Paper No. ____
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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 TECHNOLOGIES, INC.
`Petitioner
`v.
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`NOVEN PHARMACEUTICALS, INC.
`Patent Owner
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`_______________
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`Case No. IPR2018-00174
`U.S. Patent No. 9,730,900
`____________________________________________________________
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`JOINT MOTION TO EXPUNGE EXHIBIT 2024
`UNDER 37 C.F.R. § 42.56
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`MYLAN TECHNOLOGIES, INC.
`Petitioner
`v.
`
`NOVEN PHARMACEUTICALS, INC.
`Patent Owner
`
`_______________
`
`Case No. IPR2018-00174
`U.S. Patent No. 9,730,900
`____________________________________________________________
`
`JOINT MOTION TO EXPUNGE EXHIBIT 2024
`UNDER 37 C.F.R. § 42.56
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`U.S. Patent No. 9,730,900
`IPR2018-00174
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`I.
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`INTRODUCTION
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`Under 37 C.F.R. § 42.56 and pursuant to authorization received by email
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`from the Board on September 24, 2018, Petitioner Mylan Technologies, Inc. and
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`Patent Owner Noven Pharmaceuticals, Inc. (collectively, the “Parties”) jointly
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`move to permanently expunge from the record Exhibit 2024 (“Binding Settlement
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`Term Sheet between Petitioner and Patent Owner”) in its entirety. Exhibit 2024
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`discloses and discusses business confidential information relating to the settlement
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`agreement between the Parties, which could be improperly used by competitors to
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`gain unfair business and competitive advantages with customers
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`in
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`the
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`marketplace.
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`If the Board is not inclined to grant this motion, the Parties respectfully
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`request a conference call with the Board to discuss the issues raised in this motion.
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`II. AUTHORIZATION FOR THE MOTION
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`On September 13, 2018, the Board issued an Order granting the Parties’
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`joint motion to terminate due to settlement prior to institution. Paper 14. The
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`Parties contacted the Board by email on September 24, 2018, to request
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`authorization to move to permanently expunge from the record the Binding Term
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`Sheet (Exhibit 2024) submitted with the Joint Motion to Terminate (Paper 11), and
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`the Board responded by email on the same day to authorize the Parties to move to
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`expunge Exhibit 2024.
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`1
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`U.S. Patent No. 9,730,900
`IPR2018-00174
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`III.
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`IDENTIFICATION OF THE EXHIBIT TO BE EXPUNGED
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`Exhibit 2024 was filed jointly with a Request under 37 C.F.R. § 42.74(c)
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`(Paper 12) to keep Exhibit 2024 separate from the files involved in the IPR. In the
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`Order granting the Parties’ Joint Motion to Terminate, the Board also granted the
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`Parties’ Request under 37 C.F.R. § 42.74(c) to keep Exhibit 2024 separate from the
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`patent file (Paper 14, 3).
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`IV. REASONS FOR ENTITLEMENT TO RELIEF
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`The Board’s rules “aim to strike a balance between the public’s interest in
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`maintaining a complete and understandable file history and the parties’ interest in
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`protecting truly sensitive information.” Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,760 (Aug. 14, 2012).
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`In the present case, Exhibit 2024 is not required for “a complete and
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`understandable file history.” A settlement was reached between the Parties and the
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`IPR has been terminated prior to the issuance of a final written decision.
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`Maintaining Exhibit 2024 as part of the record does not benefit the public because
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`the Board’s Order granting the Parties’ Joint Motion to Terminate (Paper 14) can
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`be fully understood by the public in its own right and without the confidential
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`details of the Parties’ Binding Term Sheet (Exhibit 2024).
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`Whereas the public would not benefit from revealing the confidential
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`information in Exhibit 2024, the Parties have a legitimate interest in protecting the
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`U.S. Patent No. 9,730,900
`IPR2018-00174
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`truly sensitive information contained therein, and could be placed at a competitive
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`disadvantage if, for example, the confidential information is accessed under 37
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`C.F.R. §§ 42.74(c)(1) or 42.74(c)(2).
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`Further, the Board has already ruled upon the information in Exhibit 2024
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`and determined that the information is confidential (Paper 14, 3), so good cause
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`has already been found by the Board that the information should not be made
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`available to the public.
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`V. CONCLUSION
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`For the reasons set forth above and in the previously granted Request under
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`37 C.F.R. § 42.74(c) (Paper 12), the Parties respectfully request that Exhibit 2024
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`Respectfully submitted,
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`
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`/ Courtenay C. Brinckerhoff /
`Courtenay C. Brinckerhoff
`Registration No. 37,288
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`Jason N. Mock
`Registration No. 69,186
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`Counsel for Patent Owner
`Foley & Lardner LLP
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`3
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`be expunged from the record.
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`Dated: September 26, 2018
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` /
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` Steven W. Parmelee /
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`Steven W. Parmelee
`Registration No. 31,990
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`Michael T. Rosato
`Registration No. 52,182
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`Jad A. Mills
`Registration No. 63,344
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`Counsel for Petitioner
`Wilson, Sonsini, Goodrich, & Rosati
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`U.S. Patent No. 9,730,900
`IPR2018-00174
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Joint Motion
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`to Expunge under 37 C.F.R. § 42.56 is being served on September 26, 2018, by
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`filing it through the PTAB E2E System as well as by email directed to the
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`attorneys of record for the Petitioner at the following addresses:
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`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
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`By: / Courtenay C. Brinckerhoff /
`Courtenay C. Brinckerhoff
`Registration No. 37,288
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`Jason N. Mock
`Registration No. 69,186
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`Counsel for Patent Owner
`Foley & Lardner LLP
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