UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`GRÜNENTHAL GMBH,
`Petitioner
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner
`
`
`
`Case PGR2019-00027
`U.S. Patent No. 10,039,774
`
`
`
`PATENT OWNER’S REPLY IN FURTHER SUPPORT OF MOTION TO
`EXCLUDE
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`
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`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DATED: April 17, 2020
`
`Respectfully submitted,
`
`
`
`
`
`MASCHOFF BRENNAN, PLLC
`
`
`By /R. Parrish Freeman/
` R. Parrish Freeman, Reg. No. 42,556
`pfreeman@mabr.com
`Brent A. Johnson, Reg. No. 51,851
`bjohnson@mabr.com
`
`
`
`Attorneys for Patent Owner
`ANTECIP BIOVENTURES II LLC
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`GRÜNENTHAL GMBH,
`Petitioner
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner
`
`
`
`Case PGR2019-00027
`U.S. Patent No. 10,039,774
`
`
`
`PATENT OWNER’S REPLY IN FURTHER SUPPORT OF MOTION TO
`EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DATED: April 17, 2020
`
`Respectfully submitted,
`
`
`
`
`
`MASCHOFF BRENNAN, PLLC
`
`
`By /R. Parrish Freeman/
` R. Parrish Freeman, Reg. No. 42,556
`pfreeman@mabr.com
`Brent A. Johnson, Reg. No. 51,851
`bjohnson@mabr.com
`
`
`
`Attorneys for Patent Owner
`ANTECIP BIOVENTURES II LLC
`
`
`
`U.S. Patent No. 10,039,774
`
`
`
`PGR2019-00027
`
`I.
`
`Exhibit 1004 (Poree Declaration)
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`Petitioner does not identify any testimony by Dr. Poree that would suffice
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`for showing the non-patent references his testimony relies upon are documents that
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`“experts in the particular field would reasonably rely … in forming an opinion on
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`the subject.” Rule 703, Fed. R. Evid. Since the non-patent references are not
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`otherwise admissible, all of Dr. Poree’s obviousness opinions based on them
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`should be excluded under Rule 702(b) and 703.
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`II. Hearsay dates appearing on non-patent references (Exs. 1006-1010)
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`Patent Owner does not contest the point that the dates appearing on the face
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`of the five non-patent references are hearsay. Patent Owner contends instead that
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`the hearsay dates are admissible as exceptions to the rule against hearsay. Patent
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`Owner cites three Board decisions for support, but none is designated
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`“precedential.” Indeed, there are just as many Board decisions that go the other
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`way and find date information on a non-patent reference to be inadmissible
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`hearsay. E.g., Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op.
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`at 6–13 (PTAB Aug. 12, 2015) (Paper 14); Standard Innovation Corp. v. Lelo,
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`Inc., Case IPR2014–00148, slip op. at 13–16 (PTAB Apr. 23, 2015) (Paper 41);
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`ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16
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`(PTAB Aug. 26, 2015) (Paper 13). Federal courts agree that “dates imprinted on ...
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`documents are hearsay when offered to prove the truth of the matter asserted, that
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`is, that [the non-patent invalidity reference] was accessible to the public as of the
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`1
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`U.S. Patent No. 10,039,774
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`PGR2019-00027
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`date set forth on the documents.” Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp.
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`2d 964, 974 (E.D. Mich. 2003). “Dates on letters or other documents, when offered
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`to prove the truth of the date, are inadmissible hearsay unless an exception applies
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`or the date can be proven by other means.” Insight Tech., Inc. v. SureFire, LLC,
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`No. CIV. 04-CV-74-JD, 2007 WL 3244092, at *6 (D.N.H. Nov. 1, 2007).
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`Petitioner contends the applicable exceptions in this case are the “market reports”
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`exception of Rule 803(17), the “learned treatise” exception of Rule 803(18), and
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`the “catch-all” or “residual” exception of Rule 807. None of these exceptions apply
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`to the facts at issue here.
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`The “market reports” exception is inapposite because the date information at
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`issue is not part of a compilation or listing of publication or copyright dates. Rule
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`803(17) is directed to lists and compilations, such as “newspaper market reports,
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`telephone directories, and city directories.” Fed. R. Evid. 803 (Advisory
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`Committee Notes, 1972 Proposed Rules, Note to Paragraph (17)). The exception is
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`based on the trustworthiness of these types of compilations. “The basis of
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`trustworthiness is general reliance by the public or by a particular segment of it,
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`and the motivation of the compiler to foster reliance by being accurate.” Id. There
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`is no evidence of any such reliance or motivation in this case. See Conoco Inc. v.
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`Dep’t of Energy, 99 F.3d 387, 393 (Fed. Cir. 1996).
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`The “learned treatise” exception is inapposite because the dates inscribed on
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`
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`2
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`U.S. Patent No. 10,039,774
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`PGR2019-00027
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`the non-patent references at issue are not the subject matter being substantively
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`addressed therein. The rationale for the exception is that “the treatise is written
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`primarily and impartially for professionals, subject to scrutiny and exposure for
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`inaccuracy, with the reputation of the writer at stake.” Id. (Note to Paragraph (18)).
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`The exception is thus for the substantive analysis put forth in the treatise, not for
`
`the date information appearing on its cover.
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`The “catch-all” or “residual” exception of Rule 807 is likewise inapposite.
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`“The residual exception to the hearsay rule is to be reserved for ‘exceptional
`
`cases,’ and is not ‘a broad license on trial judges to admit hearsay statements that
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`do not fall within one of the other exceptions.’” Standard Innovation, Case
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`IPR2014–00148, slip op. at 15 (Paper 41) (quoting Conoco Inc., 99 F.3d at 392). It
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`should not be applied where, as here, the proponent provides only “conclusory
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`assertion[s] … [of] equivalent circumstantial guarantees of trustworthiness.” Id.
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`Petitioner’s argument that the dates are trustworthy because they appear on the
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`documents is circular, and its admission that such dates are the best evidence of
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`public accessibility is a damaging admission that should no go overlooked.
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`III.
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`Improper Reply evidence (Exs. 1040, 1043, 1044, 1045, 1046)
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`Petitioner’s argument, distilled, is that a petitioner may withhold from its
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`petition the evidence and argument required to support a legal conclusion of
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`“printed publication” status, and that it may present that evidence for the first time
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`with its reply. Petitioner provides this statement from Hulu as support: “if the
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`3
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`U.S. Patent No. 10,039,774
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`PGR2019-00027
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`patent owner challenges a reference’s status as a printed publication, a petitioner
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`may submit a supporting declaration with its reply to further support its argument
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`that a reference qualifies as a printed publication.” (Opp’n, 7 (citing Hulu, LLC v.
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`Sound View Innovations, LLC, Case IPR2018-01039, slip op. at 15 (PTAB Dec.
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`20, 2019) (precedential) (Paper 29).) This is not the sweeping endorsement of trial
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`by ambush that Petitioner would have the Board believe. Read in context with the
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`rest of the opinion, it is clear that Hulu provides no cover for presenting the first
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`and only substantive evidence and argument in support of printed publication
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`status in the reply.
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`Petitioner asserted nothing but non-patent references in its Petition. It
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`supplied no declaration evidence, except the expert’s irrelevant hindsight
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`observation that a POSA would think some (but not all) were “published” on the
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`date indicated. (Ex. 1004, ¶¶ 40, 46, 50.) This does nothing to inform as to how or
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`whether a POSA could have located each reference before the priority date,
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`assuming the requisite amount of interest and a reasonable amount of diligence.
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`And Petitioner provided no argument in the Petition itself as to whether it was
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`contending printed publication status by dissemination, availability, or some
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`combination. Patent Owner noted the deficiency in the Patent Owner Response. A
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`proper reply would have tried to explain why the Petition evidence and argument,
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`such as they were, were sufficient. Neither Hulu, nor 37 C.F.R. § 42.23(b), nor any
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`4
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`U.S. Patent No. 10,039,774
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`PGR2019-00027
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`other rule sanctions answering with a whole new collection of evidence and
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`arguments, finally explaining which theory of printed publication is being
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`advanced. Petitioner contends its Reply evidence was proper under Rule 42.23(b),
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`but that rule is not open-ended, as Hulu recognizes: “after institution, the petitioner
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`‘may not submit new evidence or argument in reply that it could have presented
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`earlier, e.g. to make out a prima facie case of unpatentability.’” Hulu, at 7 (quoting
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`Consolidated Trial Practice Guide (“CTPG”) at 73). “And the parties cannot raise
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`new issues in reply.” Id. (citing CTPG at 74).
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`Of course a petitioner may present reply evidence to respond to matters on
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`which a patent owner has the burden of coming forward, such as antedating
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`conception, subsequent diligence and reduction to practice, entitlement to claim
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`priority to an ancestor application, secondary considerations of nonobviousness, a
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`competing claim construction, and anything else that sounds in the nature of an
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`affirmative defense. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375-1381
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`(Fed. Cir. 2016); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d
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`1375, 1378-1381 (Fed. Cir. 2015). What Petitioner cannot do, and what Hulu says
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`nothing about, is present its evidence and argument of dissemination and/or
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`availability for the first time with its Reply. The Board should exclude Exs. 1040
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`and 1043–1046 accordingly, as improper efforts to make out a printed publication
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`case for the first time in the Reply.
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`5
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`U.S. Patent No. 10,039,774
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`PGR2019-00027
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6, I hereby certify that on this 17th day of April,
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`2020, the foregoing PATENT OWNER’S REPLY IN FURTHER SUPPORT
`
`OF MOTION TO EXCLUDE was served via electronic mail on the following
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`counsel of record for Petitioner.
`
`Daniel J. Minion (Reg. No. 53,329)
`Bruce C. Haas (Reg. No. 32,734)
`Katherine E. Adams (Reg. No. 73,758)
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Telephone: (212) 218-2290
`Facsimile: (212) 218-2200
`dminion@venable.com
`bchaas@venable.com
`keadams@venable.com
`
`By: /R. Parrish Freeman/
`
`R. Parrish Freeman, Reg. No. 42,556
`MASCHOFF BRENNAN, PLLC
`
`
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