Joint Motion to Preserve
`The Record Pending Appeal
`PGR2015-00011
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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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`ALTAIRE PHARMACEUTICALS, INC.,
`Petitioner,
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`v.
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`PARAGON BIOTECK, INC.,
`Patent Owner.
`____________________
`
`Case PGR 2015-00011
`Patent 8,859,623 B1
`____________________
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`JOINT MOTION TO PRESERVE THE RECORD PENDING APPEAL
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`The Record Pending Appeal
`PGR2015-00011
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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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`
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`ALTAIRE PHARMACEUTICALS, INC.,
`Petitioner,
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`v.
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`PARAGON BIOTECK, INC.,
`Patent Owner.
`____________________
`
`Case PGR 2015-00011
`Patent 8,859,623 B1
`____________________
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`JOINT MOTION TO PRESERVE THE RECORD PENDING APPEAL
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`Joint Motion to Preserve
`The Record Pending Appeal
`PGR2015-00011
`JOINT REQUEST TO PRESERVE THE RECORD FOR APPEAL
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`I.
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`The parties to this action jointly request that the record of Case No.
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`PGR2015-00011 be preserved pending a possible appeal, including preservation of
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`all sealed documents in non-public form. Other Board panels have granted similar
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`requests. See Illumina, Inc. v. Columbia Univ., IPR2012-00006, Paper 133 at 3-4
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`(P.T.A.B. Apr. 25, 2014); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
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`IPR2013-00128, Paper 93 at 2-3 (P.T.A.B. Sep. 10, 2014); LKQ Corp. v.
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`Clearlamp, LLC, IPR2013-00020, Paper 77 at 2 (P.T.A.B. Dec. 19, 2014). The
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`Board authorized this motion in an e-mail dated December 23, 2016.
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`Sealed confidential information subject to a protective order will ordinarily
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`become public 45 days after final judgment in a trial unless a motion to expunge is
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`filed. 77 Fed. Reg. 48761; see also 37 C.F.R. § 42.56. Here, the date 45 days after
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`final judgment was entered is December 29, 2016. However, the Parties have until
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`63 days from the final written decision (i.e., until January 17, 20171) to file a
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`notice of appeal. See Paper 48; 37 C.F.R. § 90.3(b)(1) (“A timely request for
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`rehearing will reset the time for appeal or civil action to no later than sixty-three
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`(63) days after action on the request.”).
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`1 Because the 63-day mark falls on January 16, 2017, the deadline for filing a
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`notice of appeal is January 17, 2017.
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`1
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`Joint Motion to Preserve
`The Record Pending Appeal
`PGR2015-00011
`The Federal Rules of Appellate Procedure and the Federal Circuit Rules
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`require that the record be retained by the Board pending appeal. Specifically,
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`Federal Circuit Rule 17(a) states that “[t]he agency must retain the record.”
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`Federal Circuit Rule 17(d), titled “Access of Parties and Counsel to Original
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`Record,” also requires that the parties and their counsel have access to both the
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`sealed and unsealed portions of the record “[w]hen a petition for review or notice
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`of appeal is filed.” No notice of appeal has yet been filed, and the deadline for
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`filing a notice of appeal, as noted above, is January 17, 2017.
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`Moreover, Petitioner submits that the information that was filed under seal
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`in this IPR was discussed at length in its brief (see, e.g., Paper 36 at 4-10).
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`Petitioner submits that if the record is not preserved in its entirety including any
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`sealed portions, and an appeal is taken, the Federal Circuit may not be able to fully
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`consider the issues raised by Petitioner during the inter partes review, which would
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`cause prejudice to Petitioner.
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`While Paragon does not believe the information under seal is material to any
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`issues that may reasonably arise on appeal, Paragon does not oppose this motion.
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`After the final disposition of the appellate process, the parties intend to file a
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`motion to expunge the confidential information from the record, and have
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`preliminarily agreed on the information that should be expunged. Accordingly, if
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`the Board grants this motion, the parties will contact the Board within ten business
`2
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`Joint Motion to Preserve
`The Record Pending Appeal
`PGR2015-00011
`days after the conclusion of any appeal proceeding, or if no appeal is taken, within
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`ten business days after the deadline to file an appeal, and request authorization to
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`file a motion to expunge confidential information.
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`II.
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`IF THE BOARD DENIES THIS MOTION, THE PARTIES REQUEST
`ADDITIONAL TIME TO FILE A MOTION TO EXPUNGE
`As sealed information is normally released to the public 45 days after final
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`written decision, a motion to expunge should ordinarily be filed before that time.
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`77 Fed. Reg. 48761; 37 C.F.R. § 42.56. In this case, the deadline to file a motion
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`to expunge is December 29, 2016. In the event that the Board denies the present
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`motion after December 29, 2016, the parties request additional time to file a
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`motion to expunge.
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`Respectfully submitted,
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`
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`/Mark J. Thronson/
`Mark J. Thronson
`Registration No. 33,082
`Counsel for Petitioner
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`/Michael T. Rosato/ (with permission)
`Michael T. Rosato
`Registration No. 52,182
`Counsel for Patent Owner
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`Dated: December 23, 2016
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`3
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`Joint Motion to Preserve
`The Record Pending Appeal
`PGR2015-00011
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing JOINT MOTION
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`TO PRESERVE THE RECORD PENDING APPEAL is being served on
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`counsel of record by filing this document via USPTO End to End system.
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`Dated: December 23, 2016
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`Respectfully submitted,
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`/Mark J. Thronson/
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`
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`Mark J. Thronson
`Registration No. 33,082
`BLANK ROME LLP
`1825 Eye Street NW
`Washington DC 20006
`Tel: 202-420-4742
`MThronson@BlankRome.com
`
`Counsel for Petitioner
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