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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`MYLAN PHARMACEUTICALS INC.,
`PETITIONER
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`
`v.
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`COSMO TECHNOLOGIES LIMITED,
`PATENT OWNER
`___________________
`
`
`CASE IPR2017-01035
`Patent 9,320,716
`___________________
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`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`EXPUNGE
`UNDER 37 C.F.R. § 42.107
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`
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`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10199394.1 15
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`- 1 -
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`IPR2017-01035 (Patent No. 9,320,716)
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`Patent Owner disagrees that expungement of Paper No. 8 (“Original
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`Redacted Preliminary Response”) is proper at this stage of the proceeding and
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`therefore opposes Petitioner’s motion.
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`A motion to expunge a document from the record is only proper “[a]fter
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`denial of a petition to institute a trial or after final judgment in a trial.” 37 C.F.R.
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`§ 42.56 (emphasis added). This is because, in order to show that expungement is
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`warranted, the moving party “must show that…[its] interest in expunging [a
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`document] outweighs the public’s interest in maintaining a complete and
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`understandable file history of [an] inter partes review.” RPX Corp. v. VirnetX Inc.,
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`IPR2014-00171, Paper No. 62 at 3 (Sept. 9, 2014). Such an assessment cannot be
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`made until there is a final Board decision that, importantly, may or may not
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`substantively rely on information that is provisionally sealed. See Arista Networks,
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`Inc. v. Cisco Systems, Inc., IPR2016-00309, Paper No. 51 at 4-5 (May 8, 2017)
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`(“[I]f a final written decision substantively relies on any information in a sealed
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`document, or if the information otherwise becomes publically available, the
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`information may be unsealed by an Order of the Board or may become public if the
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`parties do not to move timely to expunge it….”). It is also not appropriate to
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`expunge a document if the confidential information contained therein becomes
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`publicly available before the final decision. Id.
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`10199394.1 15
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`IPR2017-01035 (Patent No. 9,320,716)
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`Petitioner’s motion to expunge was filed prematurely and therefore fails to
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`address whether expungement “outweighs the public’s interest in maintaining a
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`complete and understandable file history of this inter partes review.” RPX Corp.,
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`IPR2014-00171, Paper No. 62 at 3.
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`*
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`*
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`*
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`Instead of explaining why it believes that expungement at this stage of the
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`proceeding is proper, Petitioner makes false accusations against Patent Owner in
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`its motion. See Mot. 5-6. Patent Owner is compelled to respond.
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`First, Petitioner accuses Patent Owner of not conducting a meet and confer.
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`See Mot. 5 (“Patent Owner’s Motion to Seal (Paper 9), mak[es] no representation
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`that Patent Owner met and conferred with Petitioner.”). This is demonstrably false.
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`The parties met and conferred about the scope of protection for this proceeding and
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`agreed to use the default protective order, as reported in Patent Owner’s motion.
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`See Patent Owner’s Motion To Seal (Paper 9) at 2 (“Patent Owner and [Petitioner]
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`Mylan conferred regarding the entry of a protective order in this case. The parties
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`agreed to adopt the Board’s default protective order.”). Patent Owner first emailed
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`Petitioner on June 13, more than a week before filing the Preliminary Response,
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`about the entry of a protective order in the proceedings. See Ex. 2036 at 1. The
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`parties then held a meet and confer over teleconference two days later about the
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`submission of documents under seal. Id.
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`10199394.1 15
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`IPR2017-01035 (Patent No. 9,320,716)
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`Second, Petitioner accuses Patent Owner of “delay tactics” for the delay in
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`Petitioner’s request to seal and expunge the Original Redacted Preliminary
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`Response (Paper No. 8). See Mot. 6. But the timeline in Petitioner’s own motion
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`shows that this is not true. Petitioner first informed Patent Owner that it sought
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`additional redactions of the Preliminary Response five days after it was filed. See
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`Mot. 5 (June 22 to June 27).1 Patent Owner made itself available for a meet and
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`confer two days later. Id. (June 27 to June 29).
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`On the meet and confer, Petitioner asked patent owner to expunge the
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`Original Redacted Preliminary Response. After reviewing PTAB regulations and
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`decisions concerning expungement, discussed above, Patent Owner responded the
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`next day that it believed a request for expungement was improper and advised
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`instead that Petitioner should file a motion to seal if it believed the Original
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`Redacted Preliminary Response contained confidential information.
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`Petitioner then waited another five days to request to file a motion to seal
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`and expunge with the Board. See Mot. 5-6 (June 30 to July 5). Thus, it was not
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`Patent Owner’s actions, but rather was Petitioner’s inactivity, that resulted in the
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`1 In its request for a meet and confer on this issue, Petitioner also raised additional
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`issues related to this IPR, including a request to correct its Petition (which the
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`Board denied) and the parties’ district court litigation.
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`10199394.1 15
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`IPR2017-01035 (Patent No. 9,320,716)
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`Original Redacted Preliminary Response being on the public docket for almost two
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`weeks.
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`Dated: July 20, 2017
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`Respectfully submitted,
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`
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`/s/Gary N. Frischling
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`
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`Gary N. Frischling, Reg. No. 35,515
`Yite John Lu, Reg. No. 63,158
`Irell & Manella LLP
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`Attorneys for Patent Owner
`Cosmo Technologies Limited
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`10199394.1 15
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`IPR2017-01035 (Patent No. 9,320,716)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on July 20, 2017,
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`a copy of the foregoing document Patent Owner’s Response to Petitioner’s
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`Motion To Expunge have been served in their entireties via e-mail on counsel of
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`record for petitioners at the following addresses:
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`Jitendra Malik, Ph.D.
`Reg. No. 55,823
`jitty.malik@alston.com
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`H. James Abe
`Reg. No. 61,182
`james.abe@alston.com
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`Lance Soderstrom
`Reg. No. 65,405
`lance.soderstrom@alston.com
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`Joseph M. Janusz
`Reg. No. 70,396
`joe.janusz@alston.com
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`ALSTON & BIRD LLP
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`Respectfully submitted,
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` /s/Susan Langworthy
` Susan Langworthy
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`Dated: July 20, 2017
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`10199394.1 15
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