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 IPR2015 UNASSIGNED
`________________________
`
`DECLARATION OF LORELEI P. WESTIN 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. 1044 Page 1 of 8
`
`
`________________________
`
`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 IPR2015 UNASSIGNED
`________________________
`
`DECLARATION OF LORELEI P. WESTIN 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. 1044 Page 1 of 8
`
`
`
`I, Lorelei P. Westin, declare as follows:
`
`1.
`
`I am an attorney associated with the law firm of Wilson Sonsini
`
`Goodrich & Rosati (“WSGR”) and co-counsel for Petitioner Agila Specialties Inc.
`
`and Mylan Pharmaceuticals Inc. (“Agila”) in this case. I submit this declaration in
`
`support of Agila’s Motion to Correct Accorded Filing Date Under 37 C.F.R. §§ 1.10,
`
`42.20 and 42.22, and I have personal knowledge of the facts set forth in this
`
`declaration and can testify competently to those facts.
`
`2.
`
`I have been an associate attorney with Wilson Sonsini Goodrich &
`
`Rosati, starting in 2004-2005 and since 2007, and a registered Patent Attorney since
`
`2008. I was a registered patent agent with the U.S. Patent and Trademark Office
`
`from 2002-2008. I have been working on post-grant proceedings since December
`
`2012, and have been back-up counsel on twelve inter partes review petitions. I am
`
`familiar with the rules of the Patent and Trial Appeal Board.
`
`3.
`
`On October 23, 2014, I was one of the associate attorneys working on
`
`the Petition for Inter Partes Review of U.S. Patent No. 8,058,238 (the ‘238 patent).
`
`The ‘238 patent issued with 192 claims, and four petitions were drafted to challenge
`
`all claims of the ‘238 patent within the page limits per the Office’s inter partes
`
`review rules. The four petitions challenging all claims of the ‘238 patent were
`
`drafted and ready for filing, along with a fifth inter partes review petition
`
`challenging all claims of U.S. Patent No. 8,139,342 (the ‘342 patent), between 3:30-
`
`-2-
`
`PETITIONER
`
`EXHIBIT NO. 1044 Page 2 of 8
`
`
`
`4:00 pm Pacific Time (PT) on October 23rd. In addition, a declaration submitted in
`
`support of Petitioners’ Inter Partes Review of the ‘238 patent, which was executed
`
`by October 22, 2014 by Dr. Catherine N. Mulligan, an expert in the subject matter of
`
`the ‘238 patent, was also ready to file electronically as well. All 37 exhibits prepared
`
`for filing with the four inter partes review petitions were marked and ready to file by
`
`October 22, 2014.
`
`4.
`
`I started filing the first of five petitions for the ‘342 and ‘238 patents
`
`shortly after 5:30 pm PT on the U.S. Patent Trial and Appeal Board’s Patent Review
`
`Processing System (PRPS), after the service copy to patent owner Cubist
`
`Pharmaceuticals Inc. (Cubist) was prepared. The Petition for Inter Partes Review of
`
`U.S. Patent No. 8,129,342 was filed first, followed by: 1) Petition for Inter Partes
`
`Review of U.S. Patent No. 8,058,238, challenging claims 1-7, 49, 52-65, 93, 108-
`
`111, 125-138 and 147-150; 2) Petition for Inter Partes Review of U.S. Patent No.
`
`8,058,238, challenging claims 8-9, 49-51, 85-92, 105-107, 113-124, 144-146, 151-
`
`162 and 164-175; and 3) Petition for Inter Partes Review of U.S. Patent
`
`No.8,058,238, challenging claims 37-42, 48, 49, 66-84, 94-99, 100-104, 112, 139-
`
`143 and 163. Because of issues with our courier for personal service of the petitions
`
`and exhibits to Cubist, I stopped several times during the uploading of the documents
`
`to attend to the service copies. With these interruptions, I estimated that it took an
`
`average of 35 minutes to file each petition. I also encountered minor technical issues
`
`-3-
`
`PETITIONER
`
`EXHIBIT NO. 1044 Page 3 of 8
`
`
`
`with the PRPS during the uploading of the first four petitions, with one incident that
`
`required a restart of the PRPS system.
`
`5.
`
`At approximately 8:15 pm PT, I directed our paralegal Adriana Serrano
`
`to begin efiling the last Petition for Inter Partes Review of U.S. Patent No.
`
`8,058,238, challenging claims 10-36, 43-47 and 176-192. Because I was on Ms.
`
`Serrano’s computer, I directed her to use my computer. All of the petitions for the
`
`‘238 and ‘342 patents were filed under lead counsel Peter Munson’s log-in
`
`information. Later that evening, I received notification from Ms. Serrano that the
`
`last petition was given a provisional filing date of October 24, 2014, which was
`
`reflected in an email received from the PTAB, dated October 23, 2014 at 9:00 pm
`
`PT, for IPR2015-00144. See Exh. 1041.
`
`6. We spoke to lead counsel Peter Munson, at which time Ms. Serrano told
`
`us about the technical difficulties that she encountered with PRPS. We made the
`
`decision to file the petition and exhibits under 37 C.F.R. § 42.6(b)(2), which
`
`provides for filing by paper copy where accompanied by: (i) a motion requesting
`
`acceptance of the paper copy submission; and (ii) identifying the date of
`
`transmission where a party seeks a filing date other than the date of receipt at the
`
`Board. By approximately 9:30 pm PT, we had started to make arrangements to
`
`paper file the petition under 37 C.F.R. § 42.6(b)(2)(i).
`
`-4-
`
`PETITIONER
`
`EXHIBIT NO. 1044 Page 4 of 8
`
`
`
`7.
`
`To make this paper filing by midnight October 23, 2014, i.e., in less
`
`than 2-1/2 hours, we worked with our colleagues in our Palo Alto office to print: 1)
`
`Petition for Inter Partes Review of U.S. Patent No. 8,058,238, challenging claims
`
`10-36, 43-47 and 176-192, and revised to include an authorization for payment of the
`
`inter partes review petition fee by our deposit account; 2) Exhibits 1001-1037; and
`
`3) Powers of Attorney from Petitioners Agila and Mylan. We also drafted a Motion
`
`to Request Acceptance of Mailed Petition for Inter Partes Review of U.S. Patent No.
`
`8,058,238, as required under 37 C.F.R. § 42.6(b)(2)(i)(A). The petition package
`
`containing the petition, motion, exhibits and power of attorneys was assembled and
`
`mailed by Priority Express Mail® at the U.S. Post Office, San Francisco International
`
`Terminal, before midnight on October 23, 2014. See Exhibit 1039.
`
`8. We subsequently reviewed e-mail notifications from the U.S. Patent and
`
`Trademark Office regarding both electronic payment of the $42,400 fee, as well
`
`from the U.S. Patent and Trademark Office regarding the assigned filing date. While
`
`the e-mail containing information regarding payment of the $42,400 fee for the
`
`Petition for Inter Partes Review of U.S. Patent No. 8,058,238 (IPR2015-00144) was
`
`dated October 23, 2014, see Exh. 1040, the e-mail assigning the provisional filing
`
`date listed October 24, 2014 for the same petition. Exh. 1041.
`
`9.
`
`On October 27, 2014, I spoke to Maria Vignone, senior paralegal for the
`
`Patent Trial and Appeal Board. We discussed the difficulties of electronic uploading
`
`-5-
`
`PETITIONER
`
`EXHIBIT NO. 1044 Page 5 of 8
`
`
`
`of the exhibits on October 23, 2014 for Ms. Serrano on my computer. She informed
`
`me that that there can be issues with the PRPS system because many practitioners
`
`use a newer version of Internet Explorer that might not be completely compatible
`
`with PRPS, which was designed to operate with an earlier version of Internet
`
`Explorer. I went through a compatibility test with Ms. Vignone by right-clicking on
`
`the header on uspto.gov, and understood that the version of Internet Explorer on my
`
`computer, which Ms. Serrano used to upload the last petition (IPR2015-00144), was
`
`not fully compatible with the PRPS system.
`
`10.
`
`I also explained to Ms. Vignone that because of the electronic filing
`
`difficulties, we also filed a paper copy under 37 C.F.R. § 42.6(b)(2). She informed
`
`me that she would be the contact person at the Patent Trial and Appeal Board that
`
`would receive the documents, and that she would look out for the package. I
`
`understand that the Board did receive our paper filing shortly after my conversation
`
`with Ms. Vignone.
`
`11. Attached hereto as Exhibit 1038 is a true and correct copy of the receipt
`
`of delivery, dated October 24, 2014 at 1:20 pm EST, to patent owner Cubist
`
`Pharmaceuticals addressed to: 65 Hayden Avenue, Boston, Massachusetts,
`
`Lexington, Massachusetts 02421.
`
`12. Attached hereto as Exhibit 1039 is a true and correct copy of the
`
`Priority Express Mail receipt received back from the United States Postal Service
`
`-6-
`
`PETITIONER
`
`EXHIBIT NO. 1044 Page 6 of 8
`
`
`
`directed to: Commissioner of Patents, P.O. Box 1450, Alexandria, Virginia, 22313-
`
`1450, as directed under 37 C.F.R. § 42.6(b)(2)(ii), bearing a stamped date of October
`
`23, 2014.
`
`13. Attached hereto as Exhibit 1040 is a true and correct copy of an e-mail
`
`received from the United States Patent and Trademark Office listing October 23,
`
`2014, as the date of payment of the Petition for Inter Partes Review of U.S. Patent
`
`No. 8,058,238 (IPR2015-00144).
`
`14. Attached hereto as Exhibit 1041 is a true and correct copy of an e-mail
`
`received from the United States Patent and Trademark Office, listing October 24,
`
`2014 as the provisional filing date of the Petition for Inter Partes Review of U.S.
`
`Patent No. 8,058,238 (IPR2015-00144).
`
`15. Attached hereto as Exhibit 1042 is a true and correct copy of the notice
`
`posted by the Patent Trial and Appeal Board on November 7, 2014, for IPR2015-
`
`00144, according the filing date of October 23, 2014.
`
`-7-
`
`PETITIONER
`
`EXHIBIT NO. 1044 Page 7 of 8
`
`
`
`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 October XX,
`
`2014.
`
`Dated: December 1 2014
`
`Respectfully submitted,
`
`Lorelei P. Westin, Reg. No. 52,353
`Reg. No. 52,353
`
`PETITIONER
`
`EXHIBIT NO. 1044 Page 8 0f 8
`
`PETITIONER
`
`EXHIBIT NO. 1044 Page 8 of 8
`
`
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