UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MYLAN PHARMACEUTICALS INC. and AMNEAL
`PHARMACEUTICALS LLC,
`Petitioner
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`v.
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`YEDA RESEARCH & DEVELOPMENT CO. LTD.,
`Patent Owner
`____________
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`Case No. IPR2015-00644
`Patent 8,399,413
`____________
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`PATENT OWNER’S MOTION TO EXPUNGE CONFIDENTIAL EXHIBITS
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MYLAN PHARMACEUTICALS INC. and AMNEAL
`PHARMACEUTICALS LLC,
`Petitioner
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`v.
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`YEDA RESEARCH & DEVELOPMENT CO. LTD.,
`Patent Owner
`____________
`
`
`Case No. IPR2015-00644
`Patent 8,399,413
`____________
`
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`PATENT OWNER’S MOTION TO EXPUNGE CONFIDENTIAL EXHIBITS
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`I. INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.56, Patent Owner Yeda Research &
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`Development Co., Ltd., (“Patent Owner” or “Yeda”) respectfully submits this
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`Motion to Expunge Exhibits 2108-2114, 2120-2122, and the Grabowski
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`Declaration (Exhibit 2133) (“the Confidential Exhibits”) from the record. These
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`exhibits contain confidential information of a third party, IMS Health Inc. (“IMS
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`Health”).
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`According to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756
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`(Aug. 14, 2012) (“Trial Practice Guide”), confidential information that is subject to
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`a protective order ordinarily would become public 45 days after final judgment in a
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`trial. Trial Practice Guide at 48760-61. A party seeking to maintain the
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`confidentiality of information may file a motion to expunge the information from
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`the record prior to the information becoming public. Id.; 37 C.F.R. § 42.56. In
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`this case, 45 days after final judgment falls on Saturday, October 8, 2016, and so
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`the confidential information would ordinarily become public on Monday, October
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`10, 2016. Since Monday, October 10, 2016, is Columbus Day, a Federal Holiday,
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`the confidential information in this case is scheduled to become public on Tuesday,
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`October 11, 2016. Because the Confidential Exhibits contain confidential
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`information, Patent Owner respectfully requests that the Board rule on this motion
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`prior to the Confidential Exhibits becoming a part of the public record in this case.
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`1
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`Alternatively, Patent Owner requests that the Board issue an interim order delaying
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`the public release of the Confidential Exhibits until such time that the Board can
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`rule on Patent Owner’s Motion to Expunge.
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`II. PROCEDURAL BACKGROUND
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`On November 20, 2015, Patent Owner and Petitioner in this proceeding
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`jointly requested that the Board enter the Board’s Default Protective Order. (Paper
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`25.) On that same day, Patent Owner moved to seal portions of Exhibits 2108-
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`2114, 2120-2122, and 2133, which all contain trade secrets and confidential
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`business information of a non-party, IMS Health. (Paper 26, “Motion to Seal.”)
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`On February 12, 2016, the Board ordered that the Default Protective Order be
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`entered in this case (paper 52), and also granted Patent Owner’s motion to seal the
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`Confidential Exhibits (paper 53, “Decision”), finding that Patent Owner had shown
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`good cause for sealing the redacted portions of those declarations. Redacted
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`versions of the Confidential Exhibits are publically available on the docket.
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`III. APPLICABLE LEGAL STANDARDS
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`Pursuant to 35 U.S.C. § 316(a)(7), “confidential information” is protected
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`from disclosure. 35 U.S.C. § 316(a)(7) (“The Director shall prescribe
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`regulations…providing for protective orders governing the exchange and
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`submission of confidential information.”). Confidential information should be
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`2
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`defined in a manner consistent with Fed. R. Civ. P. 26(c)(1)(G). Trial Practice
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`Guide at 48760.
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`Granting a motion to seal confidential information requires a showing of
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`“good cause.” 37 C.F.R. § 42.54. The same standard applies to a motion to
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`expunge “confidential information” under 37 C.F.R. § 42.56 after final judgment in
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`a trial. RPX Corp. v. Virnetx Inc., IPR2014-00171, Paper 62 at 3 (PTAB Sept. 9,
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`2014). The movant generally has the burden of showing entitlement to the
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`requested relief. 37 C.F.R. § 42.20(c); RPX Corp at 3.
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`IV. GOOD CAUSE EXISTS TO EXPUNGE THE CONFIDENTIAL
`EXHIBITS FROM THE RECORD
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`The Board already agreed that there is good cause for the confidential
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`information to be sealed. As Patent Owner stated in its Motion to Seal and as the
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`Board agreed in its Decision granting that motion, the Confidential Exhibits
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`“include proprietary data provided by IMS Health, a third party, concerning sales,
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`prescriptions, and promotional spending concerning Copaxone® 40 mg/mL.”
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`Decision at 2, citing Motion to Seal at 2. Further, “IMS Health represents that IMS
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`data retains its value to IMS only when access to the data is restricted. IMS also
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`represents that it owes contractual duties of confidentiality to its sources.” Id.
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`Moreover, “interested members of the public can obtain the data in question
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`directly from IMS Health (with any appropriate fee).” Id.
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`3
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`According to the Practice Trial Guide, the rule regarding lifting the seal from
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`any exhibits that had been filed under seal in an IPR “balances the needs of the
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`parties to submit confidential information with the public interest in maintaining a
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`complete and understandable file history for public notice purposes.” Trial
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`Practice Guide at 48761. In this case, disclosure of the information in the
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`Confidential Exhibits would detrimentally impact a non-party to this proceeding,
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`which is contractually obligated to maintain the confidentiality of its data, and
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`which sells its data to interested members of the public for an appropriate fee. As
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`the Board noted in its Decision, any interested member of the public may access
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`the sealed information directly from IMS, for an appropriate fee. Thus, the public
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`interest in maintaining a complete and understandable file history may therefore be
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`met in this case without the filed documents becoming public and the attendant
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`negative impact to a non-party.
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`Further, the Board’s Final Written Decision incorporates only a single
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`number that is redacted from the entirety of the public versions of the Confidential
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`Documents. Final Written Decision, Paper 86 at 28. This number is therefore now
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`part of the public record. The remainder of the redacted material was not
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`incorporated into the Board’s Final Written Decision and its publication is
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`therefore not necessary to meet the public interest in maintaining a complete and
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`4
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`understandable record in this case. The Confidential Exhibits should therefore not
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`become public.
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`V. CONCLUSION
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`For the reasons stated above, Patent Owner respectfully requests that the
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`Board expunge Exhibits 2108-2114, 2120-2122 and 2133, which contain
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`confidential information of non-party IMS Health from the record in this
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`proceeding.
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`Dated: September 23, 2016
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`Respectfully submitted,
`/Elizabeth J. Holland/
`Elizabeth J. Holland
`Registration No. 47,657
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10019-1405
`Tel: 212-813-8800
`Fax: 212-355-3333
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`MOTION TO EXPUNGE was served electronically via e-mail on September 23,
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`2016 on the following:
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`Jeffrey W. Guise
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`jguise@wsgr.com
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`Brandon M. White
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`BMWhite@perkinscoie.com
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`Shannon Bloodworth
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`Sbloodworth@perkinscoie.com
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`David Anstaett
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`DAnstaett@perkinscoie.com
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`Richard Torczon
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`rtorczon@wsgr.com
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`Dated: September 23, 2016
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`/Elizabeth Holland/
`Counsel for Patent Owner
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