Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 56
` Entered: July 12, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATSON LABORATORIES, INC.
`Petitioner,
`v.
`UNITED THERAPEUTICS, CORP.
`Patent Owner.
`____________
`
`Case IPR2017-01621 and IPR2017-01622
`Patents 9,358,240 B2 and 9,339,507 B2
`____________
`
`
`Before TONI R. SCHEINER, ERICA A. FRANKLIN, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 56
` Entered: July 12, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATSON LABORATORIES, INC.
`Petitioner,
`v.
`UNITED THERAPEUTICS, CORP.
`Patent Owner.
`____________
`
`Case IPR2017-01621 and IPR2017-01622
`Patents 9,358,240 B2 and 9,339,507 B2
`____________
`
`
`Before TONI R. SCHEINER, ERICA A. FRANKLIN, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
` INTRODUCTION
`On Friday June 15, 2018, Patent Owner emailed the Board to request
`a teleconference to address the scheduling and location of depositions of
`four non-party fact witnesses. Ex. 3009. Pursuant to this request, a
`teleconference was held on Wednesday, June 20, 2018, wherein both parties
`had the opportunity to address the panel. A court reporter was present, and
`we instructed the parties to file a copy of the transcript of the call as an
`exhibit. See, Ex. 2210.
`The purpose of our June 20, 2018 teleconference was to resolve a
`dispute between the parties with respect to the location for the depositions of
`Drs. Seeger, Ghofrani, Reichenberger, and Grimminger. These four
`witnesses are all residents of Germany and all are non-parties. Patent Owner
`contends that the depositions should take place in Germany while Petitioner
`contends that depositions should take place in the United States. On the
`teleconference, both parties stressed that resolution of this issue was time
`sensitive, representing that scheduling the depositions would require
`substantial lead-time. In recognition of the time-sensitive nature of this
`issue, we notified the parties by email that we would authorize the
`depositions to take place “in Germany or, in the event depositions in
`Germany prove impracticable, in such other European country as is mutually
`agreeable to the parties and the witnesses.” Ex. 3009. We further indicated
`that we would issue an Order explaining the basis of our decision in due
`course. Id.
`
` ANALYSIS
`The witness at issue have offered declarations bearing on whether
`Ghofrani, a journal article published in the June 2005 issue of Herz (Ex.
`
`2
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`1005), qualifies as a prior art printed publication under 35 U.S.C. § 102(a).
`The Ghofrani article lists as authors two persons identified on the face of the
`’507 patent as inventors (Robert Voswinckel and Werner Seeger) as well as
`three non-inventors (Hossein Ardeschir Ghofrani, Frank Reichenberger, and
`Friedrich Grimminger). Ex. 1001, Ex. 1005. Patent Owner contends that
`Ghofrani does not qualify as prior art because it is not the work of “another.”
`Patent Owner has provided declarations from Dr. Seeger and from three of
`the non-inventor authors of the Ghofrani reference in support of its argument
`that Ghofrani is not the work of “another.” See, Ex. 2020, 2026, 2027, 2028,
`2098, and 2099.
`Although Patent Owner is compensating two of the witnesses, Drs.
`Ghofrani and Seegar, for their time spent in connection with these
`proceedings, counsel for Patent Owner represented that none of the
`witnesses are under the control of the Patent Owner. Ex. 2210, 5:21–6:1;
`10:3–8 (“[T]hey’re not our employees and they’re not under our control in
`that sense. They’ve got their own counsel. We can’t – at the present time,
`we can’t even communicate directly with them. We’ve got to go, as you can
`appreciate, through their counsel.”). All of the witness “work as internists
`and professors in hospitals” and “treat patients directly.” Id. at 11:18–21.
`Patent Owner argues that requiring these witnesses to travel to the United
`States would impose a significant burden on the witnesses, requiring them to
`be away from their clinics for four to five working days. Id. at 12:11–16.
`Patent Owner has represented that the witnesses would consent to
`depositions in Germany. Id. at 13:3–12.
`Petitioner argues that the declarations submitted by the witnesses at
`issue “go to a critical issue as between the parties.” Id. at 21:8–9. Petitioner
`
`3
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`asserts that two of the witnesses are paid consultants for Patent Owner and
`that one of the witnesses, Dr. Seeger, has a “long history with United
`Therapeutics, consulting relationships going back into the early 2000s.” Id.
`at 18:14–18. Petitioner further argues that Dr. Seeger has traveled to the
`United States for business meetings with United Therapeutics “as recently as
`a couple years ago.” Id. at 18:19–22. Finally, Petitioner argues that taking
`depositions in Germany would be burdensome to counsel given their tight
`time frame and the need to take at least ten depositions in a seven week time
`period. Id. at 24:16–25:10.
`Our rules, provide that “[u]ncompelled deposition testimony outside
`the United States may only be taken upon agreement of the parties or as
`the Board specifically directs.” See 37 C.F.R. § 42.53(b)(3) (emphasis
`added). Under these circumstances, we determine that Patent Owner’s
`request for the depositions of Drs. Seeger, Ghofrani, Reichenberger, and
`Grimminger to take place in Germany is reasonable and appropriate. All
`four of the witnesses are third-parties. Moreover, Patent Owner has
`persuasively argued that traveling to the United States for deposition would
`impose a significant burden on these witnesses. Ex. 2210, 10:13–18
`(arguing that the witnesses are medical professionals with “an ongoing
`responsibility to patients and their colleagues and their staff and their
`employer.”); 12:5–13:2 (arguing that the witnesses’ practices include
`operations and invasive procedures scheduled months in advance, “[s]o
`replacing any of them, much less all of them, for required planned clinics
`and procedures if they were to travel to the U.S. would be next to impossible
`for them.”); see also, generally 12:9–13:2.
`
`4
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
`We acknowledge Petitioner’s argument that the testimony of these
`witnesses is potentially case-dispositive, but do not see how taking the
`depositions in Germany substantively prejudices Petitioner. Indeed, during
`the conference call, Petitioner explained that it had offered, as an
`accommodation, to take the depositions of two of the witnesses in Germany.
`Id. at 26:1–5. We recognize that at least one of the witnesses has traveled to
`the United States in the past, but we understand that, to the best of Patent
`Owner’s knowledge, he does not have plans to travel to the United States
`during the discovery period. Id. at 27:1–15. Finally, we acknowledge that
`taking depositions in Germany may create scheduling difficulties for
`Petitioner’s counsel, but find that the potential burden imposed on these
`third-party witnesses outweighs the potential scheduling difficulties created
`for counsel. In this regard, we encourage the parties to work together to
`modify scheduling deadlines, as contemplated in the Scheduling Order, if
`necessary to accommodate these depositions.
` We note that the Board has authorized accommodations to minimize
`the burden on third-party witnesses in situations like those present here. See,
`e.g., Activision Blizzard, Inc. v Acceleration Bay, IPR2015-01951, Paper 17,
`slip op. 6–7 (PTAB May 19, 2016) (ordering petitioner to make third-party
`Australian fact-witness available for video deposition); IBM Corp. v.
`Intellectual Ventures LLC, IPR2014-01385, Paper 19, slip op. at 6–7 (PTAB
`May 4, 2015) (encouraging telephonic deposition of third-party fact
`witness); and Instradent USA, Inc. v. Novel Biocare Services AG, IPR2015-
`01786, Paper 61 (PTAB August 25, 2016) (ordering deposition of third-
`party fact witness to occur in Israel or by video).
`
`5
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`
`The cases relied upon by Petitioner are not to the contrary. In HTC
`Corporation and HTC America, Inc. v. NFC Technology, LLC, IPR2014-
`01198, (PTAB July 31, 2015) the Board declined to order a video deposition
`of French third-party fact witness. Paper 30, slip op. 3–5. However, in that
`case, Patent Owner failed to “explain why [the witness] refuses to testify in
`the United States” and the Petitioner submitted evidence indicating that the
`witness was “scheduled to travel to the United States” but was “unwilling to
`have his deposition taken while in the United States.” Id. at 3, n.2.1 In
`Valve Corp. v. Irongburg Inventions LTD, IPR2017-00136, the Board
`ordered an in-person deposition of an expert witness, but expressly
`distinguished Instradent and Activision on the ground that the witnesses in
`those cases did not live within the United States. Paper 29, slip op. 4. The
`Panel in Valve also distinguished IBM on the ground that the witness in IBM
`was a third-party witness not within Patent Owner’s control. Id. Finally, in
`Square, Inc., v. REM Holding 3, LLC, IPR2014-00312, the Board ordered
`that a witness residing in Hong Kong must be made available for deposition
`in the United States. In that case, however, it appears Patent Owner argued
`only that the costs were “prohibitive given the size of Patent Owner,
`especially in relation to Petitioner.” Paper 37, slip op. 2.
`Accordingly, after considering the arguments presented by both
`parties, our own authority, and cases interpreting the same, we grant Patent
`Owner’s request to have the depositions of Drs. Ghofrani, Grimminger,
`
`
`1 Petitioner in HTC also submitted evidence that a French statute prevented
`depositions in France for the purposes of gathering evidence in a foreign
`proceeding. Paper 30, slip op. 4–5.
`
`6
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`Reichenberger, and Seeger occur outside of the United States. 37 C.F.R. §
`42.53(b)(3).
`
`III. ORDER
`For the foregoing reasons, we grant Patent Owner’s request to have
`the depositions of Drs. Ghofrani, Grimminger, Reichenberger, and Seeger
`occur in Germany or, in the event depositions in Germany prove
`impracticable, in such other European country as is mutually agreeable to
`the parties and the witnesses. See 37 C.F.R. § 42.53(b)(3). The parties are
`encouraged to work together to minimize inconvenience to the parties and to
`the witnesses. The parties are further encouraged to modify scheduling
`deadlines as contemplated in the Scheduling Order if necessary to
`accommodate these depositions.
`
`
`7
`
`
`
`IPR2017-01621 (Patent 9,358,240 B2)
`IPR2017-01622 (Patent 9,339,507 B2)
`
`PETITIONER:
`Michael K. Nutter
`Andrew R. Sommer
`WINSTON & STRAWN LLP
`mnutter@winston.com
`asommer@winston.com
`
`PATENT OWNER:
`Stephen B. Maebius
`George Quillin
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas Carsten
`Richard Torczon
`Robert Delafield
`Veronica Ascarrunz
`WILSON, SONSINI, GOODRICH & ROSATI
`dcarsten@wsgr.com
`rtorczon@wsgr.com
`bdelafield@wsgr.com
`vascarrunz@wsgr.com
`
`
`
`8
`
`
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