Paper No. __
`Date Filed: November 6, 2017
`
`Filed on behalf of: Aventis Pharma S.A.
`
`By:
`
`Dominick A. Conde
`dconde@fchs.com
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`MYLAN LABORATORIES LIMITED
`Petitioner,
`v.
`AVENTIS PHARMA S.A.
`Patent Owner.
`________________
`
`Case IPR2016-00712
`U.S. Patent No. 8,927,592
`________________
`
`PATENT OWNER’S MOTION TO
`PRESERVE THE RECORD PENDING APPEAL
`
`
`Date Filed: November 6, 2017
`
`Filed on behalf of: Aventis Pharma S.A.
`
`By:
`
`Dominick A. Conde
`dconde@fchs.com
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`MYLAN LABORATORIES LIMITED
`Petitioner,
`v.
`AVENTIS PHARMA S.A.
`Patent Owner.
`________________
`
`Case IPR2016-00712
`U.S. Patent No. 8,927,592
`________________
`
`PATENT OWNER’S MOTION TO
`PRESERVE THE RECORD PENDING APPEAL
`
`
`
`Pursuant to the Board’s authorization on November 6, 2017, Patent Owner
`
`Aventis Pharma S.A. (“Aventis”) respectfully requests that the entire docket in
`
`IPR2016-00712 be preserved pending a possible appeal to the Federal Circuit
`
`Court of Appeals, including preservation of all sealed documents in a non-public
`
`form. In addition, Patent Owner respectfully requests that the deadline to file a
`
`motion to expunge under 37 C.F.R. § 42.56 be extended to 45 days from the
`
`conclusion of any and all appeals in this proceeding. Petitioner Mylan
`
`Laboratories Ltd. does not oppose this motion.
`
`I.
`
`Background
`
`On February 10, 2017, the Board granted Aventis’s uncontested motion for
`
`entry of a stipulated protective order and motion to seal certain exhibits. (Paper
`
`35). Aventis filed the Stipulated Protective Order on February 15, 2017. (Paper
`
`36). The parties subsequently filed numerous papers and exhibits under seal with
`
`accompanying motions to seal and redacted public versions in accordance with the
`
`terms of the Stipulated Protective Order. The Board issued a decision on the
`
`remaining motions to seal on September 26, 2017. (Paper 100). The parties’
`
`motions to seal were uncontested with the exception of one, and only one of
`
`Aventis’s requests to seal was denied. (Paper 100 at 2, 8-9). The Board found
`
`good cause existed to seal the papers and exhibits identified in the table below
`
`because they contained confidential business information of Aventis or Petitioner,
`
`1
`
`
`
`and public versions, where feasible, were filed so as to provide the thrust of the
`
`arguments without compromising the underlying confidential information. (Paper
`
`35 at 3; Paper 100 at 2, 5-8).
`
`Motion(s) to Seal
`
`Paper 24
`
`Decision Granting
`Motion to Seal
`Papers 35, 100
`
`Papers 45, 97
`
`Paper 100
`
`Papers and Exhibits
`Under Seal
`Ex. 2149 (portions)
`Ex. 2170
`Ex. 2171
`Ex. 2176 (portions)
`Ex. 2179
`Ex. 2182
`Ex. 2211
`
`Paper 43 (portions)
`Ex. 1042 (portions)
`Ex. 1043 (portions
`Ex. 1044 (portions)
`Ex. 1054
`Ex. 1065
`Ex. 10681
`Ex. 1069
`Ex. 1070
`Ex. 1071
`Ex. 1072
`Ex. 1074
`
`1 The chart on pages 2-4 of the Board’s Decision on Motions to Seal does not list
`Ex. 1068 as an “Exhibit Subject to Sealing.” (Paper 100 at 2-4). However,
`elsewhere in the decision, the Board notes that Petitioner “moved to seal Exhibits
`1065, 1068-1072.” (Paper 100 at 5). Petitioner’s relevant motion to seal listed
`“Confidential Exhibit EX1068,” (Paper 45 at 2), and Patent Owner’s Brief in
`Support of Petitioner’s Motions to Seal Patent Owner’s Confidential Information
`addressed Ex. 1068 as well. (Paper 97 at 1, 3, 5, 7-8). Aventis therefore
`understands the Board’s Decision on Motions to Seal to include Ex. 1068. (Paper
`100 at 6-7 finding “good cause for sealing documents identified in the uncontested
`motions to seal,” including Paper 45).
`
`2
`
`
`
`Motion(s) to Seal
`
`Decision Granting
`Motion to Seal
`
`Papers and Exhibits
`Under Seal
`Ex. 1079
`Ex. 1089
`Ex. 1090
`
`Paper 53 (portions)
`
`Ex. 2211 (portions)
`
`Ex. 2261 (portions)
`
`Paper 54
`
`Paper 56
`
`Paper 62
`
`Paper 100
`
`Paper 100
`
`Paper 100
`
`Paper 100
`
`Paper 100
`
`Paper 100
`
`Paper 100
`
`Paper 100
`
`Paper 100
`
`Paper 64 (portions)
`
`Papers 65, 97
`
`Paper 72 (portions)
`
`Paper 74
`
`Paper 77 (portions)
`
`Paper 76, 97
`
`Paper 81 (portions)
`
`Paper 83
`
`Paper 89 (portions)
`
`Papers 88, 97
`
`Paper 92 (portions)
`
`Papers 91, 97
`
`II.
`
`The Record Should Be Preserved Pending Appeal
`
`Sealed information subject to a protective order will ordinarily become
`
`public 45 days after final judgment in a trial unless a motion to expunge is filed.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761; see also 37 C.F.R.
`
`§ 42.56. Here, the date 45 days after the Final Written Decision was entered is
`
`November 6, 2017. However, Patent Owner has until November 24, 2017, or 63
`
`days from the Final Written Decision pursuant to 37 C.F.R. § 90.3(a)(1) to file a
`
`3
`
`
`
`notice of appeal. Thus, the deadline for a motion to expunge falls before the
`
`deadline for a notice of appeal.
`
`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.”
`
`Federal Circuit Rule 17(d) requires that counsel for the parties have access to both
`
`the sealed and unsealed portions of the record once a “notice of appeal is filed.”
`
`Federal Circuit Rule 17(e) states that “any portion of the record that was subject to
`
`a protective order in an agency shall remain subject to that order on appeal.”
`
`If the record is not preserved in its entirety, including any sealed portions,
`
`and an appeal is taken, the Federal Circuit may not be able to fully consider the
`
`issues discussed in the Final Written Decision, which would cause prejudice to the
`
`parties and violate the appellate rules. Extending the deadline to file a motion to
`
`expunge sealed information from this IPR accommodates the need to preserve the
`
`entire docket for appeal and the interests of Aventis in protecting from public
`
`disclosure its confidential information that the Board has already agreed to seal.
`
`The Board has previously granted similar requests. Arctic Cat, Inc. v. Polaris
`
`Indus., Inc., IPR2014-01427, Paper 62 at 2-3 (P.T.A.B. Mar. 8, 2016) (preserving
`
`record and extending deadline under 37 C.F.R. § 42.56 until 45 days from the
`
`filing of the mandate from appeal).
`
`4
`
`
`
`III. Conclusion
`
`For the foregoing reasons, Aventis respectfully requests that (1) the entire
`
`IPR record be preserved in its present form pending any appeal to the Federal
`
`Circuit Court of Appeals, including preservation of documents filed under seal in a
`
`non-public form and (2) the deadline for filing a motion to expunge be extended to
`
`45 days from the conclusion of any and all appeals in this proceeding.
`
`November 6, 2017
`
`Respectfully submitted,
`
`/Dominick A. Conde/
`Dominick A. Conde (Reg. No. 33,856)
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`Attorney for Patent Owner,
`Aventis Pharma S.A.
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that a copy of the foregoing
`
`PATENT OWNER’S MOTION TO PRESERVE THE RECORD PENDING
`
`APPEAL was served on November 6, 2017 by causing it to be sent by email to
`
`counsel for Petitioner at the following email addresses:
`
`sparmelee@wsgr.com
`
`mrosato@wsgr.com
`
`jmills@wsgr.com
`
`mreed@wsgr.com
`
`namjadi@wsgr.com
`
`wdevine@wsgr.com
`
`November 6, 2017
`
`Respectfully submitted,
`
`/Dominick A. Conde/
`Dominick A. Conde (Reg. No. 33,856)
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`6
`
`
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