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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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`WATSON LABORATORIES, INC.
`Petitioner
`
`v.
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`UNITED THERAPEUTICS CORP.
`Patent Owner
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`
`
`Patent No. 9,358,240
`Issue Date: June 7, 2016
`Patent No. 9,339,507
`Issue Date: May 17, 2016
`
`Title: TREPROSTINIL ADMINISTRATION BY INHALATION
`_______________
`
`Inter Partes Review No. 2017-01621
`Inter Partes Review No. 2017-01622
`____________________________________________________________
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`PATENT OWNER’S UNOPPOSED MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.561
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`
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`
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`1 A word-for-word identical document is being filed in IPR2017-01621 and
`IPR2017-1622.
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`4812-6969-4320.1
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`
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`IPR2017-01621
`IPR2017-01622
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`INTRODUCTION
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`I.
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`Patent Owner’s Motion to Expunge
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`Under 37 C.F.R. § 42.56, Patent Owner United Therapeutics Corporation
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`(“Patent Owner”) hereby moves to permanently expunge certain confidential
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`information from the record, namely the unredacted versions of Exhibits 2049-
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`2051, 2053, 2055, 2058, 2065-2068, 2071, 2074, 2075, 2083, 2088, 2089, and
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`2204 in their entireties. Patent Owner has conferred with counsel for Watson
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`Laboratories, Inc., (“Petitioner”) on this matter, and Petitioner does not oppose this
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`motion. The identified documents all disclose and discuss confidential information
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`that could be improperly used by competitors to gain unfair business and
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`competitive advantage with customers in the marketplace.
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`If the Board is not inclined to grant this motion, Patent Owner respectfully
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`requests a conference call with the Board to discuss the issues raised in this motion
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`before any information becomes irreversibly public.
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`II. AUTHORIZATION FOR THE MOTION
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`Patent Owner contacted the Board by email for authorization on August 29,
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`2018 to file a motion to expunge under 37 C.F.R. § 42.56 and received
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`authorization to do so on August 30, 2018.
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`III.
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`IDENTIFICATION OF PAPERS AND EXHIBITS TO BE
`EXPUNGED
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`The following list identifies the non-redacted exhibits to be expunged:
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`4812-6969-4320.1
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`
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`IPR2017-01621
`IPR2017-01622
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`
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`Patent Owner’s Motion to Expunge
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`Non-redacted Exhibits
`Ex. 2049
`Ex. 2050
`Ex. 2051
`Ex. 2053
`Ex. 2055
`Ex. 2058
`Ex. 2065
`Ex. 2066
`Ex. 2067
`Ex. 2068
`Ex. 2071
`Ex. 2074
`Ex. 2075
`Ex. 2083
`Ex. 2088
`Ex. 2089
`Ex. 2204
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`
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`Exhibits 2049-2051, 2055, 2058, 2065-2068, 2071, 2074, 2075, 2083, 2088,
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`and 2089 were filed under seal in their entireties. Redacted, public versions of
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`Exhibits 2053 and 2204 were filed pursuant to motions to seal. To be clear, Patent
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`Owner is not seeking to have the redacted, public versions expunged.
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`4812-6969-4320.1
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`2
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`
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`IPR2017-01621
`IPR2017-01622
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`IV. REASONS FOR ENTITLEMENT TO RELIEF
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`Patent Owner’s Motion to Expunge
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`
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`Each of the redacted documents contains information that the Board has already
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`ruled upon and determined to be confidential, so good cause has already been
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`found by the Board for sealing this information.
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`The PTAB Trial Practice Guide states that confidential information “ordinarily”
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`becomes public 45 days after final judgment in a trial. Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012); see also Comment 172, 77
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`Fed. Reg. 48612, 48644. The Board’s rules, however, “aim to strike a balance
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`between the public’s interest in maintaining a complete and understandable file
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`history and the parties’ interest in protecting truly sensitive information.” Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012).
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`In the present case, a settlement was reached and the proceeding has been
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`terminated prior to the issuance of a final written decision. Redacted, public
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`versions of certain exhibits were filed and already exist in the docket. Making the
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`sealed documents public at this time would prejudice Patent Owner for the reasons
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`set forth below and in the previous motions to seal.
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`The Board’s Order Granting Joint Motion to Terminate the Proceeding After
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`Institution and Request to Treat Settlement Agreement as Business Confidential
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`Information (Paper No. 64) contains no confidential information and can be fully
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`understood by the public. Whereas the public would not benefit from revealing the
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`4812-6969-4320.1
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`3
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`
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`IPR2017-01621
`IPR2017-01622
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`confidential information, Patent Owner could be placed at a competitive
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`Patent Owner’s Motion to Expunge
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`disadvantage.
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`V. CONCLUSION
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`For the reasons set forth above and in the previous motions to seal, Patent
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`Owner respectfully requests that the aforementioned exhibits be expunged from the
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`record.
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`Date: Sept. 5, 2018
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`Respectfully submitted,
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`/Stephen B. Maebius/
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`Stephen B. Maebius
`Registration No. 35,264
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`George E. Quillin
`Registration No. 32,792
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`Foley & Lardner LLP
`3000 K Street, N.W.
`Suite 600
`Washington, D.C. 20007
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`Shaun R. Snader
`Registration No. 59,987
`United Therapeutics Corporation
`1735 Connecticut Avenue, N.W.
`Second Floor
`Washington, DC 20009
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`Counsel for Patent Owner
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`4812-6969-4320.1
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
`UNOPPOSED MOTION TO EXPUNGE UNDER 37 C.F.R. § 42.56 is being
`served on Sept. 5, 2018 by filing them through the PTAB E2E System as well as
`delivering copies via email to the following counsel for the Petitioner:
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`Michael K. Nutter (Reg. No. 44,979)
`WINSTON & STRAWN LLP
`35 W. Wacker Dr.
`Chicago, IL 60601
`Email: mnutter@winston.com
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`Andrew R. Sommer (Reg. No. 53,932)
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`Email: asommer@winston.com
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`Kurt A. Mathas
`WINSTON & STRAWN LLP
`35 W. Wacker Dr.
`Chicago, IL 60601
`Email: kmathas@winston.com
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`
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`4812-6969-4320.1
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`/Stephen B. Maebius/
`
`Stephen B. Maebius
`Registration No. 35,264
`
`George E. Quillin
`Registration No. 32,792
`
`Shaun R. Snader
`Registration No. 59,987
`
`Counsel for Patent Owner
`
`