On May 8, 2013, ALJ Theodore R. Essex issued Order No. 10 denying Respondents Macoven Pharmaceuticals, LLC and Viva Pharmaceuticals, Inc.’s (collectively, “Respondents”) motion seeking leave to submit a supplemental notice of prior art in Certain Reduced Folate Nutraceutical Products and L-Methylfolate Raw Ingredients Used Therein (Inv. No. 337-TA-857).

According to the Order, Respondents sought to supplement their notice of prior art to add U.S. Patent No. 6,008,221 (“the ’221 patent”), arguing that good cause existed because (1) the ’221 patent was buried among hundreds of thousands of documents produced by Complainants Merck and Cie (“Merck”), South Alabama Medical Science Foundation, and Pamlab LLC (collectively, “Complainants”); (2) Merck failed to identify the ’221 patent in its interrogatory response identifying all prior art to the ’040 patent-in-suit; (3) Merck failed to identify the ’221 patent in reexamination of the ’040 patent until after it was identified by Respondents; and (4) it is in the public interest to fully assess the validity of the patents, and Complainants would not be prejudiced by the supplementation due to the length of time before the exchange of expert reports and the evidentiary hearing.  In opposition, Complainants contended that Respondents failed to show good cause to permit the supplementation, and that the failure to disclose the ’221 patent in the ’040 patent reexamination was a “red herring.”

ALJ Essex denied the motion on the grounds that Respondents failed to show why they could not have found the ’221 patent earlier by simply conducting a prior art search, noting that rather than being “an obscure piece of prior art,” the ’221 patent has a similar date to the ’040 patent, it has key subject matter (folic acid) in the title of the patent, and it shares the same prior art classes as the ’040 patent.  The ALJ disagreed, however, with Complainants’ argument that merely producing the ’221 patent among hundreds and thousands of pages of documents and identifying a Bates range of tens of thousands of pages constitutes identifying the patent and providing Respondents with a copy.