Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 35
`Entered: August 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`QUALICAPS CO., LTD.,
`Patent Owner.
`
`Case IPR2017-00203
`Patent 6,649,180 B1
`
`Before BRIAN P. MURPHY, CHRISTOPHER M. KAISER, and JEFFREY
`W. ABRAHAM, Administrative Patent Judges.
`
`MURPHY, Administrative Patent Judge.
`
`DECISION
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 35
`Entered: August 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`QUALICAPS CO., LTD.,
`Patent Owner.
`
`Case IPR2017-00203
`Patent 6,649,180 B1
`
`Before BRIAN P. MURPHY, CHRISTOPHER M. KAISER, and JEFFREY
`W. ABRAHAM, Administrative Patent Judges.
`
`MURPHY, Administrative Patent Judge.
`
`DECISION
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00203
`Patent 6,649,180 B1
`
`I.
`
`INTRODUCTION
`
`On August 3, 2017, Mylan Pharmaceuticals Inc. (“Petitioner”) sent an
`email to the Board requesting a teleconference to discuss Petitioner’s request
`that Mr. Masaru Tanjoh “be presented for cross-examination as a part of
`routine discovery” or, in the alternative, that Petitioner be authorized to file a
`motion for additional discovery “in the form of Mr. Tanjoh’s deposition.”
`Ex. 2061, 2. Mr. Tanjoh is an inventor of U.S. Patent No. 6,649,180 B1, the
`patent at issue in this proceeding. Ex. 1001 (“the ’180 patent”). Qualicaps
`Co., Ltd. (“Patent Owner”) relies on the Declaration testimony of Mr.
`Tanjoh, submitted during prosecution of the ’180 patent (Ex. 1010, 105–
`108), as evidence of unexpected results in its Response to the Petition.
`Paper 26 (“PO Resp.”), 29, 33–35.
`Petitioner’s email indicated that Patent Owner had refused to make
`Mr. Tanjoh available for cross-examination. Ex. 2061, 1. The Board
`responded by email on August 3, 2017encouraging the parties to reach
`agreement regarding Mr. Tanjoh’s cross-examination, and authorizing
`Petitioner to file a motion for additional discovery in the absence of such
`agreement. Ex. 2061, 1.
`On August 11, 2017, Petitioner filed a Motion for Additional
`Discovery pursuant to 37 C.F.R. § 42.51(b)(2). Paper 31 (“Motion” or
`“Mot.”). Petitioner’s motion requests:
`(i) Mr. Tanjoh’s deposition, and
`“[A]ll documents in Patent Owner and/or Mr. Tanjoh’s
`(ii)
`possession, custody, or control, supporting or refuting Patent
`Owner’s assertion that the invention of the U.S. Patent
`
`
`
`2
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`
`
`IPR2017-00203
`Patent 6,649,180 B1
`6,649,180 (“the ‘180 patent”) yielded unexpected results,” or,
`in the alternative,
`(iii) That Patent Owner produce “the entirety” of Mr. Tanjoh’s
`March 17, 2017 30(b)(6) deposition transcript from the co-
`pending litigation between the parties “with exhibits including
`any portion or document marked confidential.”
`Id., 1. Petitioner notes that Patent Owner declined to produce Mr. Tanjoh
`for a deposition in the present proceeding, and instead offered to consent to
`the use of Mr. Tanjoh’s March 17, 2017 deposition transcript from the
`litigation in the present proceeding. Mot., 2 (citing Ex. 1022). The parties’
`dispute centers on Petitioner’s document request and Patent Owner’s refusal
`to agree to produce certain deposition exhibits designated as “Restricted–
`Attorneys’ Eyes Only” as part of its consent to the use of Mr. Tanjoh’s
`March 17th deposition transcript. Ex. 1023, 1–2.
`Patent Owner justifies its refusal to provide Mr. Tanjoh for deposition
`because it has offered to file the complete deposition “testimony” of his
`March 17th deposition, which includes testimony regarding the issue of
`unexpected results. Paper 32, 4 (“Opposition” or “Opp.”). Patent Owner
`further states that Mr. Tanjoh is approximately 70 years old, resides in
`Japan, and requires an interpreter for deposition. Id. at 7. Patent Owner
`stresses that Mr. Tanjoh is a fact witness, his Declaration does not contain
`expert opinion testimony, and Patent Owner’s expert, Dr. McConville,
`provided expert opinion testimony regarding unexpected results and was
`cross-examined by Petitioner on August 17, 2017. Id. at 3, 5–7. Patent
`Owner asserts that Petitioner’s document request and request for a “second”
`deposition of Mr. Tanjoh are unduly burdensome, particularly because
`Petitioner has not alleged the confidential deposition exhibits being
`3
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`IPR2017-00203
`Patent 6,649,180 B1
`requested are directed to the experiments, data, and statements made in Mr.
`Tanjoh’s Declaration, as opposed to the other 30(b)(6) deposition topics for
`which Mr. Tanjoh was designated as Patent Owner’s corporate
`spokesperson. Id. at 4, 6–7.
`
`
`II. ANALYSIS
`
`
`A. Requested Deposition of Mr. Tanjoh
`Patent Owner bears the burden of producing objective evidence of
`nonobviousness in rebuttal to Petitioner’s evidence of obviousness.1
`Prometheus Labs., Inc. v. Roxane Labs., Inc., 805 F.3d 1092, 1101-02 (Fed.
`Cir. 2015). Patent Owner affirmatively relies on Mr. Tanjoh’s Declaration
`testimony in support of its burden of production, and Dr. McConville relies
`on Mr. Tanjoh’s Declaration as a basis for his opinion of unexpected results.
`PO Resp. 29, 33–35 (citing Ex. 1010, 106–107; Ex. 2028 ¶¶ 99–100).
`Although Patent Owner sets out very practical reasons for why Mr. Tanjoh’s
`deposition in this proceeding may be inconvenient and unnecessary, Patent
`Owner does not state that Mr. Tanjoh is unavailable for deposition. Opp. 6–
`7. Given that Dr. McConville relies directly on the experiments and data
`provided in Mr. Tanjoh’s Declaration for Dr. McConville’s opinion of
`unexpected results (Ex. 2028 ¶¶ 99–100), we are satisfied Petitioner has
`established the utility of the requested deposition testimony as it relates to
`Mr. Tanjoh’s Declaration and that a deposition would not be unduly
`burdensome. See Garmin Int’l Inc. et al. v. Cuozzo Speed Techs. LLC, Case
`
`
`1 To be clear, Petitioner bears the ultimate burden of persuasion regarding
`the asserted obviousness of the challenged claims.
`4
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`IPR2017-00203
`Patent 6,649,180 B1
`IPR2012-00001, Paper 26 (PTAB March 5, 2013) (Garmin factors 1 and 5).
`Petitioner is entitled to cross-examine Mr. Tanjoh with regard to the
`experiments, data, and statements in Mr. Tanjoh’s Declaration, particularly
`regarding the criticality of the boundaries for combined methoxyl group and
`hydroxypropoxyl group content. Mot. 4.
` With regard to Garmin factor 3, availability of equivalent
`information by other means, Petitioner acknowledges that the March 17th
`deposition of Mr. Tanjoh addresses Mr. Tanjoh’s Declaration and the issue
`of unexpected results, one of the enumerated topics for which Mr. Tanjoh
`was designated to testify as Patent Owner’s representative. Mot. 4–5
`(“Patent Owner designated Mr. Tanjoh . . . to testify on this [secondary
`considerations including unexpected results] topic”), 6–7; Ex. 1024, 6
`(Topic 17).2 Petitioner expressly acknowledges that the issue of
`“unexpected results via the inventor’s declaration . . . is addressed in the
`deposition transcript and exhibits thereto,” and that “the foundation, context,
`and facts underlying Mr. Tanjoh’s Declaration easily could be made
`available in these proceedings via deposition or production of Mr. Tanjoh’s
`deposition from the district court litigation.” Mot. 6. Patent Owner has
`consented to filing Mr. Tanjoh’s “complete testimony” from his March 17th
`district court deposition in this proceeding, with due accommodation for
`
`
`2 Regarding Garmin factor 2 – whether Petitioner seeks Patent Owner’s
`litigation positions and the underlying bases therefore – we are not
`persuaded that Petitioner’s request seeks Patent Owner’s litigation positions.
`Opp. 5. The parties have exchanged expert reports and completed expert
`discovery in the district court litigation. Mot. 5. Likewise, Petitioner’s
`requests are easily understandable (Garmin factor 4). Given the
`circumstances of Petitioner’s Motion, however, these two factors are not
`determinative of the result.
`
`
`
`5
`
`
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`IPR2017-00203
`Patent 6,649,180 B1
`entry of a protective order and a motion to seal. Opp. 6–7; Ex. 1023, 4.
`Therefore, both parties agree that the requested deposition testimony is
`available to Petitioner from the district court litigation.
`We now turn to the disputed scope of Petitioner’s document request.
`B. The Requested Documents
`Petitioner requests “all documents” supporting or refuting Patent
`Owner’s assertion of unexpected results, including all exhibits from Mr.
`Tanjoh’s March 17th deposition. Mot. 1, 7. Such a district court litigation
`style document request does not comply with the Board’s rule for focused,
`limited discovery, and it is unduly burdensome (Garmin factors 1 and 5). 37
`C.F.R. 42.51 (b); see Garmin, Paper 26 at 7. Petitioner implicitly recognizes
`that the relevant documents are those “documents related to [Mr. Tanjoh’s]
`experimentation” set out in his Declaration. Mot. 5. Mr. Tanjoh’s 30(b)(6)
`deposition testimony, moreover, included testimony on many topics far
`afield from the subject of unexpected results and the content of his
`Declaration at issue in this proceeding. See Ex. 1024, 9 (topic 17). Mr.
`Tanjoh was designated to testify on 17 of 30 topics requested in Petitioner’s
`30(b)(6) deposition notice of Patent Owner, including publication of related
`patent applications and articles (topic 2), first offer for sale and public use of
`the claimed invention (topic 4), validity, infringement, and prior art searches
`or investigations (topic 8), non-infringing substitutes (topic 16), and the
`“function of the hard capsule in Delzicol®” (topic 22). Compare Ex. 1024
`with Ex. 1025. Such testimony and related documents are not relevant to
`this proceeding.
` Although it is true that Petitioner did not raise the issue of deposition
`exhibits in its request for authorization to file a motion for additional
`discovery (Opp. 1), under the circumstances we find no fault with an
`6
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`IPR2017-00203
`Patent 6,649,180 B1
`appropriately limited request for documents relating to the experiments, data,
`and statements made in Mr. Tanjoh’s Declaration (Ex. 1010, 105–108).
`Such documents are relevant in this proceeding, particularly with regard to
`permitting Petitioner to test the criticality of the boundaries for combined
`methoxyl group and hydroxypropoxyl group content that are the subject of
`Mr. Tanjoh’s Declaration and Dr. McConville’s opinion testimony based
`thereon. Therefore, to the extent such documents were marked as exhibits
`during Mr. Tanjoh’s March 17th deposition, the documents should be
`produced by Patent Owner in this proceeding. Patent Owner may file the
`documents under seal in accordance with a joint request for entry of a
`protective order.
`
`
`
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`7
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`IPR2017-00203
`Patent 6,649,180 B1
`
`III. ORDER
`
`
`Accordingly, it is:
`ORDERED that Petitioner’s motion for additional discovery is
`granted-in-part and denied-in-part, as follows:
`Patent Owner shall serve and file, in the present proceeding,
`the complete transcript of Mr. Tanjoh’s March 17, 2017
`deposition testimony taken by Petitioner in the district court
`proceeding; and
`Patent Owner shall serve and file, in the present proceeding, the
`documents relating to the experiments, data, and statements in
`Mr. Tanjoh’s Declaration (Ex. 1010, 105–108) that were
`marked as exhibits at Mr. Tanjoh’s March 17, 2017 deposition;
`FURTHER ORDERED that Patent Owner and Petitioner shall file a
`joint motion to seal the aforementioned deposition transcript and exhibits
`and for entry of a protective order in accordance with 37 C.F.R. § 42.54; see
`Garmin International v. Cuozzo Speed Technologies, LLC, Case IPR2012-
`00001, slip op. at 1–2 (PTAB March 14, 2013) (Paper 34) (discussing the
`standards of the Board applied to motions to seal); and
`FURTHER ORDERED that the actions ordered above shall be
`completed within one week from the date of this ORDER.
`
`
`
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`
`
`
`
`8
`
`
`
`IPR2017-00203
`Patent 6,649,180 B1
`FOR PETITIONER:
`
`Mitchell Stockwell
`mstockwell@kilpatricktownsend.com
`
`Clay Holloway
`cholloway@kilpatricktownsend.com
`
`Miranda Rogers
`mrogers@kilpatricktownsend.com
`
`Jonathan D. Olinger
`jolinger@killpatricktownsend.com
`
`
`FOR PATENT OWNER:
`
`Jessica Parezo
`jparezo@cov.com
`
`Andrea Reister
`areister@cov.com
`
`Scott Kamholz
`skamholz@cov.com
`
`Michael Kennedy
`mkennedy@cov.com
`
`Megan Keane
`mkeane@cov.com
`
`Maryanne Armstrong
`maa@bskb.com
`
`Lynde Herzbach
`lynde.herzbach@bskb.com
`
`
`
`9
`
`
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