`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`KOHN & ASSOCIATES PLLC,
`Petitioner
`
`v.
`
`COMPASS PATHWAYS LIMITED,
`Patent Owner
`______________
`
`Case No. PGR2020-00030
`
`U.S. PATENT NO. 10,519,175
`
`____________
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) .................................................................... 4, 5, 7
`Cisco Sys., Inc. v. Hewlett Packard Enter. Co.,
`No. IPR2017-01933 (P.T.A.B. Mar. 16, 2018) .................................................... 4
`Worlds Inc. v. Bungie, Inc.,
`903 F.3d 1237 (Fed. Cir. 2018) ............................................................................ 3
`Statutes
`35 U.S.C. § 322(a)(2) ................................................................................................. 7
`
`
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`
`Exhibit
`No.
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`LIST OF EXHIBITS
`
`Description of Document
`
`Businesswire.com, “FDA grants Breakthrough Therapy Designation to
`Usona Institute’s psilocybin program for major depressive disorder”
`(Nov. 22, 2019)
`
`PR Newswire, “COMPASS Pathways Receives FDA Breakthrough
`Therapy Designation for Psilocybin Therapy for Treatment-resistant
`Depression”, (Oct. 23, 2018)
`
`ClinicalTrials.gov, “A Study of Psilocybin for Major Depressive
`Disorder (MDD)” (March 7, 2019)
`
`Jordan Sloshower: Psychedelics in the treatment of mood and
`substance use disorders (May 6, 2020)
`
`Third party observations in United Kingdom Patent Application
`GB1716505.1 (Jan. 24, 2020)
`
`2020
`
`Third party observations in United Kingdom Patent Application
`GB1810588.2 (Jan. 23, 2020)
`2021 Biography – Carey Turnbull
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`Petitioner Should Not Be Permitted to Replace the RPIs to the Petition
`I.
`In its Reply, Petitioner (the “Kohn Law Firm”) admitted it was merely a
`
`“placeholder” and not a real party in interest (RPI). (Reply at 2.) Petitioner knew it
`
`was not an RPI when filing the Petition and has now admitted that at least three other
`
`parties—Freedom to Operate, Inc. (“FTO”), B. More Incorporated (“B. More”), and
`
`Carey Turnbull (“Turnbull”)—were unnamed RPIs. (Reply at 1.)
`
`Petitioner nevertheless seeks to correct its statutory failures by asking the
`
`Board for permission to completely change its identification of the Petition’s RPI.
`
`Under the present circumstances—where Petitioner admitted the Petition was filed
`
`at the behest of unnamed RPIs and the scope of admitted RPIs would have remained
`
`concealed but for the Board’s demand for additional information from Petitioner—
`
`the Board should not amend the Petition for at least the following reasons.
`
`First, Petitioner fails to explain why the admitted RPIs needed to hide behind
`
`the alleged “placeholder” firm. Despite stating that the Petition was filed “at the
`
`direction of Mr. Turnbull, acting as a director of B. More,” Petitioner argues that it
`
`was justified in naming the Kohn Law Firm as the sole RPI: (1) “to begin the
`
`process”; (2) “to put Compass on notice”; and (3) for the alleged “public interest.”
`
`(Reply at 6.) Petitioner, however, provides no authority that a Petition can be filed
`
`by a “placeholder” firm in lieu of the actual known RPI. Nor can it. Petitioner’s
`
`violation of the clear statutory requirement was not merely a mistaken oversight, but
`
`1
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`evinces a tactical decision sought to conceal the actual RPIs to the Petition.
`
`Second, Petitioner’s failure to instigate a response to Patent Owner’s RPI
`
`challenges—only doing so in response to the Board’s sua sponte order requiring it
`
`to do so—belies Petitioner’s assertion that “Mr. Turnbull and FTO did not try to hide
`
`their involvement with the Petition.” (Reply at 6.) Petitioner has been less than
`
`forthcoming on the identification of RPI to Patent Owner, having withheld B. More
`
`and Turnbull’s involvement in response to Patent Owner’s emails back in March.
`
`Third, Petitioner never explains why FTO was formed the day after Patent
`
`Owner raised the RPI issue via email. Nor has Petitioner dispelled the reasonable
`
`conclusion that FTO was created as a means to conceal the true identity of the RPIs,
`
`including B. More, Turnbull, and other unnamed entities related to Turnbull, as it
`
`was readily clear the Kohn Law Firm was not the RPI to the Petition. Even now,
`
`Petitioner provides no evidence to support the ex post facto attorney representations
`
`regarding the alleged rationale of B. More and Turnbull in the creation of FTO.
`
`Since none of Petitioner’s alleged excuses justify why B. More and Turnbull
`
`were not identified as the RPIs when the Petition was filed, why FTO was formed
`
`the day after Patent Owner challenged RPI, and why B. More and Turnbull were not
`
`identified to Patent Owner as RPI, Petitioner’s attempt to paint its knowing
`
`concealment of the RPI to this proceeding as a “no harm, no foul” situation using a
`
`“placeholder” law firm should not be nakedly accepted or endorsed by the Board.
`
`2
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`II. Unnamed Entities Usona, Heffter, and Promega are RPIs to the Petition
`“[W]here a patent owner provides sufficient rebuttal evidence that reasonably
`
`brings into question the accuracy of a petitioner’s identification of the real parties in
`
`interest, the burden remains with the petitioner to establish that it has complied with
`
`the statutory requirement to identify all the real parties in interest.” Worlds Inc. v.
`
`Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018) (internal quotation omitted).
`
`Here, Petitioner provides nothing other than unsubstantiated attorney arguments to
`
`rebut Patent Owner’s evidence that reasonably calls into question the involvement
`
`of the unnamed entities, including Usona Institute, Inc. (“Usona”), Heffter Research
`
`Institute, Inc. (“Heffter”), and Promega Corporation (“Promega”), as shown in the
`
`Table below. As such, Petitioner has failed to carry its burden of demonstrating it
`
`has complied with the statutory requirement to identify all RPIs.
`
`Ex.
`Affiliation
`Individual
`Usona Board of Directors, Heffter Board of Directors 2021
`Turnbull
`Meisenheimer Usona Scientific Advisory Board, Promega employee 2008
`Sherwood
`Usona employee
`2007
`Raison
`Usona employee, Scientific Advisory and Clinical
`2009
`Advisory Boards
`Clinical trial for Usona, Research funded by Heffter
`
`Sloshower
`
`2018
`2010
`
`
`
`3
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`“Determining whether a non-party is a ‘real party in interest’ demands a
`
`flexible approach that takes into account both equitable and practical considerations,
`
`with an eye toward determining whether the non-party is a clear beneficiary that
`
`has a preexisting, established relationship with the petitioner.” Applications in
`
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) (“AIT”)
`
`(emphasis added). The evidence establishes no reasonable question that the
`
`unnamed entities: (1) are the clear beneficiaries of the proceeding; (2) have a
`
`preexisting, established relationship with Turnbull; and (3) are funding the
`
`employees, board members, and clinician that submitted declarations to the Petition.
`
`Usona, Heffter, and Promega are the only clear beneficiaries of this
`
`proceeding. None of the admitted RPIs—FTO, B. Well, and Turnbull—are involved
`
`in commercial product development at risk of infringing the patent claims
`
`challenged in this proceeding, and thus will not directly benefit if the claims at issue
`
`are invalided. See Cisco Sys., Inc. v. Hewlett Packard Enter. Co., No. IPR2017-
`
`01933 (P.T.A.B. Mar. 16, 2018), Paper No. 9 (denying institution where Petitioner
`
`was deemed an RPI by acting as a “proxy” to benefit another entity). In contrast,
`
`Usona is conducting clinical trials for psilocybin therapy that significantly overlap
`
`with Patent Owner’s clinical trials. Patent Owner received Breakthrough Therapy
`
`designation from the FDA in 2018, while Usona received the same in 2019. (See
`
`Exs. 2015-2016.) Usona’s interest is further shown by the fact that its clinical trials
`
`4
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`are overseen by Dr. Raison, one of Petitioner’s declarants. (Ex. 2017 at 8.)
`
`It is also undisputed that Turnbull has preexisting, established relationships
`
`with the unnamed entities. Petitioner has conceded that Turnbull is a director on the
`
`boards of both Usona and Heffter. (See Reply at 4-5.) Petitioner characterizes the
`
`engagement of Usona employees and related affiliates submitting Declarations as
`
`based on a “personal” request, while not providing any evidence to support its biased
`
`and self-serving allegation. This is particularly concerning considering that each of
`
`the individuals submitting Declarations in support of the Petition are closely
`
`involved with (and presumably funded by) Usona and/or Heffter. (See Table above.)
`
`Drs. Alex Sherwood, Charles Raison, and Poncho Meisenheimer are
`
`Usona/Heffter/Promega employees and/or serving on Usona’s Scientific Advisory
`
`Board; and Dr. Jordan Sloshower’s research is funded by the Heffter Research
`
`Institute and is also involved in Usona’s ongoing clinical trials for psilocybin. (See
`
`Ex. 2018 at 24.) Petitioner has not submitted any communications and compensation
`
`arrangements between Turnbull and these individuals, nor demonstrated that their
`
`cooperation was not covered under their contractual obligation with the unnamed
`
`entities, and thus (at a minimum) indirectly funded by these entities. Given the close
`
`relationship between Turnbull and Usona, which stands to benefit if the Petition was
`
`successful, it is more than reasonable to conclude that Petitioner sought to advance
`
`Usona’s interest through the Petition. See AIT, 897 F.3d at 1349-50.
`
`5
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`Further, despite Petitioner’s attempt to portray Turnbull’s challenge as
`
`personal and uncoordinated, the evidence shows that Turnbull and the same
`
`individuals at the unnamed entities have been attacking Patent Owner globally in a
`
`concerted manner. For example, on January 24, 2020, Petitioner submitted two
`
`Third Party Observations in Patent Owner’s U.K. Patent Applications GB1716505.1
`
`and GB1810588.2 (applications to which the ’175 patent claims priority and were
`
`granted despite the Third Party Observations), respectively. (See Exs. 2019 and
`
`2020.) The latter Observation was accompanied by “a witness statement by Dr
`
`Poncho Meisenheimer … and Dr Alex Sherwood” (See Ex. 2020 at 2), which is
`
`similar to their joint declaration here. (See Ex. 1008.)
`
`The evidence before the Board establishes that the unnamed entities Usona,
`
`Heffter, and Promega are RPIs to this proceeding. In Reply, Petitioner makes the
`
`conclusory assertion that the unnamed entities “have no control over this Petition
`
`and have not provided any funding for it.” (Reply at 4.) But, considering the
`
`extensive connections between Turnbull and the declarants with Usona, Heffter,
`
`and/or Promega, the lack of evidence affirmatively dispelling any involvement or
`
`control by those entities—such as contemporaneous communications, consulting
`
`agreements, employment agreements and/or clinical trial agreements—does not
`
`satisfy Petitioner’s burden in view of the facts interconnecting all of these entities
`
`and individuals involved in (and who could directly benefit from) the Petition.
`
`6
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`Yet, even if there was no direct control and funding from the unnamed entities,
`
`this would not be dispositive of the RPI issue. In AIT, despite the lack of direct
`
`control or funding over the proceeding by AIT and the fact that RPX established a
`
`“best practice” in its attempt to insulate AIT from the proceeding, the Court
`
`nevertheless held that AIT was an RPI to the proceeding after considering the
`
`entirety of the evidentiary record. Here, Petitioner clearly filed the Petition on behalf
`
`of its principals, the unnamed entities, and should be required to litigate in the name
`
`of the principals. See AIT, 897 F.3d at 1357 (“Depending on the nature of the parties’
`
`relationship, an entity can serve as an agent to a principal and file an IPR on the
`
`principal’s behalf even without the two formally agreeing that the agent will do so.”).
`
`Moreover, the Board would set an unfavorable precedent if Turnbull is
`
`allowed to proceed without naming the entities that he is closely related to and
`
`clearly stand to benefit from the proceeding, but be estopped only in his own name
`
`and his strawman entities. Such a precedent would incentivize future patent
`
`challengers to take a “willfully blind” strategy and hide behind their individual
`
`directors when bringing validity challenges, which would provide an easy way for
`
`parties to circumvent the statutory requirements of 35 U.S.C. § 322(a)(2).
`
`Accordingly, the Board should deny the Petition at least on the grounds that
`
`the Petitioner intentionally withheld known RPIs from disclosure and has failed to
`
`identify Usona, Heffter, and Promega as RPIs.
`
`7
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`
`
`
`
`Dated: July 22, 2020
`
`
`
`Respectfully submitted,
`
`By:
`
`/ Sandhya Deo /
`Sandhya Deo
`Reg. No. 65,841
`Counsel for Patent Owner
`COMPASS Pathways Limited
`
`
`
`
`8
`
`
`
`Patent Owner’s Sur-Reply
`PGR2020-00030
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, that on this 22nd day of July, 2020, the foregoing
`
`Patent Owner’s Sur-reply to Petitioner’s Reply is being filed via PTAB E2E and
`
`served by electronic (e-mail) delivery to counsel of record for Petitioner as follows:
`
`
`John M. Griem, Jr.
`Carter Ledyard & Milburn LLP
`Griem@clm.com and
`
`Kenneth I. Kohn
`KOHN & ASSOCIATES, PLLC
`Mail@KohnAndAssociates.com
`s.fox@kohnandassociates.com
`
`
`/ Sandhya Deo /
`Sandhya Deo
`Reg. No. 65,841
`
`
`
`
`
`
`
`Dated: July 22, 2020
`
`COOLEY LLP
`ATTN: PATENT GROUP
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, D.C. 20004-2400
`Tel: (202) 962-8375 Fax: (202) 716-7646
`
`
`
`
`
`
`
`
`
`
`
`
`
` 230455816 v1
`
`
`9
`
`
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
