Case 2:13-cv-00391-ES-JAD Document 126 Filed 04/22/15 Page 1 of 8 PageID: 1757
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`, Chambers of
`Joseph A. Dickson
`United States Magistrate Judge
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`Martin Luther King, Jr. Federal Bid .
`& U.S. Courthouse
`50 Walnut Street
`Newark, New Jersey 07102
`(973-645-2580)
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`LETTER ORDER
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`April22,2015
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`To all counsel of record via ECF
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`Re:
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`Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals LLC, et al.
`Civil Action No.: 13-391 ES JAD
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`Dear Counsel:
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`This will address Plaintiff Jazz Pharmaceuticals, Inc.' s ("Jazz") informal application, (E
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`Nos. 95 and 110), seeking clarification of the Discovery Confidentiality Order entered in t
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`matter (the "DCO"). (ECF No. 73). Specifically, Jazz seeks the Court's guidance on whe
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`specific language in the DCO operates to bar Jazz's outside counsel, Quinn Emmanuel Urguh
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`& Sullivan, LLP from participating in: (1) post-grant covered business method ("CBM'') revi
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`proceedings that Defendants Amneal Pharmaceuticals LLC and Par Pharmaceutical, I
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`(collectively, "Defendants") instituted before the Patent & Trademark Office Patent Trial
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`Appeal Board ("PTAB"); and (2) post-grant inter-partes review ("IPR") proceedings
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`Defendants instituted with regard to the same patents. 1 Both sides ask the Court to apply the D
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`1 By letters dated January 15, 2015, (ECF No. 107), and January 22, 2015, (ECF No. 110), t e
`parties advised the Court that the PTAB had rejected four of Defendants' applications for CB
`review, and that another two later-filed applications remained pending. (ECF No. 110 at 1).
`parties also advised that Defendants "have now filed new petitions with the [PTAB] for [IPR]
`the same six patents for which they filed CBM petitions." (Id.) (emphasis in original). Plaint
`contends that its arguments regarding the Quinn Emmanuel firm's participation in the CBM revi
`apply with equal force the IPR process. (Id. at 2) ("Quinn Emmanuel should not be barred fr
`representing Jazz in Defendant' post-grant IPR proceedings for the same reasons that it should
`be barred from participating in the post-grant CBM proceedings."). Defendants do not sugg
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`Case 2:13-cv-00391-ES-JAD Document 126 Filed 04/22/15 Page 2 of 8 PageID: 1758
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`as written, and neither has asked the Court to modify its terms. After carefully reviewing
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`parties' written submissions and considering the oral arguments of counsel, the Court finds t at
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`the DCO does not bar Jazz's counsel from participating in the CBM or IPR Proceedings at iss
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`a.
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`Relevant Background
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`On July 1, 2014, the Court entered the DCO, which set forth, among other things,
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`parameters under which persons are entitled to obtain and use information that a party
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`e
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`s
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`designated as "confidential" or "highly confidential."
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`(See generally, ECF No.
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`specifically, paragraph 6(a) of the DCO provides, in pertinent part, that
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`Confidential Information of the producing party may be disclosed,
`summarized, described, revealed or otherwise made available in
`whole or in part only in accordance with the terms of this Order, and
`only to the following persons:
`(i) outside counsel of record for Jazz, Amneal, Par; and employees
`of such counsel all of whom represent and agree that they do not
`undertake patent preparation or prosecution activities as set forth
`below in Paragraph 6(b ).
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`(Id. at 7-8). In tum, Paragraph 6(b), which pertains to the disclosure of "Highly Confident 1
`Information'', provides, in pertinent part:
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`[T]he specified attorneys designated by the parties in Paragraphs
`6(a)(i)-(ii) shall not have access to Highly Confidential Information
`if they are involved, either formally or informally, for the length of
`this litigation plus one year after a final, non-appealable judgment
`in this litigation, in the preparation or prosecution of any patent
`application that covers sodium oxybate (including compositions,
`methods, distribution methods, uses, or processes).
`Such
`involvement in the preparation or prosecution of any patent
`application includes, but is not limited to: (1) obtaining disclosure
`materials for new inventions and inventions under development; (2)
`investigating prior art relating to those inventions; (3) making or
`consulting or advising in any way on strategic decisions on the type
`and scope of patent prosecution that might be available or worth
`pursuing for such inventions; (4) writing, reviewing, editing or
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`that the Court should apply a different analysis (i.e., something other than what the parties ha e
`already extensively briefed and discussed at oral argument) with regard to Quinn Emmane s
`potential participation in the IPR process.
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`2
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`Case 2:13-cv-00391-ES-JAD Document 126 Filed 04/22/15 Page 3 of 8 PageID: 1759
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`approving new applications or continuations-in-part of applications
`to cover those inventions; or (5) strategically amending or
`surrendering claim scope during prosecution. For the avoidance of
`any doubt, any attorney identified in Paragraphs 6(a)(i)-(ii) who
`accesses Highly Confidential Information shall not be involved,
`formally or informally, for the length of this litigation plus one year
`after a final, non-appealable judgment in this litigation, in patent
`preparation and prosecution activities as set forth above.
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`(Id. at 10-11).
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`After the parties jointly submitted their proposed DCO (which included all of the langu e
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`quoted above) for this Court's review, Defendants filed CBM review and, later, IPR petitions w
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`the PTAB challenging the validity of several of Jazz's patents: U.S. Patent Nos. 7,895,0
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`,
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`8,457,988, 8,589,182, 7,668,730, 7,765,106 and 7,765,107 (the Court shall collectively refer to e
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`CBM and IPR proceedings as the "Post-Grant Proceedings"). (See Plaintiff's Nov. 26, 20 4
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`Letter, ECF No 95, at 2, n.2; Plaintiffs Jan. 22, 2015 Letter, ECF No. 110, at 1). Jazz now reque s
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`clarification as to whether the language of the DCO prohibits its litigation counsel, the Qui
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`Emmanuel firm (which has received Highly Confidential information under the DCO in t s
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`matter) from participating in those Post-Grant Proceedings.
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`b.
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`The Parties' Arguments
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`Jazz seeks guidance regarding the effect of the DCO, and argues that the Order does
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`bar Quinn Emmanuel from participating in the Post-Grant Proceedings at issue. Jazz's prim
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`argument is that the plain language of the DCO only prohibits persons who have receiv
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`confidential information from participating in the "preparation or prosecution" of a pat
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`application and does not, therefore, have any bearing on a CBM review or any other post-gr
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`proceeding. Jazz further argues that, even if the DCO could be read to implicate involvement i
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`CBM review, Quinn Emmanuel has "agreed in writing that it would not be involved in amendi
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`3
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`Case 2:13-cv-00391-ES-JAD Document 126 Filed 04/22/15 Page 4 of 8 PageID: 1760
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`claims in any way2 ifthe PTAB institutes CBM review." (Id. at 4). Jazz represents that "[i]n e
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`event amendments are made, [it] has retained separate counsel to handle such amendments",
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`that this "separate counsel has not received any confidential information under the DCO. (Id
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`3, n.3). Finally, Jazz contends that it would be prejudiced if Quinn Emmanuel was prohibited fr
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`participating in the Post-Grant Proceedings, as that firm has represented Jazz in litigat n
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`concerning the patents at issue (including issues regarding their validity) for several years, and
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`having a second, separate legal team replicate that institutional knowledge would be an egregi
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`s
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`waste of time and money. (M,_ at 5-6).
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`In response, Defendants contend that post-grant CBM proceedings constitute a form
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`patent "prosecution" sufficient to invoke the restrictions of the DCO, "because patent owners e
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`allowed to amend claims or surrender claim scope in a proceeding before the PT0."3 (Defs. D c.
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`5, 2014 Letter, ECF No. 98, at 3). Defendants also argue that Quinn Emmanuel's sugges
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`compromise (i.e., that the firm agree to abstain from any involvement in Jazz strategic
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`amending its claims during the CMB review process) would be insufficient, as Quinn Emman el
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`would "still be able to 'strategically surrender claim scope' to overcome asserted prior art"
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`otherwise engage in "competitive decision making." (Id at 4). Defendants essentially argue t
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`Quinn Emmanuel may subconsciously utilize the confidential information that the firm obtai
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`from Defendants under the DCO during the CBM proceedings, and therefore no limitation on e
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`firm's involvement could adequately safeguard Defendants' interests. (Id. at 4-6). Indeed, at o
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`2 Jazz claims that Quinn Emmanuel made this offer in response to "Defendants' stated objecf n
`to Quinn Emmanuel's participation in CBM proceedings ... that [the firm's] involvement
`amending or surrendering claim scope" would violate the DCO. (Id. at 4).
`3 While Defendants do not separately address Quinn Emmanuel's ability to participate in I
`proceedings, the Court will infer that Defendants intended their arguments concerning C
`review to apply with regard to the IPR process as well.
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`4
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`Case 2:13-cv-00391-ES-JAD Document 126 Filed 04/22/15 Page 5 of 8 PageID: 1761
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`argument, defense counsel suggested that the only way to truly protect Defendants' interests in
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`connection with Quinn Emmanuel's participation in the CBM review would be for Jazz itself
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`opposed to Quinn Emmanuel) to waive any right to amend or surrender claim scope before
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`PTAB. (Tr. of Jan. 8, 2015 Conf., ECF No. 106, at 76:1:1-77:10). Defendants also argue that e
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`potential prejudice that they may suffer if Quinn Emmanuel is allowed to participate in the C
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`proceedings (i.e., that "Jazz will be able to use information produced in litigation to gain an up
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`hand in a separate negotiation between Defendants and Jazz") outweighs any "minimal" harm t
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`Jazz might face if forced to find replacement counsel. (Id. at 6-7).
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`c.
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`Analysis
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`In Third Circuit, courts have wide latitude to interpret their own orders.
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`Inc. v. Plaza Entm't, Inc., 402 F.3d 424, 428 (3d Cir. 2005) ("[W]e recognize that great defere e
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`is given to a district court's interpretation of its own order"). Here, the parties have asked t
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`Court to determine whether Paragraph 6 of the DCO operates to preclude Quinn Emmanuel fr
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`participating in certain Post-Grant Proceedings, given that the firm has received Defendan '
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`Highly Confidential information during the course of this litigation. The Court finds that neit
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`r
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`the plain language of Paragraph 6, nor the clear intent underlying that provision, could supp
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`such a result.
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`The prosecution bar set forth in the DCO in this matter is expressly limited in scope,
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`operates to bar recipients of confidential information from participating in the "preparation r
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`prosecution of any patent application that covers sodium oxybate." (ECF No. 73 at 10) ( empha s
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`added). It is beyond dispute that, for each of the patents implicated in the Post-Grant Proceedin s
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`at issue, Jazz filed a patent application and the United States Patent & Trademark Office ultimat
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`issued a patent. The CBM and IPR processes take place, if at all, after the Patent & Tradem
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`5
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`Case 2:13-cv-00391-ES-JAD Document 126 Filed 04/22/15 Page 6 of 8 PageID: 1762
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`Office has granted a patent. Furthermore, those processes focus on the patent itself and not e
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`underlying application. Defendants' interpretation of the DCO would expand Paragraph 6 to co
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`essentially any challenges that might arise during the life of a patent, and would effectively r
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`the limiting term "application" out of the Court's Order. Indeed, if the parties wished to creat a
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`prosecution bar that went beyond the application process, they certainly could have crafte a
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`broader proposed form of order. See, e.g., Paice, LLC v. Hyundai Motor Co., No. 12-499 (WD ),
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`2014 U.S. Dist. LEXIS 102895, *14-15 (D. Md. Jul. 29, 2014) (The court considered a stipula
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`prosecution bar stating that any individual who receives confidential information "shall
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`participate in or be responsible for the acquisition, preparation or prosecution of any patent, pat
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`application, reexamination petition, or reissue application, or for drafting or revising pat
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`claims."). Instead, they limited their proposed prosecution bar to patent applications. Defend
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`interpretation therefore goes well beyond what Defendants bargained for in negotiating
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`proposed discovery confidentiality order, (Meyer v. CUNA Mut. Ins. Soc'y, 648 F .3d 154, 167
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`Cir. 2011) ("This Court takes care not to render other portions of a provision or contr
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`superfluous when construing contract language.") (internal citations omitted), and beyond w
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`the Court Ordered in entering the DCO. The plain language of the DCO at issue here sim
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`t
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`t
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`cannot support such a broad reading.4
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`4 The Court notes that, while Defendants have not submitted any controlling precedent in supp
`of their expansive interpretation, only one of the cases they cite is arguably analogous to
`situation at hand. In Visto Corporation v. Seven Networks, Inc., No. 03-333 (TJW), 2006 U
`Dist. LEXIS 91453 (ED. Tex. Dec. 19, 2006), the United States District Court for the East
`District of Texas interpreted an existing protective order that prohibited any attorney who receiv
`confidential information from "assist[ing] in the drafting, filing, or prosecution of any new r
`currently pending patent applications that bear a reasonable relationship to patents which are t e
`subject matter of this litigation." Id. at* 16. The Visto court determined that, notwithstanding s
`language limiting the bar to "patent applications", the prosecution bar at issue applied with eq 1
`force to "reexamination proceedings." Id. at *22 ("In the court's view, under the language oft e
`Protective Order, participation in the reexamination is the prosecution of a patent application
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`6
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`Though it has reached its decision on other grounds, the Court also notes that Jaz
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`proposed interpretation much more closely reflects the parties' intentions regarding their propo
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`prosecution bar, as is evident from the language the parties choose to include in Paragraph 6 of e
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`DCO. Specifically, the parties enumerated five examples of the sort of activity that wo
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`constitute impermissible "preparation or prosecution of any patent application that covers sodi
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`oxybate." (ECF No. 73 at 10). Of those five examples, the first four explicitly reference steps, n
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`roughly chronological order, taken with respect to preparing a patent application for "n
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`inventions" (i.e., obtaining disclosure materials for new inventions, investigating prior art relati
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`to new inventions, taking part in strategic decisions regarding the type or scope of pat
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`prosecution for such new inventions, and writing/reviewing/editing/approving patent applicati
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`s
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`for those new inventions).
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`ffih). While the fifth example of "preparation or prosecuti "
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`("strategically amending or surrendering claim scope during prosecution") does not expressly re
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`to new inventions, the Court will not read that provision in a vacuum, as would be necessary o
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`find that the parties meant to include a standalone restriction regarding existing patents. That fi
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`example is simply the next step in the patent application process described in the parties' previ
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`s
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`four examples. In short, the parties proposed an order that would prohibit recipients of confident
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`information from having any involvement with preparing patents for their new inventio
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`Nothing in Paragraph 6 suggests that the prosecution bar was intended to apply to Jazz's deti
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`of its existing patents. Defendants' interpretation of that prosecution bar is simply incompati e
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`with the clear language of the DCO .
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`. "). This Court respectfully disagrees with that analysis. As discussed above, this Court refu s
`to interpret the DCO in a manner that would apply the prosecution bar to post-grant proceedin s
`and thereby effectively render the word "application" meaningless.
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`7
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`The Court finds that the DCO does not prohibit the Quinn Emmanuel firm fr
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`participating in CBM or IPR proceedings before the PTAB. The Court also, however, calls
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`parties' attention to Paragraph 8 of the DCO, which states, in pertinent part, that "[a]ll Confiden
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`Information and Highly Confidential Information disclosed pursuant to this Order shall be used y
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`a recipient thereof solely for the purposes of this litigation." (ECF No. 73 at 11 ). Any person
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`has received information designated as "Confidential" or "Highly Confidential" pursuant to
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`e
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`DCO must therefore be circumspect in not using that information, in any form, during the P
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`Grant Proceedings. 5
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`CONCLUSION
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`For the reasons set forth above, this Court finds that the DCO does not prohibit the Qui
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`Emmanuel firm from participating in the CBM or IPR proceedings before the PT AB.
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`SO ORDERED
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`m~C>N;if.Slu.
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`cc:
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`Hon. Esther Salas, U.S.D.J.
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`5 It remains unclear how Jazz, through Quinn Emmanuel or otherwise, might utilize Defendan '
`confidential information during the Post-Grant Proceedings. In their opposition brief, Defend
`contended that "the risk to Defendants is that Jazz will be able to use information produced
`litigation to gain an upper hand in a separate negotiation between Defendants and Jazz." (E
`No. 98, at 6). The "separate negotiation" at issue is an ongoing discussion with the FDA regardi
`a "single shared REMS for sodium oxybate between Jazz and Defendants." (Id.). Defend
`argue that Quinn Emmanuel might use confidential information obtained under the DCO in
`litigation to make arguments during the CBM proceeding regarding the scope of certain of Jaz s
`patents, and that those arguments could, in turn, "have a material effect on the separ
`negotiation." (Id.). Defendants do not provide any indication, however, as to how that vague ri
`might manifest itself. Similarly, while Defendants have argued, in the abstract, that Qui
`Emmanuel might use information gleaned from Defendants' ANDAs and other confidenti
`information to strategically modify Jazz's claims during the CBM review process, (Tr. of Jan.
`2015 Conf., ECF No. 106, at 67:23-68:5), Defendants did not explain how such information mi
`actually be relevant to Jazz's purely defensive role in the Post-Grant Proceedings at issue.
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`,
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`8
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