UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
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`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`
`Case IPR2017-01035
`
`Patent 9,320,716
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`
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`PETITIONER’S MOTION TO EXPUNGE
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`
`Case IPR2017-01035
`
`Patent 9,320,716
`
`
`
`PETITIONER’S MOTION TO EXPUNGE
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`I.
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`Introduction
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`Pursuant to the Board’s authorization via email on July 7, 2017, Petitioner
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`hereby moves to expunge the redacted Patent Owner’s Preliminary Response
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`(“Original Redacted Preliminary Response”) (Paper 8) from the public record. As
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`explained in the concurrently filed Petitioner’s Motion to Seal, Public disclosure of
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`the information that Petitioner seeks to have sealed would be commercially
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`harmful to Petitioner. The Original Redacted Preliminary Response does not
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`redact each of the portions of sentences Petitioner seeks to seal. Thus, Petitioner
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`moves to expunge the Original Redacted Preliminary Response from the public
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`record.
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`II. Legal Standard
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`“Where confidentiality is alleged as to some but not all of the information
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`submitted to the Board, the submitting party shall file confidential and non-
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`confidential versions of its submission, together with a Motion to Seal the
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`confidential version setting forth the reasons why the information redacted from
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`the non-confidential version is confidential and should not be made publicly
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`available.” Office Trial Practice Guide, 77 Fed. Reg. at 48,756, 48,770 (Aug. 14,
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`2012); see also id. at 48,771. The movant must “(1) explain why each portion of
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`the information . . . it seeks to redact constitutes ‘confidential information’ as
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`defined in 37 C.F.R. §42.2; and (2) explain why good cause exists for each
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`1
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`redaction.” Altaire Pharm., Inc. v. Paragon Bioteck, Inc., PGR2015-0001, Paper
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`27 at 3 (PTAB Mar. 29, 2016).
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`III. Confidential Documents that Should be Expunged from the Record
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`As explained in the concurrently filed Petitioner’s Motion to Seal the Patent
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`Owner’s Preliminary Response (Paper 7), the Patent Owner’s Preliminary
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`Response reveals information regarding Petitioner’s ANDA product, specifically
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`the following passages:
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`
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`
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`The portion of the sentence on page 6, footnote 2, the parenthetical at
`line 6 that is between the phrases “prove infringement” and “is
`nevertheless”;
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`The portion of the sentence on page 36 lines 6-8 that is between the
`phrases “in district court litigation—” and “—should be rejected”; and
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`The portion of the sentence on page 51 lines 9-11 that is between the
`phrases “in district court litigation—” and “—should be rejected.”
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`The identified portions directly provide information regarding Petitioner’s
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`ANDA product—specifically how the active ingredient in Petitioner’s ANDA
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`product is distributed. The Original Redacted Preliminary Response does not
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`redact the portion of the sentence on page 6, footnote 2 line 6 that Petitioner seeks
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`to seal. Information regarding Petitioner’s ANDA product is trade secret and/or
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`confidential commercial information, thus qualifies as confidential information
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`under 37 CFR § 42.2.
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`The redactions in the Original Redacted Preliminary Response are only
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`applied to, as indicated by the Patent Owner’s Motion to Seal, the portions that are
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`2
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`
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`purportedly quoting the excerpts from the trial transcript in Cosmo Techs. Ltd. v.
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`Actavis Labs. FL, No. 15-164-LPS (D. Del. May 23, 2017) (the “Transcript”)
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`(Exhibit 2025). See Patent Owner’s Motion to Seal, Paper 9 at 3. The Original
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`Redacted Preliminary Response, however, does not contain redactions with respect
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`to other portions that reveal information regarding the Petitioner’s ANDA product,
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`specifically the portion of the sentence on page 6, footnote 2 line 6 that Petitioner
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`seeks to seal. Petitioner agrees to file a further revised Redacted Preliminary
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`Response that redacts the confidential information that is subject to the
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`concurrently filed Petitioner’s Motion to Seal, if granted, and redacts the
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`confidential information that is subject to Patent Owner’s Motion to Seal (Paper 9),
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`if granted, or upon the request from the Board.
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`Good cause exists because public disclosure of the information that
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`Petitioner seeks to have sealed and redacted would disclose confidential
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`information in a highly competitive market. This information has not been
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`published and is not publicly available. Disclosure of this confidential information
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`would allow competitors to ascertain how Petitioner’s ANDA product is made and
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`potentially the testing performed by Petitioner during its manufacture, which is
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`confidential and competitive information to Petitioner.
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`Petitioner understands that the rules promulgated by the USPTO “aim to
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`strike a balance between the public’s interest in maintaining a complete and
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`
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`3
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`
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`
`
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`understandable file history and the parties’ interest in protecting truly sensitive
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`information.” Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14,
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`2012). Petitioner contends that its redactions—constituting only portions of a few
`
`sentences—are minimal and are far less than those proposed by Patent Owner in its
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`Motion to Seal (Paper 9). Even with Petitioner’s proposed redactions the public
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`will be left with a complete and understandable file history, only being unaware of
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`the distribution of ingredient component in Petitioner’s ANDA product.1 Sandoz,
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`Inc. v. EKR Therapeutics, LLC, IPR2015-00005, Paper 21 at 4 (PTAB Apr. 24,
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`2014) (“The redactions to the Petitioner’s Reply appear to be limited to isolated
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`passages that consist entirely of confidential commercial information. The
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`redactions made
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`to
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`the Petitioner’s Reply would not inhibit a reader’s
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`understanding of the substance of the Petitioner’s position.”). Petitioner contends
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`that such information would not impede the public’s understanding of Patent
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`Owner’s Preliminary Response and strikes the appropriate balance between the
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`public’s interest and Petitioner’s interest in protecting its confidential information.
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`1 Indeed, coupled with the statements in this Paper, the public will
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`understand what the redacted information generally relates to, left only without
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`information about the distribution of ingredient component in Petitioner’s ANDA
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`product.
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`4
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`Patent Owner will argue that the passage of time between the filing of the
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`Patent Owner’s Preliminary Response on Thursday, June 22, 2017 and Petitioner’s
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`email to the Board to seek authorization to move to expunge on Wednesday, July
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`5, 2017 precludes the submission of a redacted copy. That characterization ignores
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`the fact that Patent Owner filed the Preliminary Response which contained
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`Petitioner’s confidential information without first conferring with Petitioner. See
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`Patent Owner’s Motion to Seal (Paper 9), making no representation that Patent
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`Owner met and conferred with Petitioner.
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`Because the document at issue was Patent Owner’s Preliminary Response,
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`not Petitioner’s filing, Petitioner believed that Petitioner could not unilaterally
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`move to expunge without first meeting and conferring with Petitioner. Further,
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`Board authorization was required before filing any motion. 37 C.F.R. § 42.20(b).
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`Accordingly, as soon as Petitioner learned that the Original Unredacted
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`Preliminary Response revealed Petitioner’s confidential information, Petitioner
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`contacted Patent Owner on Tuesday, June 27, 2017 to meet and confer in order to
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`resolve the issue. Patent Owner was not available to meet and confer until
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`Thursday, June 29, 2017 at 5PM Eastern. The parties met and conferred by
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`telephone on June 29, 2017 and after the call Petitioner sent Patent Owner
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`proposed redactions that Petitioner planned to seek. Patent Owner requested a
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`second meet on confer on Friday, June 30, 2017, which Petitioner’s counsel
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`5
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`obliged later that same day even though Petitioner’s counsel was traveling. On
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`Wednesday, July 5, 2017, after the intervening Independence Day holiday,
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`Petitioner contacted the Board seeking authorization to expunge the Original
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`Unredacted Preliminary Response. The Board gave authorization on Friday, July
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`7, 2017. As this timeline shows, Patent Owner was diligent and any alleged delay
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`was caused by Patent Owner’s failure to timely resolve the matter through meet
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`and confer. Patent Owner’s delay tactics should not justify publicly revealing
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`Petitioner’s confidential information.
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`Accordingly, Petitioner hereby moves to expunge the Original Redacted
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`Preliminary Response and replace it with the Replacement Redacted Preliminary
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`Response.
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`IV. Conclusion
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`
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`expunge the Original Redacted Preliminary Response and enter a replacement
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`redacted Preliminary Response that will be prepared and submitted according to
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`the Board’s granting of Petitioner’s Motion to Seal and/or Patent Owner’s Motion
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`to Seal. The replacement redacted Preliminary Response would thus remain
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`publicly available. Expungement will protect Petitioner’s confidential information
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`without comprising the public’s ability to understand the record.
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`6
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`Date: July 13, 2017
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`
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`Respectfully submitted,
`
`Alston & Bird LLP
`
`By: /Jitendra Malik/
`
`Jitendra Malik, Ph.D.
`Reg. No. 55823
`Alston & Bird LLP
`4721 Emperor Blvd., Suite 400
`Durham, NC 27703-8580
`jitty.malik@alston.com
`
`Lead Counsel for Petitioner
`
`
`
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`7
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), 42.8(b)(4) and 42.105, the undersigned
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`certifies that on the 13th day of July, 2017, a complete copy of the foregoing
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`Petitioner’s Motion to Expunge was served on counsel of record for the Patent
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`Owner:
`
`Gary N. Frischling (Reg. No. 35,515)
`gfrischling@irell.com
`
`Yite John Lu (Reg. No. 63,158)
`yjlu@irell.com
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`CosmoIPR@irell.com
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`Respectfully submitted,
`
`Alston & Bird LLP
`
`By: /Jitendra Malik/
`
`Jitendra Malik, Ph.D.
`Reg. No. 55823
`Alston & Bird LLP
`4721 Emperor Blvd., Suite 400
`Durham, NC 27703-8580
`jitty.malik@alston.com
`
`Lead Counsel for Petitioner
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`1
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