Paper 38
`Date: September 18, 2015
`
`Trials@uspto.gov
`571-272-7822
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AMNEAL PHARMACEUTICALS LLC AND PAR PHARMACEUTICAL, INC.,
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Cases: IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)1
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`
`MURPHY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are the same in the identified cases.
`We exercise our discretion to issue one Order to be filed in each case.
`The parties are not authorized to use this style heading.
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Par Pharmaceutical, Inc. (“Par Inc.”) filed Petitions requesting
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`inter partes review in each of the above-identified proceedings, and Petitioner
`
`Amneal Pharmaceuticals LLC (“Amneal”) filed Petitions requesting inter partes
`
`review in four of the above-identified proceedings, IPR2015-00545, IPR2015-
`
`00546, IPR2015-00547, and IPR2015-00554. Paper 3 (“Pet.”).2 The Petitions in
`
`IPR2015-00548 (Paper 1, 58) and IPR2015-00551 (Paper 1, 58) identify Par Inc. as
`
`the sole real-party-in-interest, and the Petitions in IPR2015-00545, IPR2015-
`
`00546, IPR2015-00547, and IPR2015-00554 identify Amneal and Par Inc. as the
`
`real-parties-in-interest. Pet. 59.
`
`
`
`Patent Owner Jazz Pharmaceuticals, Inc. (“Patent Owner”) filed a
`
`Preliminary Response (“Prelim. Resp.”) in each proceeding, asserting that parent
`
`companies of Par Inc. – Par Pharmaceutical Companies, Inc. (“Par Co.”), Par
`
`Pharmaceutical Holdings, Inc. (“Par Holdings”),3 Sky Growth Intermediate
`
`Holdings I Corporation (“Sky I”), and Sky Growth Intermediate Holdings II
`
`Corporation (“Sky II”) – should have been identified as real-parties-in-interest in
`
`each of the above-identified proceedings. Prelim. Resp. 9–23. We ordered
`
`supplemental briefing and additional discovery on the issue. Paper 11. After
`
`considering the supplemental briefing and additional discovery provided by the
`
`3
`
`2
`
`
` Citations are to IPR2015-00545 as representative unless otherwise indicated.
` Par Holdings was formed in 2012 as Sky Growth Holdings Corporation, but
`changed its name to Par Holdings on March 4, 2015. Prelim. Resp. 9 n.3 (citing
`Ex. 2015, 13).
`
`
`
`2
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`parties, we issued our Decision to Institute on July 29, 2015. Paper 25. In that
`
`Decision, we determined, inter alia, that evidence of record before us at the time
`
`established that Petitioner had complied sufficiently with with the statutory
`
`requirement to identify all real parties-in-interest. Id. at 18.
`
` On August 25, 2015, pursuant to authorization from the Board, Patent
`
`Owner filed a motion for additional discovery from Petitioner Par Inc. regarding
`
`the real party-in-interest issue. Paper 34 (“Mot.”). On August 28, 2015, Par Inc.
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`filed its opposition to the motion. Paper 37 (“Opp.”).4 We address the parties
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`arguments below.
`
`Patent Owner has requested (i) billing records submitted by Petitioner’s
`
`outside counsel and expert witness to any of the Par entities relating to these inter
`
`partes review proceedings, and (ii) employment agreements between David
`
`Silverstein and any Par entity, and Lawrence Brown and any Par entity. Mot. 1
`
`(citing Ex. 2039, 3). Messrs. Silverstein and Brown are the two in-house attorneys
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`identified by Petitioner as having primary responsibility for the decision to file and
`
`the content of the inter partes review petitions. Ex. 1039 ¶ 7 (“Gilman
`
`Declaration”). Patent Owner addresses five factors to be considered for a grant of
`
`additional discovery. Mot. 2–5 (citing Garmin Int’l, Inc. v. Cuozzo Speed Techs.
`
`LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (the
`
`“Garmin factors”).
`
`
`4 We cite to the parties’ redacted motion papers. The parties have filed motions to
`seal a very limited amount of confidential information addressed below in Section
`III.
`
`
`
`3
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`
`II. ANALYSIS REGARDING ADDITIONAL DISCOVERY
`
`Regarding the first Garmin factor (“more than a mere allegation or
`
`possibility that something useful will be discovered”), Patent Owner argues that
`
`the billing records will be useful for determining who is actually funding these
`
`inter partes review proceedings, and the employment records will be useful for
`
`determining which Par entity actually employs the individuals responsible for the
`
`content and filing of the petitions. Id. at 2–3. Patent Owner argues that the Gilman
`
`Declaration did not address or identify billing records to support the statement that
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`Par Inc. was the only Par entity that “paid” any filing or legal fees in connection
`
`with the preparation of these IPR petitions (Ex. 1039 ¶ 7), and that Mr. Gilman was
`
`not forthcoming at his deposition. Id. Patent Owner further argues that Mr.
`
`Gilman’s Declaration did not address or refer to employment agreements, and that
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`Mr. Gilman did not speak to Messrs. Silverstein or Brown regarding their
`
`employment records prior to the deposition. Id. at 3–4.
`
`Petitioner Par Inc. asserts that Patent Owner had the ability to generate
`
`equivalent information, arguing that Patent Owner had the chance to depose Mr.
`
`Gilman prior to institution, but did not make effective use of the opportunity. Opp.
`
`2–3. Although there may be some merit to this position, we are persuaded that
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`Petitioner also attempts to use the attorney-client privilege and alleged undue
`
`burden as a shield to avoid providing the limited documents requested. Id. at 4.
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`Petitioner has control over the requested information and Patent Owner does not
`
`have the ability to generate equivalent information, even though Patent Owner did
`
`not attempt to elicit some of this information during Mr. Gilman’s deposition. The
`
`
`
`4
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`deposition transcript provides less than a clear record. For example, during his
`
`deposition, Mr. Gilman refused to answer questions regarding employment of
`
`members of the legal department and whether members of the legal department
`
`work for any of the Par entities, as beyond the scope of his declaration. Ex. 2033,
`
`17:7-10, 21:3-22:10, 26:24-27:14, 28:8-30:4, 53:4–56:7.
`
`Patent Owner has made a very limited request for additional documents that
`
`will help the Board understand which Par entity (or entities) receives and pays the
`
`bills for these inter partes review proceedings, and which Par entity (or entities)
`
`employs the responsible in-house attorneys. Non-privileged factual information
`
`contained in the billing records and the employment agreements may, therefore,
`
`bear on our consideration of whether Petitioner has identified all real parties-in-
`
`interest. See, e.g., Corning Optical Commn’cs v. PPC Broadband, Case IPR2014-
`
`00440, slip op. at 17, 20–21 (PTAB Aug. 18, 2015) (Paper 68).
`
`Petitioner further argues that evidence relied upon by Patent Owner to
`
`support Patent Owner’s assertions regarding real parties-in-interest is inadmissible
`
`under Federal Rule of Evidence 408. Opp. 4–5. Federal Rule of Evidence 408
`
`precludes the use of offers of compromise “to prove or disprove the validity or
`
`amount of a disputed claim.” Fed. R. Evid. 408. The disputed “claim” at issue in
`
`this proceeding is the alleged unpatentability of the ’182 patent claims, not
`
`Petitioner Par Inc.’s alleged noncompliance with the requirement to identify all
`
`real parties-in-interest. The specific fact at issue on Patent Owner’s motion to
`
`compel additional discovery – Dr. Brown’s signature block on an email regarding
`
`confidential business communications – is not being used by Patent Owner to
`
`
`
`5
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`contest Petitioner’s allegations of unpatentability. Federal Rule of Evidence 408,
`
`therefore, does not preclude reliance on the email to assess Petitioner’s compliance
`
`with its obligation to identify all real parties-in-interest pursuant to 35 U.S.C.
`
`§ 312(a)(2).
`
`The remaining Garmin factors favor Patent Owner. We are persuaded that
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`Patent Owner does not seek Petitioners’ litigation positions and does not have the
`
`ability to generate equivalent discovery by other means. Mot. 4–5. The requests
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`are focused, easily understandable, and not overly burdensome to Petitioners. Id.
`
`Therefore, we determine Patent Owner has made a sufficient showing for us
`
`to grant the motion to produce non-privileged information contained in the
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`requested documents, subject to certain conditions. First, the attorney billing
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`records are limited to those records submitted to any of the Par entities that relate
`
`to the time period prior to and including the filing date of the Petitions. Second,
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`any billing amounts and specific descriptions of legal services may be redacted.
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`Third, only those portions of the employment agreements necessary to identify
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`which Par entity (or entities) employs Messrs. Silverstein and Brown and those
`
`portions describing the scope of employment need be provided, in addition to other
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`relevant identifying information and signature blocks.
`
`
`
`6
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
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`III. MOTIONS TO SEAL AND FOR ENTRY OF PROTECTIVE ORDER
`
`Patent Owner and Petitioner both have submitted motions to seal
`
`confidential information in the record.
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`Patent Owner moves (i) to seal confidential (un-redacted) versions of
`
`Exhibit 2033, Patent Owner’s Reply to Petitioners’ Failure to Name All Real
`
`Parties In Interest (Paper 17), and Patent Owner’s Motion for Additional Discovery
`
`(Paper 33), (ii) to seal Exhibit 2037 in its entirety, and (iii) for entry of the Board’s
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`default Protective Order. Paper 16 (“PO Mot. to Seal I”); Paper 32 (“PO Mot. to
`
`Seal II). Petitioner Par Inc. moves to seal the confidential version of Petitioner’s
`
`Opposition to Patent Owner’s Motion for Additional Discovery (Paper 36), which
`
`discusses Exhibit 2037. Paper 35 (“Pet. Mot. to Seal”).
`
`The standard for granting a motion to seal is “good cause.” 37 C.F.R.
`
`§ 42.54. There is a strong public policy that favors making information filed in
`
`inter partes review proceedings open to the public. See Garmin International v.
`
`Cuozzo Speed Technologies, LLC, Case IPR2012-00001, slip op. at 1–2 (PTAB
`
`March 14, 2013) (Paper 34) (discussing the standards of the Board applied to
`
`motions to seal). The moving party bears the burden of showing that the relief
`
`requested should be granted. 37 C.F.R. § 42.20(c). That includes showing that the
`
`information is truly confidential, and that such confidentiality outweighs the strong
`
`public interest in having an open record. See Garmin at 3.
`
`Patent Owner states that page 7, lines 15-16, of Exhibit 2033 contain Par
`
`Inc.’s declarant, Barry Gilman’s, home address. PO Mot. to Seal I, 1. Patent
`
`Owner further states that the address was redacted pursuant to Mr. Gilman’s
`
`
`
`7
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`request during his June 4, 2015 deposition. Id.; Ex. 2033, 70:13–18. Patent Owner
`
`and Petitioner Par Inc. both represent that Exhibit 2037, and the portion of Papers
`
`17, 33, and 36 discussing that exhibit, contain the parties’ business confidential
`
`information. PO Mot. to Seal I, 1; PO Mot. To Seal II, 1; Pet. Mot to Seal, 1.
`
`Exhibit 2037 relates generally to confidential business discussions between Patent
`
`Owner and Petitioner Par Inc. that are marked pursuant to Federal Rule of
`
`Evidence 408.
`
`Having considered the documents at issue, we are persuaded that Patent
`
`Owner and Petitioner have demonstrated “good cause” for keeping the confidential
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`business information of the parties under seal. The parties also have filed redacted
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`public versions of Mr. Gilman’s deposition transcript (Exhibit 2033), Patent
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`Owner’s Reply to Petitioners’ Failure to Name All Real Parties In Interest (Paper
`
`18), and Patent Owner’s Motion for Additional Discovery (Paper 34). The parties
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`also have shown good cause for entry of the Board’s default Protective Order,
`
`attached as Exhibit B to our Trial Practice Guide.
`
` We remind the parties of the public’s interest in maintaining a complete and
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`understandable file history, and thus, that there is an expectation that confidential
`
`information relied upon in a subsequent decision will be made public. See Office
`
`Trial Practice Guide, 77 Fed. Reg. at 48760–61. In addition, confidential
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`information subject to a protective order ordinarily becomes public 45 days after
`
`denial of a petition to institute or 45 days after final judgment in a trial. A party
`
`seeking to maintain the confidentiality of the information may file a motion to
`
`
`
`8
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`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`expunge the information from the record prior to the information becoming public.
`
`See 37 C.F.R. § 42.56.
`
`Accordingly, it is:
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`IV. ORDER
`
`ORDERED that Patent Owner’s motion for additional discovery is granted,
`
`subject to the conditions stated on page 6;
`
`FURTHER ORDERED that that the following papers and exhibits shall be
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`sealed as “Board and Parties Only”: Papers 17, 33, 36, Exhibit 2033 (Confidential
`
`version), and Exhibit 2037; and
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`FURTHER ORDERED that the Board’s Default Standing Protective Order
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`shall be entered in this proceeding.
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`
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`
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`9
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`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`FOR PETITIONER:
`
`Matthew C. Ruedy
`Steven A. Maddox
`Maddox Edwards PLLC
`mruedy@meiplaw.com
`smaddox@meiplaw.com
`
`FOR PATENT OWNER:
`
`F. Dominic Cerrito
`Evangeline Shih
`Frank Calvosa
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`nickcerrito@quinnemanuel.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`
`John V. Biernacki
`JONES DAY
`jvbiernacki@jonesday.com
`
`
`
`
`
`10