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 PGR2021-00003
`
`U.S. Patent No. 10,596,276
`______________________
`
`PATENT OWNER’S AUTHORIZED SUR-REPLY
`
`
`
`
`
`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 PGR2021-00003
`
`U.S. Patent No. 10,596,276
`______________________
`
`PATENT OWNER’S AUTHORIZED SUR-REPLY
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Pages
`
`
`Cases
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ............................................................................ 1
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) ............................................................................ 2
`Celltrion, LLC v. Biogen, Inc.,
`No. IPR2017-01230, Paper 10 (PTAB Oct. 12, 2017) ......................................... 3
`Cisco Sys., Inc. v. Centripetal Networks, Inc.,
`No. IPR2018-01506, Paper 10 (PTAB Oct. 7, 2019) ........................................... 3
`Cornell Univ. v. Hewlett-Packard Co.,
`No. 01-CV-1974, 2008 WL 11274580 (N.D.N.Y. May 14, 2008) ...................... 1
`Fanduel, Inc. v. Interactive Games LLC,
`966 F.3d 1334 (Fed. Cir. 2020) ............................................................................ 3
`Google LLC v. IPA Techs. Inc.,
`No. IPR2018-00476, Paper 12 (PTAB Dec. 20, 2018) ........................................ 2
`In re Hall,
`781 F.2d 897-99 (Fed. Cir. 1986) ......................................................................... 3
`Incyte Corp. v. Concert Pharm., Inc.,
`No. IPR2017-01256, Paper 119 (PTAB Apr. 8, 2019) ........................................ 2
`Rules
`Fed. R. Evid. 802, 805 ............................................................................................... 3
`
`
`
`
`
`
`ii
`
`
`
`
`
`Evergreen had the burden to establish the Protocol (Ex. 1012) as prior art in
`
`its petition. It has failed to carry that burden because, among other things, Evergreen
`
`cannot show the Protocol was more likely than not publicly accessible. Now
`
`admitting the Protocol is a separate document from Strosberg (Ex. 1011), Evergreen
`
`pivots to argue for the first time that Strosberg is a “research aid” for the Protocol.
`
`But Strosberg lacks any definite reference to the Protocol, nor does it have directions
`
`for one to follow to reach the Protocol. Evergreen’s lawyers testify concerning
`
`“supplemental material” generally, without personal knowledge or foundation. Plus,
`
`this lawyer testimony ignores the contrary record facts previously highlighted.
`
`Evergreen’s assertion that it is “not disputed…that following the instruction
`
`of [Strosberg] led to the Protocol” is false: Patent Owner identified substantial
`
`contrary evidence. Strosberg only generically refers to a “protocol” providing two
`
`specific locations to two other documents: one found at the “clinicaltrial.gov” URL
`
`provided under the abstract, and the other found within the cited “Supplemental
`
`Appendix.” Paper 6 at 55–57. Never does Strosberg refer explicitly to the Protocol.
`
`Strosberg neither provides a URL for it, nor describes it, nor how to get to it in any
`
`definite way. A “research aid” must “provide a skilled artisan with a sufficiently
`
`definite roadmap” which “is reasonably certain” to lead the artisan to the alleged
`
`prior art. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1350 (Fed. Cir. 2016).
`
`Cases illuminate what comprises such a definite roadmap. See Cornell Univ.
`
`1
`
`
`
`v. Hewlett-Packard Co., No. 01-CV-1974, 2008 WL 11274580, at *5–7 (N.D.N.Y.
`
`May 14, 2008) (article was a research aid where it explicitly cited the alleged prior
`
`art); Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378–79 (Fed. Cir. 2006)
`
`(patent was a research aid for its application to which it explicitly referred); Incyte
`
`Corp. v. Concert Pharm., Inc., No. IPR2017-01256, Paper 119 at 17 (PTAB Apr. 8,
`
`2019) (article was a research aid where it had “the precise website URL…link to the
`
`reference”). Strosberg provides no roadmap to the Protocol, and instead, points
`
`elsewhere by clearly referencing two other, different “protocols.” Paper 6 at 55–57.
`
`Tellingly, Evergreen offers no testimony that anyone used Strosberg in 2017
`
`(one year prior to the Patent’s priority date) to find the Protocol. See Google LLC v.
`
`IPA Techs. Inc., No. IPR2018-00476, Paper 12 at 10 (PTAB Dec. 20, 2018)
`
`(affirming Moran was not a “research aid” because “no proof that the web address
`
`in Moran would have led to Cheyer”). Although given this chance on reply,
`
`Evergreen ignores the contrary facts Patent Owner set out: the Protocol cross-
`
`references Strosberg as if the Protocol was published after Strosberg; and the
`
`Protocol is marked confidential and may have been redacted. Paper 6 at 47–61.
`
`Instead, Evergreen offers lawyer testimony attaching portions of emails it had
`
`with the NEJM long before its petition was filed. One attachment indicates some
`
`copying and pasting from emails ostensibly received from the NEJM staff. See Ex.
`
`A to Ex. 1037. This appears to be multiple hearsay and as such is unreliable. See
`
`2
`
`
`
`Fed. R. Evid. 802, 805; see also Cisco Sys., Inc. v. Centripetal Networks, Inc., No.
`
`IPR2018-01506, Paper 10 at 7 (PTAB Oct. 7, 2019) (institution denied where cited
`
`evidence “is hearsay for the purpose of establishing…public [accessibility] and is
`
`not reliable evidence”); Celltrion, LLC v. Biogen, Inc., No. IPR2017-01230, Paper
`
`10 at 15–16 (PTAB Oct. 12, 2017). Evergreen’s strategic decision to omit these
`
`materials from their petition should invoke a negative inference. Such omission is
`
`understandable, since these materials: lack personal knowledge and corroborating
`
`evidence; do not refer to the Protocol itself (as opposed to “supplemental material”
`
`generally); fail to say when the Protocol was posted; fail to address whether the
`
`Protocol was redacted, and if so when; and fail to explain why the cover page of the
`
`Protocol refers to the page numbers of Strosberg as if it was already published.
`
`Evergreen’s burden to prove the art it relies upon is prior remains Evergreen’s
`
`alone. See Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1341–42 (Fed.
`
`Cir. 2020). Evergreen cites In re Hall but the mere undisputed lack of rebuttal there
`
`was of no moment while the court relied on evidence of “indexing, cataloging, and
`
`shelving of theses[.]” In re Hall, 781 F.2d 897, 897–99 (Fed. Cir. 1986). Evergreen
`
`admits it lacks such evidence here, pivoting now to a “research aid” theory, but lacks
`
`factual support necessary for a “definite roadmap.” Through it all, Evergreen leaves
`
`unanswered the numerous conflicting record facts Patent Owner has highlighted.
`
`Patent Owner respectfully requests denial of institution.
`
`3
`
`
`
`Respectfully submitted,
`
`
`
`Dated: February 26, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Jane M. Love, Ph.D./
`Jane M. Love, Ph.D.
`Reg. No. 42,812
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 4.26, I hereby certify that on February 26, 2021, a true
`
`and accurate copy of the foregoing Sur-Reply in support of Patent Owner
`
`Preliminary Response for PGR2021-00003 was 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
`
`Dated: February 26, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
