Filed on behalf of: Corcept Therapeutics, Inc.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
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`v.
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`CORCEPT THERAPEUTICS, INC.,
`Patent Owner
`_______________________
`
`Case PGR2019-00048
`U.S. Patent No. 10,195,214
`_______________________
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`PATENT OWNER’S MOTION TO EXCLUDE
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
`
`v.
`
`CORCEPT THERAPEUTICS, INC.,
`Patent Owner
`_______________________
`
`Case PGR2019-00048
`U.S. Patent No. 10,195,214
`_______________________
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
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`TABLE OF CONTENTS
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`PGR2019-00048
`U.S. Patent No. 10,195,214
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`Page
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`Introduction ...................................................................................................... 1
`I.
`Exhibit 1075 Lacks Foundation and Should Be Excluded .............................. 1
`II.
`III. Conclusion ....................................................................................................... 5
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`
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`i
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`PGR2019-00048
`U.S. Patent No. 10,195,214
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`TABLE OF AUTHORITIES
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`Cases
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`Page
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`Apotex Inc. v. Celgene Corp.,
`IPR2018-00685, Paper 8 (P.T.A.B. Sept. 27, 2018) ............................................. 2
`Conoco Inc. v. Dep’t of Energy,
`99 F.3d 387 (Fed. Cir. 1996).................................................................................. 1
`Ford Motor Co. v. Versata Dev. Grp.,
`IPR2016-01019, Paper 9 (P.T.A.B. Oct. 4, 2016) ................................................. 2
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) .........................................................................3, 5
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986)............................................................................2, 5
`Kayak Software Corp. v. International Business Machines Corp.,
`CBM2016-00076, Paper 16 at 8 (P.T.A.B. Dec. 15, 2016) ......................... passim
`Eli Lilly & Co. v. Teva Pharm. Int’l,
`IPR2018-01710, Paper 69 (P.T.A.B. Mar. 31, 2020) ............................................ 4
`Open Text S.A. v. Box, Inc.,
`No. 13-cv-04910, 2015 WL 428365 (N.D. Cal. Jan. 30, 2015) ............................ 1
`
`
`Rules and Regulations
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`37 C.F.R. § 42.62 ....................................................................................................... 1
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`Fed. R. Evid. 901 ...................................................................................................1, 5
`
`
`Other
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`Motion to Exclude, Eli Lilly & Co. v. Teva Pharm. Int’l,
`IPR2018-01710, Paper 51 at 6 (P.T.A.B. Dec. 11, 2019) ...................................... 4
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`
`
`
`ii
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`PGR2019-00048
`U.S. Patent No. 10,195,214
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`I.
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`Introduction
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Patent Owner Corcept
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`Therapeutics, Inc. (“Patent Owner”) submits this motion to exclude Exhibit 1075.
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`Patent Owner timely objected to this Exhibit through written Objections to
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`Evidence on June 11, 2020.
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`The Federal Rules of Evidence (“FRE”) govern the admissibility of evidence
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`in post-grant review proceedings. 37 C.F.R. § 42.62. As shown herein, the
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`challenged exhibit is unauthenticated in violation of FRE 901. Accordingly, the
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`Board should exclude the objected-to exhibit for the reasons that follow.
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`II. Exhibit 1075 Lacks Foundation and Should Be Excluded
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`Exhibit 1075 should be excluded pursuant to FRE 901 because Petitioner has
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`failed to offer sufficient information establishing its authenticity as a publicly
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`accessible document as of the priority date of the ’214 patent. The public
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`accessibility of Exhibit 1075 is an essential part of the foundation analysis under
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`FRE 901 because “the sufficiency of the foundation evidence must be assessed in
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`light of the nature of the documents at issue.” Conoco Inc. v. Dep’t of Energy, 99
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`F.3d 387, 392 (Fed. Cir. 1996); see also Open Text S.A. v. Box, Inc., No. 13-cv-
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`04910, 2015 WL 428365, *2 (N.D. Cal. Jan. 30, 2015) (granting patentee summary
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`judgment that a computer program could not be used as prior art because the
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`accused infringer failed to authenticate the documentary evidence). Patent Owner
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`1
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`PGR2019-00048
`U.S. Patent No. 10,195,214
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`objected to Exhibit 1075 in a timely manner, and Petitioner’s efforts to correct the
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`evidentiary deficiencies with supplemental evidence only serve to highlight why
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`Exhibit 1075 should be excluded.
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`Petitioner represents that Exhibit 1075 is a doctoral thesis written by Dr.
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`Aart Johannes van der Lelij while attending Erasmus University in Rotterdam,
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`Netherlands. Petitioner has failed to establish that this thesis was publicly
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`available before the March 2017 priority date. Indeed, while the thesis bears a date
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`of “Woensdag 27 Mei 1992,” the Board has held on numerous occasions that a
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`purported copyright or publication date, “standing alone, does not establish public
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`availability as of that date.” See Apotex Inc. v. Celgene Corp., IPR2018-00685,
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`Paper 8 at 29-30 (P.T.A.B. Sept. 27, 2018) (citing Ford Motor Co. v. Versata Dev.
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`Grp., IPR2016-01019, Paper 9 at 5-6 (P.T.A.B. Oct. 4, 2016)). Instead, in order to
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`prove that a thesis was publicly available, the Petitioner must provide evidence
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`regarding “when the thesis was indexed in the library catalog” and the “general
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`library procedure as to indexing, cataloging, and shelving of theses.” In re Hall,
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`781 F.2d 897, 899 (Fed. Cir. 1986). The Board has therefore held that
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`“[d]etermining public accessibility of a thesis for prior art purposes requires a
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`showing of both shelving and meaningful indexing/cataloging” at the relevant
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`library as of the priority date. Kayak Software Corp. v. International Business
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`Machines Corp., CBM2016-00076, Paper 16 at 8 (P.T.A.B. Dec. 15, 2016)
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`2
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`PGR2019-00048
`U.S. Patent No. 10,195,214
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`(emphasis original). Theses are only meaningfully indexed or cataloged when the
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`library’s procedure is “sufficient to make them reasonably accessible to the
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`public.” In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) (holding that “theses
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`were not accessible to the public because they had not been either cataloged or
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`indexed in a meaningful way”).
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`Petitioner has put forth insufficient evidence indicating that Exhibit 1075
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`was cataloged in any library (and therefore accessible to the public) as of the
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`priority date. The “evidence” Petitioner provides is a purported email chain
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`between Petitioner’s counsel and an employee at the National Library of the
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`Netherlands. See Ex. 1076.1 But as a corporate affiliate of Petitioner (and
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`1 Petitioner also cites Exhibit 1077 to support the public availability of
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`Exhibit 1075, but Exhibit 1077 is webpage dated 5/21/2020 and provides no
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`indication that Exhibit 1075 was publicly available (or meaningfully indexed in the
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`Erasmus University Repository) in 1992 (or any other date before May 2020). At
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`most, Exhibit 1077 shows that an interested party could have located Exhibit 1075
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`as of May 2020. The same can be said of the Declaration of William H. Milliken
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`Pursuant to 37 C.F.R. § 42.64, which merely states that attorney Milliken
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`“obtained” Exhibit 1075 on May 21, 2020.
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`3
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`PGR2019-00048
`U.S. Patent No. 10,195,214
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`Petitioner’s lead counsel) recently argued before the Board, relying on an email
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`from a library employee to establish public availability of a thesis is:
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`[T]he epitome of hearsay. It is an out-of-court statement
`(an email) offered to prove the truth of whether [the
`library] made the [challenged] thesis publicly available.
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`See Motion to Exclude, Eli Lilly & Co. v. Teva Pharm. Int’l, IPR2018-01710,
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`Paper 51 at 6 (P.T.A.B. Dec. 11, 2019). On the basis of these arguments, the
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`Board refused to consider an email similar to Exhibit 1076 in its analysis of the
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`public availability of the thesis at issue in that proceeding. See IPR2018-01710,
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`Paper 69 at 157 (P.T.A.B. Mar. 31, 2020). Here too, the Board should refuse to
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`consider the hearsay contained within Exhibit 1076 to establish the public
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`availability of Exhibit 1075.
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`Even if Petitioner could rely on Exhibit 1076, Petitioner has still failed to
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`establish the public availability of Exhibit 1075. The email simply states:
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`The physical thesis was included in the Central Catalog of
`Dutch libraries on 11-05-1992. This thesis is part of our
`library collection since 25-06-1992. It is present at several
`libraries in the Netherlands. The online copy is registered
`in the Central Catalog of Dutch libraries on 23-04-2013.
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`Ex. 1076 at 1. These statements, even if accepted for their truth, do not establish
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`the public availability of Exhibit 1075. The law is clear: “Determining public
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`accessibility of a thesis for prior art purposes requires a showing of both shelving
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`and meaningful indexing/cataloging.” Kayak Software, CBM2016-00076, Paper
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`4
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`PGR2019-00048
`U.S. Patent No. 10,195,214
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`16 at 8 (emphasis original). Exhibit 1076 states that “[t]he physical thesis was
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`included in the Central Catalog of Dutch libraries on 11-05-1992,” but Petitioner
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`has failed to offer any evidence of what it means to be “included” in the “Central
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`Catalog of Dutch libraries” or that “included” means that the thesis was “accessible
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`to the public.” In re Cronyn, 890 F.2d at 1161.2 This is why the Federal Circuit
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`requires evidence regarding “general library procedure as to indexing, cataloging,
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`and shelving of theses” – evidence that Petitioner has failed to provide. In re Hall,
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`781 F.2d at 899. Exhibit 1076, standing alone, does not indicate that Exhibit 1075
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`was meaningfully catalogued (so that persons of ordinary skill in the art could find
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`it) before the critical date.
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`Accordingly, Petitioner has not established sufficient foundation for Exhibit
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`1075 under FRE 901, and it should be excluded from this proceeding.
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`III. Conclusion
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`For the foregoing reasons, the challenged evidence does not meet the
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`threshold for admissibility and should be excluded from the record.
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`2 Likewise, Exhibit 1076 provides no indication that registration of an
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`online copy of the thesis “in the Central Catalog of Dutch libraries” would have
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`allowed a member of the public to access the thesis as of the priority date.
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`5
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`Date: July 30, 2020
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`Respectfully Submitted,
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`PGR2019-00048
`U.S. Patent No. 10,195,214
`
`
`
`
`F. Dominic Cerrito (Reg. No. 38,100)
`Eric C. Stops (Reg. No. 51,163
`Daniel C. Wiesner (pro hac vice)
`Frank C. Calvosa (Reg. No. 69,064)
`John Galanek (Reg. No. 74,512)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`ericstops@quinnemanuel.com
`danielwiesner@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`johngalanek@quinnemanuel.com
`
`Counsel for Patent Owner
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`6
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`PGR2019-00048
`U.S. Patent No. 10,195,214
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on the date indicated below a copy of the
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`foregoing Patent Owner’s Motion to Exclude was served electronically by filing
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`these documents through the PTAB E2E System, as well as by e-mailing copies to
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`counsel of record for Petitioners at dsterling-PTAB@sternekessler.com,
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`opartington-PTAB@sternekessler.com, jcrozendaal-PTAB@sternekessler.com,
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`ueverett-PTAB@sternekessler.com, wmilliken-PTAB@sternekessler.com.
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`Date: July 30, 2020
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`Respectfully Submitted,
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`
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`F. Dominic Cerrito (Reg. No. 38,100)
`Eric C. Stops (Reg. No. 51,163
`Daniel C. Wiesner (pro hac vice)
`Frank C. Calvosa (Reg. No. 69,064)
`John Galanek (Reg. No. 74,512)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`ericstops@quinnemanuel.com
`danielwiesner@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`johngalanek@quinnemanuel.com
`Counsel for Patent Owner
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