`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`PHIGENIX, INC.
`Petitioner
`
`v.
`
`IMMUNOGEN, INC.
`Patent Owner
`
`___________________
`
`Case IPR2014-00676
`Patent 8,337,856 B2
`___________________
`
`
`IMMUNOGEN, INC.'S MOTION TO EXPUNGE
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2014-00676
`U.S. Patent No. 8,337,856
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. § 42.56, Patent Owner ImmunoGen respectfully
`
`submits this Motion to Expunge exhibits 2347 and 2348 from the record. These
`
`exhibits relate to marketing and sales-related proprietary information that the
`
`Board did not rely on in its Final Written Decision dated October 27, 2015. (Paper
`
`39.) ImmunoGen certifies that the parties have conferred in good faith regarding
`
`this motion. Petitioner Phigenix's counsel confirmed that Phigenix will not oppose
`
`this motion.
`
`II. Authorization for the Motion
`The Board authorized this motion in an email dated February 17, 2017. The
`
`email stated that "[t]he parties are authorized to file a motion to expunge the
`
`confidential information from the record prior to the information becoming
`
`public."
`
`III. Procedural Background
`On June 18, 2015, ImmunoGen filed an unopposed Motion to Seal exhibits
`
`2347 and 2348. (Paper 31.) On October 27, 2015, the Board granted the motion,
`
`concomitant with its issuing the Final Written Decision. (Paper 39.) The Board
`
`found that good cause existed to seal exhibits 2347 and 2348 because the exhibits
`
`contained "confidential information regarding Patent Owner's non-public
`
`marketing and sales-related proprietary information." (Id. at 29.) The Board also
`
`found that "Exhibits 2240-44, 2256, 2319, and 2320, which are unsealed, will
`
`
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`- 1 -
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`Case IPR2014-00676
`U.S. Patent No. 8,337,856
`
`fulfill adequately the needs of the public to maintain a complete and
`
`understandable record in this case." (Id. at 29-30.)
`
`In a December 3, 2015 email, ImmunoGen asked the Board for procedural
`
`guidance regarding preserving the record pending appeal of the Board's Final
`
`Written Decision to the United States Court of Appeals for the Federal Circuit
`
`(CAFC). In a December 4, 2015 email, the Board authorized ImmunoGen to file a
`
`motion to preserve the record pending appeal, which ImmunoGen filed on
`
`December 11, 2015. (Paper 40.)
`
`On December 22, 2015, Phigenix filed a Notice of Appeal. (Paper 43.) On
`
`January 9, 2017, the CAFC issued a Notice of Entry of Judgment Accompanied by
`
`Opinion dismissing Phigenix's appeal. (Paper 44.) And on February 15, 2017, the
`
`CAFC issued a formal mandate. (Paper 45.)
`
`IV. Argument
`37 C.F.R. § 42.56 provides: "[a]fter denial of a petition to institute a trial or
`
`after final judgment in a trial, a party may file a motion to expunge confidential
`
`information from the record." The Board has previously explained that a party
`
`moving to expunge has to show that i) "any information sought to be expunged
`
`constitutes confidential information" and ii) the movant's interest in expunging the
`
`information "outweighs the public's interest in maintaining a complete and
`
`understandable file history." (RPX Corp. v. Virnetx Inc., IPR 2014-00171, Paper 62
`
`at 3 (P.T.A.B. Sept. 9, 2014).) The rules identify confidential information as "a
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`- 2 -
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`
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`Case IPR2014-00676
`U.S. Patent No. 8,337,856
`
`trade secret or other confidential research, development, or commercial
`
`information." 37 C.F.R. § 42.54(a)(7). And the Board must strike "a balance
`
`between the public's interest in maintaining a complete and understandable file
`
`history and the parties' interest in protecting truly sensitive information." 37 C.F.R.
`
`§ 42.54(a); 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
`
`In this case, ImmunoGen has already demonstrated, and the Board already
`
`agreed, that exhibits 2347 and 2348 sought to be expunged contain sensitive and
`
`confidential information. (Paper 39 at 29-30.) Indeed, the Board found that
`
`exhibits 2347 and 2348 "contain confidential information regarding Patent Owner's
`
`non-public marketing and sales-related proprietary information." (Id. at 29.) And
`
`there has been no change in sensitivity or confidentiality of the information
`
`contained in exhibits 2347 and 2348. Thus, ImmunoGen has met its burden in
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`showing that "any information sought to be expunged constitutes confidential
`
`information." (RPX Corp. v. Virnetx Inc., IPR 2014-00171, Paper 62 at 3 (P.T.A.B.
`
`Sept. 9, 2014).)
`
`In addition, ImmunoGen's interest in expunging exhibits 2347 and 2348
`
`"outweighs the public's interest in maintaining a complete and understandable file
`
`history." (Id.) In the Final Written Decision, the Board stated: "[w]e do not rely on
`
`Exhibits 2347 and 2348 in making our decision." (Paper 39 at 29.) Moreover, the
`
`Board noted that exhibits 2240-44, 2256, 2319, and 2320, which will remain in the
`
`record, "fulfill adequately the needs of the public to maintain a complete and
`
`- 3 -
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`
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`Case IPR2014-00676
`U.S. Patent No. 8,337,856
`
`understandable record in this case." (Id. at 30.) Accordingly, because the Final
`
`Written Decision did not rely on any information in exhibits 2347 and 2348, and
`
`because public access to exhibits 2240-44, 2256, 2319, and 2320 fulfills the
`
`public's interest in maintaining a complete and understandable record, the
`
`expungement of exhibits 2347 and 2348 from the record will not diminish the
`
`public's understanding of the Final Written Decision.
`
`V. Conclusion
`For the reasons stated above, ImmunoGen respectfully requests that exhibits
`
`2347 and 2348 be expunged from the record.
`
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`/Eldora L. Ellison/
`Eldora L. Ellison
`Lead Counsel for
`Patent Owner ImmunoGen, Inc.
`Registration No. 39,967
`
`
`
`
`Date: March 2, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`- 4 -
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`
`
`
`
`CERTIFICATION OF SERVICE (37.C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned IMMUNOGEN,
`
`INC.'S MOTION TO EXPUNGE was served in its entirety on March 2, 2017,
`
`upon the following parties via electronic mail:
`
`Ping Wang
`ANDREWS KURTH, LLP
`1350 I Street NW, Suite 1100
`Washington, DC 20005
`Tel: (202) 662-3042
`Fax: (202) 662-3729
`PingWang@andrewskurth.com
`
`
`Gregory Porter
`ANDREWS KURTH, LLP
`600 Travis, Suite 4200
`Houston, TX 77002
`Tel: (713) 220-4621
`Fax: (713) 220-4257
`GregPorter@andrewskurth.com
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Eldora L. Ellison/
`Eldora L. Ellison (Reg. No. 39,967)
`Lead Attorney for
`Patent Owner ImmunoGen, Inc.
`
`
`Date: March 2, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005 - 3934
`(202) 371-2600
`
`
`
`
`
`
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