UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`PHIGENIX, INC.
`Petitioner
`
`v.
`
`IMMNUNOGEN, INC.
`Patent Owner
`
`___________________
`
`Case IPR2014-00676
`Patent 8,337,856 B2
`___________________
`
`
`IMMUNOGEN, INC.'S MOTION TO PRESERVE THE
`RECORD PENDING APPEAL
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`PHIGENIX, INC.
`Petitioner
`
`v.
`
`IMMNUNOGEN, INC.
`Patent Owner
`
`___________________
`
`Case IPR2014-00676
`Patent 8,337,856 B2
`___________________
`
`
`IMMUNOGEN, INC.'S MOTION TO PRESERVE THE
`RECORD PENDING APPEAL
`
`
`
`
`
`
`
`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
`
`Patent Owner ImmunoGen, Inc. respectfully requests that the Board preserve
`
`the entire record of IPR2014-00676, including preserving Exhibits 2347 and 2348
`
`as sealed documents, until any and all appeal rights have been exhausted.1 The
`
`Board authorized Patent Owner to file this motion in a December 4, 2015 email.
`
`Petitioner’s counsel has advised ImmunoGen that it will not oppose this motion.
`
`II.
`
`Procedural Background
`
`The Board entered its Final Written Decision in this IPR on October 27,
`
`2015 (Paper 39). In the Final Written Decision at page 30, the Board granted
`
`Patent Owner's Motion to Seal Exhibits 2437 and 2438, filed June 18, 2015 (Paper
`
`31). And in a November 27, 2015 email, the Board authorized Patent Owner to file
`
`a motion to expunge Exhibits 2347 and 2348 so as to preserve their confidentiality.
`
`But, in a November 23, 2015email to the Board, Petitioner's counsel stated,
`
`"Petitioner is evaluating its options for filing an appeal." And Petitioner has not
`
`yet responded to a query Patent Owner posed to it in a November 25, 2015 email
`
`asking whether Petitioner would be filing an appeal of this IPR. In a December 3,
`
`2015 email, Patent Owner asked the Board for procedural guidance regarding
`
`preserving the record pending appeal, and in a December 4, 2015 email, the Board
`
`1 Nothing in this motion should be construed as a concession that the
`
`Petitioner has a right to appeal the Board's Final Written Decision in this IPR.
`
`
`
`- 1 -
`
`
`
`Case IPR2014-00676
`U.S. Patent No. 8,337,856
`
`authorized Patent Owner to file the present motion to preserve the record pending
`
`appeal. Following the exhaustion of any and all appeal rights, Patent Owner
`
`intends to again seek expungement of Exhibits 2437 and 2438 so as to preserve
`
`their confidentiality.
`
`III. Argument
`Patent Owner requests that the Board preserve the record in its entirety, and
`
`in doing so, maintain exhibits 2347 and 2348 under seal, until the exhaustion of
`
`any and all appeal rights. Sealed confidential information that is subject to a
`
`protective order will ordinarily become public 45 days after final judgment in a
`
`trial unless a motion to expunge is filed. 77 Fed. Reg. 48756, 48761 (Aug. 14,
`
`2012); see also 37 C.F.R. § 42.56. Here, the date that is 45 days after entry of final
`
`judgment is December 11, 2015. However, a Party has until 63 days from the date
`
`of the Final Written Decision to file a notice of appeal. 37 C.F.R. § 90.3(a)(1).
`
`Here, the deadline for filing a notice of appeal is December 29, 2015.
`
`The Federal Rules of Appellate Procedure and the Federal Circuit Rules
`
`require that the record be retained by the Board pending appeal. Specifically,
`
`Federal Circuit Rule 17(a) states that “[t]he agency must retain the record and send
`
`to [the Federal Circuit] a certified list or index,” and Federal Circuit Rule 17(b)(1)
`
`states that this information must be sent to the court “[n]o later than 40 days after
`
`receiving the notice of appeal. ” Federal Circuit Rule 17(e), titled “Preserving a
`
`
`
`- 2 -
`
`
`
`Case IPR2014-00676
`U.S. Patent No. 8,337,856
`
`Protective Order on Appeal,” further requires that “[a]ny portion of the record that
`
`was subject to a protective order in an agency remain[] subject to that order unless
`
`otherwise ordered.”
`
`Recognizing the reasonableness of maintaining an undisturbed record in the
`
`event of an appeal, other Board panels have preserved a final IPR record pending
`
`the outcome of any appeal that is taken. See Illumina, Inc. v. Columbia Univ.,
`
`IPR2012-00006, Paper 133 at 3 (P.T.A.B. Apr. 25, 2014); Int'l Bus. Machs. Corp.
`
`v. Intellectual Ventures II LLC, IPR2014-00587, Paper 59 at 2 (P.T.A.B. Nov. 20,
`
`2015). For example, in Illumina, Inc. v. Columbia Univ., the parties were permitted
`
`to file information under seal such that the record contained both public and non-
`
`public versions of this information. Illumina, Inc. v. Columbia Univ., IPR2012-
`
`00006, Paper 133 at 2 (P.T.A.B. Apr. 25, 2014) (citing to Paper 83). There, the
`
`parties requested that the record be preserved pending the outcome of a possible
`
`appeal, including preserving all sealed documents in a non-public form. Id. (citing
`
`to Paper 131). The Board granted the parties’ request that the record be preserved
`
`pending appeal, preventing the removal or disclosure to the public of confidential
`
`information filed under seal. Id. at 3.
`
`To comply with the mandates of the Federal Circuit, it is prudent to maintain
`
`the record as-is pending any possible appeal (i.e., without removing or disclosing
`
`to the public information filed under seal). And here, as in Illumina, Inc. v.
`
`
`
`- 3 -
`
`
`
`Case IPR2014-00676
`U.S. Patent No. 8,337,856
`
`Columbia Univ., Patent Owner seeks to prevent disclosure to the public of
`
`confidential information in the record. Preserving the record in its entirety is
`
`particularly important here because Patent Owner cannot predict in advance which
`
`issues Petitioner might raise in any attempt to appeal the Board's Final Written
`
`Decision. If the record is not preserved in its entirety, the Court of Appeals for the
`
`Federal Circuit may not be able to fully consider the issues of this case if an appeal
`
`is sought. Thus, removing documents from the record or disclosing Patent Owner's
`
`confidential information to the public at this juncture would be prejudicial to the
`
`Patent Owner.
`
`Accordingly, Patent Owner respectfully requests that the Board preserve the
`
`entire IPR record as-is pending exhaustion of any and all appeal rights, i.e., without
`
`removing documents or disclosing to the public of information filed under seal
`
`(viz., Exhibit 2347 and 2348) until any and all appeal rights are exhausted.
`
`
`
`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: December 11, 2015
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`- 4 -
`
`
`
`
`
`CERTIFICATION OF SERVICE (37.C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that the above-captioned IMMUNOGEN,
`
`INC.'S MOTION TO PRESERVE THE RECORD PENDING APPEAL was
`
`served in its entirety on December 11, 2015, upon the following parties via
`
`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 Counsel for
`Patent Owner ImmunoGen, Inc.
`
`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
`
`
`
`
`Date: December 11, 2015
`1100 New York Avenue, N.W.
`Washington, D.C. 20005 - 3934
`(202) 371-2600
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