locate Varenna 2011 (Ex. 1006) before the priority date. The testimony
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`purports to present evidence of the dissemination of Varenna 2011, but provides
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`none of the information required to support a showing of accessibility via
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`dissemination, such as evidence that it was publicized or placed in front of the
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`interested public. The declarant provides no testimony, for example, that the
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`10
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`reference was announced, read, or handed out at the conference, or that the
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`publisher’s booth was positioned such that conference-goers would visit it, or that
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`the conference attendees would understand the teachings of the reference. Nothing
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`in the testimony tends to make any more or less probable that Varenna 2011 was
`
`disseminated before the priority date. This document is therefore irrelevant under
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`Fed. R. Evid. 401 and inadmissible under Fed. R. Evid. 402. To the extent deemed
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`relevant, the document is inadmissible under Fed. R. Evid. 403 because its
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`probative value is substantially outweighed by a danger of unfair prejudice,
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`confusing the issues, or misleading the Board.
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`Patent Owner objects to this document as constituting inadmissible hearsay.
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`Specifically, it purports to be a translation of a declaration, but one made by a
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`company and not by an individual, and one not signed under oath. It is a translation
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`of a document that does not qualify as a sworn declaration or affidavit under
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`United States law (28 U.S.C. § 1746). It is also a translation of a statement not
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`made by a declarant testifying under oath in connection with the present trial that
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`Petitioner offers in evidence to prove the truth of the matter asserted in the
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`statement. The translated statement constitutes hearsay under Fed. R. Evid. 801
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`and is inadmissible under Fed. R. Evid. 802.
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`11
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`Alternatively, if the translated statement is deemed relevant and admissible
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`over hearsay objections, Patent Owner objects to Exhibit 1046 as untimely
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`evidence that Petitioner could have included with the Petition, in that it purports to
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`establish facts necessary for Petitioner to make a prima facie showing that Exhibit
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`1006 qualifies as a “printed publication” under 35 U.S.C. § 102. Petitioner elected
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`to present no argument and no evidence with the Petition to show that Varenna
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`2011 was disseminated before the priority date. It is a violation of the rules and the
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`Consolidated Trial Practice Guide for Petitioner to present such evidence and
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`argument for the first time in its Reply. 37 C.F.R. 42.23(b); Guide, 73-75. This
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`document should be excluded or disregarded accordingly.
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`Ex. 1047
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`Patent Owner objects that this document constitutes evidence having no
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`tendency to make a fact of consequence more or less probable than it would be
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`without the evidence. It has no bearing upon the determination of whether
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`Drummond (Ex. 1010) was disseminated or otherwise made available before the
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`priority date such that reasonably diligent and interested persons of skill in the art
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`could have located it. This document is therefore irrelevant under Fed. R. Evid.
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`401 and inadmissible under Fed. R. Evid. 402.
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`12
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`Alternatively, if the document is deemed relevant, Patent Owner objects to
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`Exhibit 1047 as untimely evidence that Petitioner could have included with the
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`Petition, in that it purports to establish facts necessary for Petitioner to make a
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`prima facie showing that Exhibit 1010 qualifies as a “printed publication” under 35
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`U.S.C. § 102. Petitioner elected to present no argument and no evidence with the
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`Petition to show that Drummond was disseminated or otherwise made available
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`before the priority date such that reasonably diligent and interested persons of skill
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`in the art could have located it. It is a violation of the rules and the Consolidated
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`Trial Practice Guide for Petitioner to present such evidence and argument for the
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`first time in its Reply. 37 C.F.R. 42.23(b); Guide, 73-75. This document should be
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`excluded or disregarded accordingly.
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`13
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`Dated: January 21, 2020
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`Respectfully submitted,
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`MASCHOFF BRENNAN, PLLC
`By /R. Parrish Freeman/
` R. Parrish Freeman, Reg. No. 42,556
`pfreeman@mabr.com
`1389 Center Dr., Suite 300
`Park City, Utah 84098
`Telephone: (435) 252-1360
`Facsimile: (435) 252-1361
`
`Brent A. Johnson, Reg. No. 51,851
`bjohnson@mabr.com
`20 Pacifica, Suite 1130
`Irvine, California 92618
`Telephone: (949) 202-1900
`Facsimile: (949) 453-1104
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`
`
`
`Attorneys for Patent Owner
`ANTECIP BIOVENTURES II LLC
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`14
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`Case PGR2019-00028
`U.S. Patent No. 10,052,338
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6, I hereby certify that on this January 21, 2020,
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`the foregoing PATENT OWNER’S OBJECTIONS TO PETITIONER’S
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`REPLY EVIDENCE was served via electronic mail on the following counsel of
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`record for Petitioner.
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`Daniel J. Minion, Registration No. 53,329
`Bruce C. Haas, Registration No. 32,734
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: 212-218-2100
`Fax: 212-218-2200
`DMinion@Venable.com
`BCHaas@Venable.com
`GrunenthalPGR@Venable.com
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` By: /R. Parrish Freeman/
`R. Parrish Freeman, Reg. No. 42,556
`MASCHOFF BRENNAN, PLLC
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`15
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