UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APOTEX CORP.,
`Petitioner
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`v.
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`ALCON RESEARCH, LTD.,
`Patent Owner.
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`
`Case IPR2013-00428
`U.S. Patent No. 8,268,299 B2
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`ALCON RESEARCH, LTD.’S MOTION TO SEAL AND MOTION FOR
`ENTRY OF PROPOSED PROTECTIVE ORDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APOTEX CORP.,
`Petitioner
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`v.
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`ALCON RESEARCH, LTD.,
`Patent Owner.
`
`
`Case IPR2013-00428
`U.S. Patent No. 8,268,299 B2
`
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`
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`ALCON RESEARCH, LTD.’S MOTION TO SEAL AND MOTION FOR
`ENTRY OF PROPOSED PROTECTIVE ORDER
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner Alcon Research,
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`Ltd. (“Alcon”) hereby respectfully moves to seal confidential laboratory notebooks
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`and adjunctive data (Exhibits AL 2059—2073), portions of the Declaration of Dr.
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`Henry Grabowski, Ph.D. (Exhibit AL 2007), and certain exhibits on which Dr.
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`Grabowski relied in forming his opinions (Exhibits AL 2032–2042). In support of
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`this Motion, Alcon is also submitting a proposed protective order (Exhibit AL
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`2056). See 37 C.F.R. § 42.54(a). Petitioner Apotex Corp. (“Apotex”) does not
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`oppose the motion and agrees to the proposed protective order.
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`A. Motion to Seal
`The standard for granting a motion to seal is “for good cause.” 37 C.F.R.
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`§ 42.54; Decision – Revised Motion to Seal, Garmin Int’l, Inc. v. Cuozzo Speed
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`Techs. LLC, Case IPR2012-00001 (JL), at 4 (Apr. 5, 2013) (hereinafter Garmin
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`Decision). Good cause exists for sealing these exhibits.
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`Laboratory notebooks and adjunctive data
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`1.
`Exhibits AL 2059–2073 are excerpts of confidential laboratory notebooks
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`and adjunctive data used by Alcon employees to record their research and
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`development work. These documents are being submitted in support of affidavits
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`filed pursuant to 37 C.F.R. § 42.61 describing how certain data in the
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`specifications of Alcon patents were generated. Although the data on which Alcon
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`relies in this proceeding are disclosed in public patent specifications, the
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`2
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`documents Alcon proposes to seal also disclose internal Alcon laboratory methods
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`and practices and additional, unpublished testing data. Public disclosure of these
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`confidential, internal documents reflecting Alcon’s research and development work
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`has the potential to cause Alcon competitive harm.
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`Because the data on which Alcon relies in this proceeding are already in the
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`public record, the public’s interest in having access to these documents in order to
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`“maintain a complete and understandable file history” is minimal. Garmin
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`Decision at 8 (balancing need for confidentiality against public’s interest).
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`Moreover, pursuant to 37 C.F.R. § 42.61, these documents are being submitted in
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`conjunction with the declarations of Bhagwati Kabra, Ph.D., and Stephen Shannon,
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`MBA, Ph.D. Dr. Kabra’s and Dr. Shannon’s declarations explain the testing data
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`in the patent specification, explain in general the significance of the laboratory
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`notebooks and adjunctive data, and are not being filed under seal. Accordingly, a
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`“complete and understandable file history” will be available to the public even if
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`these exhibits are sealed.
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`Summaries of IMS Health and Encuity Research Data
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`2.
`Exhibits AL 2032–2042 summarize data provided to Alcon by IMS Health
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`and Encuity Research. These exhibits contain data on sales, units, prescriptions,
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`and promotional spending for a number of pharmaceutical products. These data
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`were provided by IMS Health and Encuity Research to counsel for Alcon pursuant
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`3
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`to agreements to keep the data confidential. It is undersigned counsel’s
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`understanding that IMS Health and Encuity Research charge customers for these
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`data, that they do not make their data generally available to the public, and that
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`they would be harmed by the public disclosure of these data without a
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`confidentiality agreement.
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`The public’s interest in having access to these exhibits is minimal. See
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`Garmin Decision at 8. These exhibits are being provided in support of the
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`declaration of Dr. Henry Grabowski, Ph.D. In conjunction with this motion, Alcon
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`is submitting a non-confidential, redacted version of Dr. Grabowski’s declaration.
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`The substance of Dr. Grabowski’s opinions can be fully ascertained from the
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`redacted declaration; the only information not reflected in the redacted declaration
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`is data from IMS Health and Encuity Research and Dr. Grabowski’s specific
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`calculations based on that data. Moreover, interested members of the public can
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`obtain the data in question directly from IMS Health and Encuity Research
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`(presumably for a fee).
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`Dr. Grabowski’s Declaration
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`3.
`Exhibit AL 2007 is the declaration of Dr. Henry Grabowski, Ph.D. This
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`exhibit discloses data (and calculations derived therefrom) obtained from IMS
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`Health and Encuity Research. As explained above, good cause exists to seal these
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`data, see supra Part A.2, and for the same reasons, good cause exists to seal the
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`4
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`portions of Dr. Grabowski’s declaration which disclose these data or calculations
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`derived therefrom.
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`Proposed Protective Order
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`B.
`Pursuant to 37 C.F.R. § 42.54, Alcon is submitting a proposed protective
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`order, attached hereto as Exhibit AL 2056. Alcon requests that the proposed
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`protective order be entered and that its terms govern the confidentiality of the
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`exhibits which are the subject of this motion.
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`The proposed protective order is based on the PTAB’s default order, but the
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`parties have agreed to modify it in three ways intended to minimize the
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`administrative burdens of complying with the order. First, party representatives
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`need not sign an acknowledgment to have access to confidential materials.
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`Second, party representatives include not only counsel of record, but also other
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`attorneys working at the firms of Williams & Connolly LLP and Sterne, Kessler,
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`Goldstein & Fox PLLC. Third, persons who receive confidential information need
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`not maintain a record of the locations of copies of that information.
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`C. Certification of Conference with Opposing Party Pursuant to 37
`C.F.R. § 42.54
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`Alcon certifies that it has conferred with Apotex regarding this motion and
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`the scope of the proposed protective order, and that Apotex does not oppose this
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`motion and agrees to the terms of the proposed protective order.
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`5
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`Case IPR2013-00428
`U.S. Patent No. 8,268,299
`D. Conclusion
`For the foregoing reasons, Alcon respectfully requests that its motion to seal
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`Attorney Docket No.
`PAT903205-US-NP
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`be granted and that the PTAB enter the proposed protective order.
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`Dated: March 27, 2014
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher
`Reg. No. 55,820
`Phone: 202-434-5289
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`
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`Correspondence Address:
`Williams & Connolly LLP
`725 Twelfth Street NW
`Washington, D.C. 20005
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`6
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`Attorney Docket No.
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`Case IPR2013-00428
`PAT903205-US-NP
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`U.S. Patent No. 8,268,299
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing “ALCON RESEARCH,
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`LTD.’S MOTION TO SEAL AND MOTION FOR ENTRY OF PROPOSED
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`PROTECTIVE ORDER” was served on March 27, 2014, by filing this document
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`through the Patent Review Processing System as well as delivering a copy via
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`electronic mail to the following attorneys of record for the Petitioner:
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`Eldora L. Ellison (Reg. No. 39,967)
`Ralph W. Powers III (Reg. No. 63,504)
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`(202) 371-2600 (telephone)
`(202) 371-2540 (facsimile)
`eellison-PTAB@skgf.com
`tpowers-PTAB@skgf.com
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`Dated: March 27, 2014
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher
`Reg. No. 55,820
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`7
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