`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`GLAXOSMITHKLINE CONSUMER HEALTHCARE HOLDINGS (US) LLC,
`Petitioner
`
`v.
`
`CIPLA LTD.,
`Patent Owner
`
`____________________
`
`Case No. 2020-00368
`U.S. Patent No. 8,163,723
`____________________
`
`DECLARATION OF KELLEY HAYES GREENHILL
`
`
`
`
`
`IPR2020-00368 (U.S. Patent No. 8,163,723)
`Declaration of Kelley Hayes Greenhill
`
`
`
`Introduction
`I have prepared this Declaration in connection with the Petition of
`1.
`
`I.
`
`GlaxoSmithKline Consumer Healthcare Holdings (US) LLC (“Petitioner”) for an
`
`inter partes review of U.S. Patent No. 8,163,723 (“the ’723 patent”), which I
`
`understand will be filed concurrently with this Declaration. I also understand that
`
`June 14, 2002 is the purported priority date for the ’723 patent.
`
`2.
`
`I am currently the Manager of Research & Information Services at
`
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 901 New York Avenue,
`
`NW, Washington, DC 20001-4413.
`
`3.
`
`I am over eighteen years of age and am competent to make this
`
`Declaration. I make this Declaration based on my own personal knowledge and
`
`based on my knowledge of library science practices.
`
`4.
`
`I earned a Master of Science in Library Science (“MSLS”) from the
`
`Catholic University of America in 1995, and a Bachelor of Arts in Political
`
`Science from Duquesne University in 1989. I have worked as a librarian for over
`
`twenty-five years. I have been employed in the Research & Information Services
`
`Department at Finnegan, Henderson, Farabow, Garrett & Dunner since 2019.
`
`Before that, from 1995-2015, I was employed in the Library Department of Sterne
`
`Kessler Goldstein & Fox. And from 2015-2019, I was employed in the Knowledge
`
`
`
`
`
`IPR2020-00368 (U.S. Patent No. 8,163,723)
`Declaration of Kelley Hayes Greenhill
`
`
`
`and Research Services Group (formerly, Information Research Service) at
`
`Northrop Grumman Corporation.
`
`5.
`
`I am a member of the American Association of Law Libraries and a
`
`member of the Law Librarians’ Society of Washington, DC.
`
`Standard Library Practice for Receiving, Cataloging, and Shelving
`II.
`Materials
`6.
`
`I have knowledge of and experience with standard library practices
`
`regarding receipt, cataloging, and shelving of materials.
`
`7.
`
`Based on standard library practice, when a library receives an item, it
`
`stamps the item with the library name and often with a date that is within a few
`
`days or weeks of receipt. The library will catalog the item within a matter of a few
`
`days or weeks of receiving it.
`
`8.
`
`After an item is cataloged, the public may access the item by
`
`searching the catalog and requesting the item from the library. Standard library
`
`practice is to then shelve the item within a matter of a few days or weeks of
`
`cataloging it.
`
`9.
`
`Given the matter of a few days or weeks between receiving an item
`
`and cataloging it, and the matter of a few days or weeks between cataloging an
`
`item and shelving it, the total time between receiving an item and shelving it is a
`
`matter of a couple of weeks or months.
`
`
`
`2
`
`
`
`IPR2020-00368 (U.S. Patent No. 8,163,723)
`Declaration of Kelley Hayes Greenhill
`
`
`
`10. The United States Copyright Office, a part of the Library of
`
`Congress, is the official U.S. government body that maintains records of copyright
`
`registration in the United States including a Copyright Catalog. These records are
`
`publicly accessible and are routinely used by copyright title searchers who are
`
`attempting to clear a chain of title for copyrighted works.
`
`III. Opinion Regarding Individual Documents
`53rd Edition of Physician’s Desk Reference (1999)
`A.
`11. Ex. 1010 provides a true and correct copy of an excerpt of the 53rd
`
`Edition of the Physician’s Desk Reference (“PDR 1999”), containing the labels for
`
`Flonase® and Astelin®.
`
`12. Ex. 1010 was obtained by the Research & Information Services
`
`Department of Finnegan from the Social Law Library, in Boston, Massachusetts in
`
`response to our request to the Social Law Library for copies of the Flonase® and
`
`Astelin® labels contained in the PDR 1999. I placed the request on December 19,
`
`2019, through the Social Law Library’s website. Appended to this declaration as
`
`Appendix A is a copy of bill received from the Social Law Library, which lists the
`
`date of the request in the top right hand corner and the text of request in the section
`
`titled “Order Description.” (Appendix A.) The excerpt obtained from the Social
`
`Law Library includes the cover, public information page, and title page with a
`
`
`
`3
`
`
`
`IPR2020-00368 (U.S. Patent No. 8,163,723)
`Declaration of Kelley Hayes Greenhill
`
`
`stamp applied by the Social Law Library that reads “RECEIVED MAR 29, 2000.”
`
`Appended to this declaration as Appendix B is a copy of the Social Law Library
`
`processing procedures regarding stamping. (Appendix B.)
`
`13. Ex. 1010 is in a condition that creates no suspicion about its
`
`authenticity. Specifically, the text on each page appears to flow seamlessly from
`
`one page to the next and there are no visible alterations to the document. It was
`
`found within the custody of a library, the Social Law Library, a place where, if
`
`authentic, it would likely be found.
`
`14. Ex. 1010 has a date stamp of March 29, 2000, which indicates the date
`
`that the PDR 1999 was received and checked-in to the Social Law Library.
`
`Assuming at most a week for transfer to the shelf, the PDR 1999 would have been
`
`physically available no later than the first week of April 2000, and thus both the
`
`Flonase® and Astelin® labels would have been available at that time.
`
`15. Based on this evidence, it is my opinion that Ex. 1010 is an authentic
`
`document publicly accessible to and in actual use by researchers no later than the
`
`first week of April 2000.
`
`
`
`4
`
`
`
`IPR2020-00368 (U.S. Patent No. 8,163,723)
`Declaration of Kelley Hayes Greenhill
`
`
`
`54th Edition of Physician’s Desk Reference (2000)
`B.
`16. Ex. 1014 provide a true and correct copy of an excerpt of the 54th
`
`Edition of the Physician’s Desk Reference (“PDR 2000”), containing the labels for
`
`Flonase® and Astelin®.
`
`17. Ex. 1014 was provided to the Research & Information Services
`
`Department of Finnegan by Social Law Library, in Boston, Massachusetts in
`
`response to our request for copies of the Flonase® and Astelin® labels contained in
`
`the PDR 2000. I placed the request on December 19, 2019, through the Social
`
`Law Library’s website. Appended to this declaration as Appendix A is a copy of
`
`bill received from the Social Law Library, which lists the date of the request in the
`
`top right hand corner and the text of request in the section titled “Order
`
`Description.” (Appendix A.) The excerpt obtained from the Social Law Library
`
`includes the cover, public information page, and title page with a stamp that reads
`
`“RECEIVED FEB 1, 2000.” Appended to this declaration as Appendix B is a
`
`copy of the Social Law Library processing procedures regarding stamping.
`
`(Appendix B.)
`
`18. Ex. 1014 is in a condition that creates no suspicion about its
`
`authenticity. Specifically, the text on each page appears to flow seamlessly from
`
`one page to the next and there are no visible alterations to the document. It was
`
`
`
`5
`
`
`
`IPR2020-00368 (U.S. Patent No. 8,163,723)
`Declaration of Kelley Hayes Greenhill
`
`
`
`found within the custody of a library, the Social Law Library, a place where, if
`
`authentic, it would likely be found.
`
`19. Ex. 1014 has a date stamp of February 1, 2000, which indicates the
`
`date that the PDR 2000 was received and checked-in to the Social Law Library.
`
`Assuming at most a week for transfer to the shelf, the PDR 2000 would have been
`
`physically available no later than the second week of February 2000, and thus both
`
`the Flonase® and Astelin® labels would have been available at that time.
`
`20. Based on this evidence, it is my opinion that Ex. 1014 is an authentic
`
`document publicly accessible to and in actual use by researchers no later than the
`
`second week of February 2000.
`
`Sports Illustrated v. 93 July-Sept (2000)
`C.
`21. Ex. 1056 is an excerpted version of the September 18, 2000 edition of
`
`Sports Illustrated.
`
`22. Ex. 1056 was provided to the Research & Information Services
`
`Department of Finnegan by Dean’s Cards, in Cincinnati, Ohio in response to our
`
`request for a copy of the magazine. It includes the cover, table of contents, and the
`
`issue date indicates that it was published on September 18, 2000.
`
`23. Ex. 1056 is in a condition that creates no suspicion about its
`
`authenticity. Specifically, the text on each page appears to flow seamlessly from
`
`
`
`6
`
`
`
`IPR2020-00368 (U.S. Patent No. 8,163,723)
`Declaration of Kelley Hayes Greenhill
`
`
`
`one page to the next and there are no visible alterations to the document. It was
`
`found within the custody of a leading seller of sports cards and magazines, a place
`
`where, if authentic, it would likely be found.
`
`24. The front page of the magazine demonstrates that Ex. 1056 was
`
`published on September 18, 2000. During this time period Sports Illustrated was
`
`published weekly. Assuming at most a day for transfer from the publisher to the
`
`newsstands, the Ex. 1056 would have been physically available no later than
`
`September 19, 2000, and thus the Flonase® Ad would have been available at that
`
`time.
`
`25. Based on this evidence, it is my opinion that Ex. 1056 is an authentic
`
`document publicly accessible to and in actual use by researchers no later than
`
`September 19, 2000.
`
`
`
`
`
`
`
`7
`
`
`
`Declaration of Kelley Hayes Greenhill
`U.S. Patent No; 8,163,723
`
`IV. Conclusion
`
`26.
`
`In signing this declaration, I understand that the declaration will be
`
`filed as evidence before the United States Patent and Trademark Office. I
`
`acknowledge that I may be subject to cross-examination in this case and that cross(cid:173)
`
`examination will take place within the United States. If cross-examination is
`
`required of me, I will appear for cross-examination within the United States during
`
`the time allotted for cross-examination.
`
`27.
`
`I declare that all statements made herein of my knowledge are true,
`
`that all statements made on information and belief are believed to be true, and that
`
`these statements were made with the knowledge that willful false statements and
`
`. the like so made are punishable by fine or imprisonment, or both, under Section
`
`1001 of Title 18 of the United States Code.
`
`Executed on
`
`l ['?..) (?A21> , in Washington, D.C.
`
`reenhill
`
`8
`
`
`
`
`
`
`
`
`
`Appendix A
`Appendix A
`
`
`
`
`GSK Exhibit 1070 - Page 10 of 17
`
`
`
`The Social Law Library
`John Adams Courthouse
`One Pemberton Square, Suite 4100
`Boston, MA 02108-1792
`
`ORDER #: CC-20199
`12/19/2019
`Full Member
`FI133
`
`Client/Matter:04012 / 9009-00000/S Cyr
`
`Kelley Hayes Greenhill
`Finnegan, Henderson, Farabow, Garrett & Dunner,
`LLP
`901 New York Avenue, NW Washington, DC
`20001-4413
`
`CONTACT:
`Kelley Hayes Greenhill
`VOX: (202) 216-5021
`FAX:
`kelley.hayesgreenhill@finnegan.com
`
`Completed Products
`Item Description
`40
`FAX/EMAIL
`
`Unit Price
`$1.20
`
`Quantity/Amt
`3
`
`Items
`
`Subtotal
`$3.60
`
`Order Description
`Please provide the following from the 1998 edition of the PDR, 1999 edition of the
`PDR and the 2000 edition of the PDR. Please provide copies of the cover page, date
`stamp, table of contents, label page and entry pages for Flonase and Astelin. Also,
`please provide a certificate signed by the reference librarian for each edition. Please let
`me know if you have any questions. Kelley
`
`Total: $3.60
`Paid: $0.00
`
`Balance: $3.60
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Appendix B
`Appendix B
`
`GSK Exhibit 1070 - Page 12 of 17
`
`
`
`Processing Procedures
`
`1.
`
`Before you begin, assemble the following materials on the CDA
`workstation.
`(These materials are required for steps 2 through 8.)
`
`-Long, narrow "Social Law Library" stamps.
`
`SOCIAL LAW LIB
`socml; LAW LIBRARY
`
`—Square stamp which prints oval "Social Law Library 1804" impression.
`
`
`
` eBaeemmmp-ydgnstid
`not to be preceded by a zero.
`
`Single digit dates are
`
`This is wrong,
`
`AUG 0-4- 2002
`
`This is correct,
`
`AUG 42002
`
`(It must be well inked so that the impressions made
`—Black stamp pad.
`are clear. Red ink is used only with the "DISCARDED FROM COLLECTION"
`stamp.)
`
`-Roll of beepers.
`
`—Bookplates.
`
`—Bar code labels.
`
`‘
`
`GSK Exhibit 1070 - Page 13 of 17
`
`
`
`
`1;
`l".""‘ if ‘93” is 'E‘ffirgo e
`I: "tin".
` 1","
`glace the beeper on
`put the beeper over it.
`
`W N
`
`ote:
`
`To prevent damage to contents, do not affix beepers to the inside
`front cover of “home—made” binders or other plastic binders sent by
`publishers without first removingxthe plastic sheet lifter from the
`binder.
`‘.\
`
`For books with dust jackets, place‘beeper in the middle of the
`first blank page, which is usually opposite the front cover.
`this page is not blank, see Elaine.
`
`If
`
`For publications housed in slash—view folders, place beeper in the
`middle of the first blank page of the publication, not on the
`folder.
`
`If "Plain" has
`Check the Instructions Form for "Bookplate" information.
`been checked,
`follow the instructions in step A. If a "Fund" bookplate is
`indicated,
`follow the instructions in step B.
`If a “Gift of” bookplate
`is indicated,
`follow the instructions in step C.
`
`
`
`SOCIAL LAW LIBRARY
`HOS/[T )N ‘ LMSSACI l US E'I‘TS
`
`I
`
`Iu-zcmnm DEC 4 2000
`
`GSK Exhibit 1070 - Page 14 of 17
`
`
`
`If there is a fund name on the "Processing Instructions"
`B.
`stamp the current date on an appropriate pre—printed fund
`form,
`bookplate.
`The date should be stamped after the word "Received".
`If there isn't a pre—printed bookplate for that fund, use a fund
`stamp with a "fund" bookplate.
`Place the bookplate over the
`beeper.
`
`Pre—printed bookplates exist for the following funds:
`
`Cargill
`Davis
`Fox
`
`Hyland
`Meserve
`Reardon
`Sarrouf
`
`1
`
`‘
`
`'
`
`Stamps must be used with a "Fund" bookplate for the
`following funds:
`«
`
`Gollub
`
`Hemenway
`Hutchins, E.
`Hutchins, H.
`Lawrence
`
`Lawrence Legacy
`Nutter
`Viera
`Weinstein
`White Memorial
`
`Wyman
`
`See Appendix B for sample bookplates for both pre—printed and
`stamped bookfunds.
`
`CAUTION:
`
`Do not stamp a "Fund" bookplate when a fund
`has a pre—printed bookplate.
`If you cannot find an appropriate pre-printed
`bookplate, see Elaine.
`
`If there is a "Gift ofm" name on the "Processing
`C.
`Instructions" form,
`type the name exactly as it is written onto a
`"Gift ofm" bookplate.
`The current date should be stamped after the
`word "Received".
`Place the bookplate over the beeper. This is a
`“Gift ofm” Social Law Library bookplate:
`
`
`
`SOCIAL LAW' LIBRARY
`m vs-n IN. .‘I.\.\W\(2llll§I-2‘I‘N
`
`3
`
`Gil-1 M: ”#11311“—
`IIIEIJ'n'EI-JEC 4- 2m. -_-
` ‘35:”:- -__—
`
`GSK Exhibit 1070 — Page 15 'of 17
`
`
`
`4 ~
`
`smmMBWEJpfiSBmfliie-Vplmmeflwifih‘m-flsmm
`1804" stamp. The impression should be placed on the center portion of the
`title page and should be made with black ink.
`(See pages 4A & 4B for
`examples.) Occasionally the first page within the text is not the title
`page.
`If the first page is not the title page, i.e. it does not contain
`author, title, and copyright information,
`locate the title page by
`skimming through the beginning of the volume.
`If you are unable to find
`a title page, see Elaine for assistance.
`
`
`
`5 . Wflfimfimmemug-the'bottom margin, stamp
`this page with the small narrow "Social Law Library 5 mp.
`does not have a page 151,
`then stamp a page approximately one third into
`
`e
`
`the W1
`
`SQSEAL LEE-J LEBRAR‘!
`
`CAUTION:
`
`If necessary, adjust the
`Do not stamp over the text.
`placement of the stamp in order to avoid obscuring words.
`
`6 .
`
`LosabenpagE‘ZSfl-mmmFGn-the—bottomdnarfiémétflnp-
`this page with the small narrow "Social Law Library" stamp. If the volume
`does not have a page 251,
`then stamp a page approximately two thirds into
`
`W was, Law LEBRARY
`
`CAUTION:
`
`If necessary, adjust the
`Do not stamp over the text.
`placement of the stamp in order to avoid obscuring words.
`
`GSK Exhibit 1070 - Page 16 of 17
`
`
`
`
` s amp, 5 amp a e text o“oc .
`
`
`the impression prints upright, as illustrated below.
`If the volumeehas
`tabs or is looseleaf, omit this step— do not stamp the text block.
`
`CAUTION:
`
`Hold the volume firmly while stamping so that the image does
`not blur.
`
`
`
`You will no longer need the supplies you originally assembled. The
`stamps, beepers, etc. can now be put away.
`The supplies needed for the
`remaining processing steps vary from volume to volume. All supplies are
`stored in .Processing Unit II.
`
`CAUTION: Steps #10-#11 do not apply to “home-made”
`binders. Title, volume number, location, call
`number and Social Law Library should be typed on the
`card that is inserted into the spine pocket of these
`binders.
`
`Example:
`
`
`COLORADO REGISTER
`PROPOSED REGULATIONS
`PREVIOUS YEAR
`
`v.1
`
`STATES
`RFC
`1835
`1977
`.A22
`
`SOCIAL LAW LIBRARY
`
`L_—-——~—--——--——-"-—-—"—"""“
`
`GSK Exhibit 1070 - Page 17 of 17
`
`
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
