`571.272.7822
`
`
`
`
`
`Paper No. 21
`Filed: September 25, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`COALITION FOR AFFORDABLE DRUGS VI, LLC,
`Petitioner,
`v.
`CELGENE CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2015-01092 (Patent 6,045,501)
`Case IPR2015-01096 (Patent 6,315,720)
`Case IPR2015-01102 (Patent 6,315,720)
`Case IPR2015-01103 (Patent 6,315,720)
`Case IPR2015-01169 (Patent 5,635,517)1
`____________
`
`Before TONI R. SCHEINER, MICHAEL P. TIERNEY,
`MICHAEL W. KIM, JACQUELINE WRIGHT BONILLA,
`GRACE KARAFFA OBERMANN, and TINA E. HULSE,
`Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Sanctions Motion
`37 C.F.R. § 42.12
`
`
`
`
`1 This Order addresses issues common to all identified cases. We exercise
`our discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading.
`
`
`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`IPR2015-01169 (Patent 5,635,517)
`
`
`Patent Owner filed Motions for Sanctions (“Motion,” Paper 112)
`
`requesting dismissal of Petitioner’s Petitions in IPR2015-01092, -01096,
`
`-01102, -01103, and -01169. The Motion alleges that the Petitions represent
`
`an ongoing abuse of the inter partes review process that will be an
`
`unwarranted burden on the Board, and innovators like Patent Owner.
`
`Motion 1. According to the Motion, the Petitions are driven entirely by an
`
`admitted “profit motive” unrelated to the purpose of the American Invents
`
`Act,3 and unrelated to a competitive interest in the validity of the challenged
`
`patents. Id. at 2. Patent Owner requests dismissal of the Petitions on the
`
`basis that, even if the asserted validity challenges are “legitimate,”
`
`Petitioner’s reasons for seeking review are “illegitimate.” Id. at 11 (quoting
`
`Neumann v. Vidal, 710 F.2d 856, 860 (D.C. Cir. 1983)). Petitioner opposes
`
`the Motion. Opposition, Paper 12. Patent Owner filed a Reply. Paper 16.
`
`
`
`Patent Owner, as moving party, bears the burden of proof that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.1(d). The default evidentiary
`
`standard for a motion is a preponderance of the evidence. 37 C.F.R.
`
`§ 42.1(d). As the present Motion fails under the preponderance standard, we
`
`need not address whether a higher evidentiary standard applies.
`
`
`
`
`2 Citations to papers and exhibits refer to those filed in IPR2015-01092.
`Similar papers and exhibits were filed in each of the other cases.
`3 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”)
`
`2
`
`
`
`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`IPR2015-01169 (Patent 5,635,517)
`
`
`
`
`
`Profit Motive
`
`
`
`Patent Owner contends that Petitioner’s purported altruistic motive of
`
`lowering drug prices for consumers is a pretext. Motion 5–6. Patent Owner
`
`states that Petitioner seeks to profit from its Petitions for inter partes review.
`
`Id. at 5–7. Patent Owner contends that if the Board permits this strategy to
`
`continue, it will be inundated with similar petitions, and no public company
`
`that relies on patents will be safe from unnecessary petitions from for-profit
`
`organizations misusing inter partes reviews as investment strategies. Id.
`
`at 7.
`
`Profit is at the heart of nearly every patent and nearly every inter
`
`partes review. As such, an economic motive for challenging a patent claim
`
`does not itself raise abuse of process issues. We take no position on the
`
`merits of short-selling as an investment strategy other than it is legal, and
`
`regulated.
`
`
`
`
`
`Lack of Competitive Interest
`
`Patent Owner contends that Petitioner has no competitive interest in
`
`
`
`
`
`the patents they challenge or the technology covered by the patents.
`
`Motion 6. Patent Owner states that the motivation for profit, combined with
`
`a lack of a competitive interest, is contrary to the America Invents Act’s
`
`purpose and represents an improper use of the proceeding. Id. at 13.
`
`
`
`The Leahy-Smith America Invents Act allows a person who is not the
`
`owner of a patent to file a petition with the Office to institute an inter partes
`
`review of the patent. 35 U.S.C. § 311. This is in contrast to covered
`
`3
`
`
`
`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`IPR2015-01169 (Patent 5,635,517)
`
`business method reviews, which require a party or privy to have been sued
`
`or charged with infringement of the patent. AIA, § 18(a)(1)(B).
`
`Accordingly, consistent with the proposition that Article III standing is not a
`
`requirement to appear before this administrative agency, we hold that
`
`Congress did not limit inter partes reviews to parties having a specific
`
`competitive interest in the technology covered by the patents. See Sierra
`
`Club v. E.P.A., 292 F.3d 895, 899 (D.C. Cir. 2002) (stating that an
`
`administrative agency is not subject to Article III of the Constitution of the
`
`United States, so a petitioner would have no need to establish standing to
`
`participate in proceedings before the agency); see also Consumer Watchdog
`
`v. Wis. Alumni Res. Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014) (citing
`
`Sierra Club).
`
`
`
`
`
`
`
`
`
`Purpose of America Invents Act
`
`Patent Owner states that the Petitions in these cases are contrary to the
`
`America Invents Act, as Congress intended inter partes reviews to allow
`
`parties to challenge a granted patent as an expeditious and less costly
`
`alternative to litigation. Motion 7. The purpose of the AIA was not limited
`
`to just providing a less costly alternative to litigation. Rather, the AIA
`
`sought to establish a more efficient and streamlined patent system that
`
`improved patent quality, while at the same time limiting unnecessary and
`
`counterproductive litigation costs. The AIA was designed to encourage the
`
`filing of meritorious patentability challenges, by any person who is not the
`
`patent owner, in an effort to further improve patent quality. H.R. Rep. No.
`
`4
`
`
`
`
`IPR2015-01092 (Patent 6,045,501)
`IPR2015-01096 (Patent 6,315,720)
`IPR2015-01102 (Patent 6,315,720)
`IPR2015-01103 (Patent 6,315,720)
`IPR2015-01169 (Patent 5,635,517)
`
`112-98, pt. 1, at 85 (2011). In the Motion, Patent Owner does not allege that
`
`Petitioner filed a non-meritorious patentability challenge. Motion 10–12.
`
`
`
`III. Order
`
`
`
`
`
`In consideration of the foregoing, it is hereby
`
`ORDERED that Patent Owner’s Motions for Sanctions are denied.
`
`PETITIONER:
`
`
`Jeffrey Blake
`jblake@merchantgould.com
`
`Dianna El Hioum
`delhioum@merchantgould.com
`
`
`PATENT OWNER:
`
`Francis Cerrito
`nickcerrito@quinnemanuel.com
`
`Anthony Insogna
`aminsogna@jonesday.com
`
`lb
`
`
`
`
`
`
`
`5
`
`
`