UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`AGILA SPECIALTIES INC. AND
`MYLAN PHARMACEUTICALS INC.,
`Petitioners,
`
`v.
`
`CUBIST PHARMACEUTICALS, INC.,
`Patent Owner
`
`Patent No. 8,058,238
`________________________
`
`Case IPR20150-00144
`________________________
`
`DECLARATION OF ADRIANA SERRANO IN SUPPORT OF AGILA’S
`MOTION TO CORRECT ACCORDED FILING DATE
`UNDER 37 C.F.R. §§1.10, 42.20 and 42.22
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 1 of 7
`
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`AGILA SPECIALTIES INC. AND
`MYLAN PHARMACEUTICALS INC.,
`Petitioners,
`
`v.
`
`CUBIST PHARMACEUTICALS, INC.,
`Patent Owner
`
`Patent No. 8,058,238
`________________________
`
`Case IPR20150-00144
`________________________
`
`DECLARATION OF ADRIANA SERRANO IN SUPPORT OF AGILA’S
`MOTION TO CORRECT ACCORDED FILING DATE
`UNDER 37 C.F.R. §§1.10, 42.20 and 42.22
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 1 of 7
`
`
`
`I, Adriana Serrano, declare as follows:
`
`1.
`
`I am a paralegal associated with the law firm of Wilson Sonsini
`
`Goodrich & Rosati (“WSGR”), counsel for Petitioner Agila Specialties Inc. and
`
`Mylan Pharmaceuticals Inc. (“Agila”) in this case. I submit this declaration in
`
`support of Petitioners’ Motion to Correct the Accorded Filing Date of Inter Partes
`
`Review Petition IPR2015-00144, challenging claims 10-36, 43-47 and 176-192 of
`
`U.S. Patent No. 8,058,238, and I have personal knowledge of the facts set forth in
`
`this declaration and can testify competently to those facts.
`
`2.
`
`I received my Bachelors in Arts (Philosophy) from Mount Saint Mary’s
`
`College in June 2000. I received my paralegal certificate from Cerritos Community
`
`College in Los Angeles County in December 2012.
`
`3.
`
`I have been employed by WSGR since December 2011, and a paralegal
`
`at WSGR since December 2013. I was a Practice Group Assistant with the
`
`Litigation and Patent Groups since December 2011, before becoming a paralegal in
`
`the Patent Group, assisting attorneys and patent agents with the electronic filing of
`
`documents, responses and applications on the U.S. Patent and Trademark Office’s
`
`EFS Web system. Prior to joining WSGR in December 2011, I worked as a
`
`Litigation Assistant for numerous law firms in San Diego and Los Angeles County
`
`for approximately 11 years, with a total of 13 years of experience in the legal field,
`
`specifically in litigation and patent prosecution.
`
`-2-
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 2 of 7
`
`
`
`4.
`
`My work as a paralegal includes electronic filing and support of the
`
`Inter Partes Review team. This includes electronically filing inter partes review
`
`documents with the Patent Trial and Appeal Board’s Patent Review Processing
`
`System (PRPS) electronic filing website. I have been electronically filing documents
`
`with PRPS since December 2012.
`
`5.
`
`In preparation for the filing of inter partes review petitions for U.S.
`
`Patent Nos. 8,058,238 (‘238 patent) and 8,129,342 (‘342 patent), I prepared and
`
`marked all prior art references and court documents as exhibits cited in the petition
`
`and declarations for electronic filing and personal service by October 22, 2014. I
`
`also made copies of the prior art and court document exhibits by October 22, 2014,
`
`in preparation for personal service of the documents to patent owner Cubist
`
`Pharmaceuticals, Inc. (“Cubist”).
`
`6.
`
`On October 23, 2014, I was working to assemble and serve paper copies
`
`on Cubist of the inter partes review petitions for the ‘238 and ‘342 patents, and
`
`electronically file Petitioners’ Request for Inter Partes Review of U.S. Patent No.
`
`8,058,238, which was covered in four petitions to address the large number of claims
`
`(192 claims total) for the ‘238 patent. The fourth and last petition challenged claims
`
`10-36, 43-47 and 176-192 of the ‘238 patent.
`
`7.
`
`I began uploading the petition and exhibits for the last petition for the
`
`‘238 patent (IPR2015-00144) at 8:26 pm. Because Attorney Lorelei Westin was on
`
`-3-
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 3 of 7
`
`
`
`my computer uploading the third petition for the ‘238 patent (IPR2015-00143), Ms.
`
`Westin instructed me to use her computer. I was able to input all of the information
`
`for the lead and back-up counsel, as well as the information for the Real Parties in
`
`Interest and powers of attorney from Petitioners Agila and Mylan Pharmaceuticals. I
`
`then began to upload the fourth Inter Partes Review Petition for U.S. Patent No.
`
`8,058,238.
`
`8.
`
`Once the petition was uploaded, I pressed on the “save” button to save
`
`my work. However, when I attempted to upload the first of the exhibits that
`
`accompanied the petition I was unable to do so. Instead, a small blue circle appeared
`
`on the screen, and the upload appeared to be pending. I waited for awhile and
`
`realized that the uploading transaction was not progressing, and was also not
`
`responsive to my attempts to further the uploading process. This included pressing
`
`on the “Next” button in the lower right hand corner of the screen, as well as the
`
`“Back” button in the lower left hand corner of the screen. The program was
`
`unresponsive to anything that I clicked on. I had no other choice but to try and
`
`refresh the screen, which subsequently closed the browser window. I was then left
`
`with the only choice of re-logging in to PRPS and starting the process from the point
`
`of my previous save of the file.
`
`9.
`
`Once I was able to get back to the saved petition and upload more
`
`documents, I immediately encountered the same glitches, which occurred with at
`
`-4-
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 4 of 7
`
`
`
`least two other exhibits. Because of the issues with the PRPS electronic filing
`
`system, and the deadline of 8:59 pm Pacific Time that we were facing for filing, I
`
`immediately turned to payment of the Petition Fee, which the PRPS system
`
`calculated at $42,400.00. This was approximately 8:56 pm. I inputted all of the
`
`deposit account information, the filing fees, the authorized user information (“Peter
`
`Munson” as lead counsel) and the password, and hit the “pay” button. I then hit the
`
`“submit” button to submit the petition and waited for a few seconds, but the system
`
`appeared non-responsive as previously. I hit the submit button once again, before
`
`8:59 pm. I am positive that as I was waiting for confirmation from PRPS after
`
`pressing the submit button the second time, it was 8:59 pm. After a few seconds, I
`
`received notification from PRPS that the filing date accorded was October 24, 2014.
`
`10.
`
`I was certain that I was diligent in paying and submitting the petition
`
`before 8:59 pm. I spoke to Lorelei Westin and Peter Munson of WSGR, and
`
`explained the technical glitches that I had while uploading the documents, as well as
`
`the delay in receiving the filing date by the PRPS system after I pressed the submit
`
`button. It was decided then that we would do a paper filing of a complete set of the
`
`petition and exhibits to the Patent Trial and Appeal Board by Priority Express Mail.
`
`11. While Ms. Westin prepared the accompanying motion and revised the
`
`petition to authorize payment of the petition fee by the Patent Trial and Appeal
`
`Board, I prepared a file-transfer protocol link to send to our document processing
`
`-5-
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 5 of 7
`
`
`
`department in Palo Alto with all of the marked exhibits. I then sent an electronic
`
`copy of the inter partes review petition challenging claims 10-36, 43-47 and 176-192
`
`of the ‘238 patent and the accompanying motion to our document processing
`
`department, who also arranged for a courier to take the printed petition, motion and
`
`exhibits to the United States Postal Office to be express-mailed. Although I directed
`
`our document processing department to address the Priority Express Mail package to
`
`the Patent Trial and Appeal Board, in the rush of preparing the package and labels,
`
`the package was inadvertently addressed to the “Commissioner of Patents” at the
`
`correct address of P.O. Box 1450, Alexandria, Virginia 22313-1450.
`
`12.
`
`The courier service came at approximately 11:00 pm to the Palo Alto
`
`office to pick up the package for delivery to the San Francisco International Airport’s
`
`Post Office. We requested that the courier have the Post Office stamp the return
`
`receipt with the received date, and then return to our Palo Alto office with the
`
`stamped receipt. We received notification later on in the evening that the courier
`
`was able to express mail the package and received a stamped receipt reflecting a
`
`mailing date of October 23, 2014. Exh. 1039.
`
`-6-
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 6 of 7
`
`
`
`I declare under penalty of perjury under the laws of the United States that the
`
`foregoing is true and correct. Executed in San Diego, California on December 01,
`
`2014.
`
`Respectfully submitted,
`
`Dated: December 1 2014
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 7 of 7
`
`PETITIONER
`
`EXHIBIT NO. 1043 Page 7 of 7
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