UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`COALITION FOR AFFORDABLE DRUGS V LLC;
`HAYMAN CREDES MASTER FUND, L.P.;
`HAYMAN ORANGE FUND SPC – PORTFOLIO A;
`HAYMAN CAPITAL MASTER FUND, L.P.;
`HAYMAN CAPITAL MANAGEMENT, L.P.;
`HAYMAN OFFSHORE MANAGEMENT, INC.;
`HAYMAN INVESTMENTS, LLC;
`NXN PARTNERS, LLC;
`IP NAVIGATION GROUP, LLC;
`J KYLE BASS; and ERICH SPANGENBERG,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`
`____________________________________________
`
`Case: IPR2015-01993
`U.S. Patent No. 8,399,514
`____________________________________________
`
`BIOGEN’S MOTION TO SEAL EXHIBITS 2016A AND 2017A
`
`
`
`
`
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`COALITION FOR AFFORDABLE DRUGS V LLC;
`HAYMAN CREDES MASTER FUND, L.P.;
`HAYMAN ORANGE FUND SPC – PORTFOLIO A;
`HAYMAN CAPITAL MASTER FUND, L.P.;
`HAYMAN CAPITAL MANAGEMENT, L.P.;
`HAYMAN OFFSHORE MANAGEMENT, INC.;
`HAYMAN INVESTMENTS, LLC;
`NXN PARTNERS, LLC;
`IP NAVIGATION GROUP, LLC;
`J KYLE BASS; and ERICH SPANGENBERG,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`
`____________________________________________
`
`Case: IPR2015-01993
`U.S. Patent No. 8,399,514
`____________________________________________
`
`BIOGEN’S MOTION TO SEAL EXHIBITS 2016A AND 2017A
`
`
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`
`
`I.
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`II.
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`Case No. IPR2015-01993
`Patent 8,399,514
`
`TABLE OF CONTENTS
`
`Introduction and Statement of Relief Requested ............................................. 1
`
`Standard for Granting a Motion to Seal .......................................................... 2
`
`III. Good Cause Exists to Seal Exhibit 2016A ...................................................... 3
`
`A.
`
`B.
`
`C.
`
`The Portions of the License Agreement Cited and Relied On by
`Biogen Are in the Public Record .......................................................... 3
`
`The Portions of the License Agreement Redacted in Exhibit
`2016 Contain Confidential Information Not Relied On by
`Biogen.................................................................................................... 4
`
`Certification Regarding the Public Availability of the
`Confidential Information Redacted from Exhibit 2016 ........................ 6
`
`IV. Good Cause Exists to Seal Exhibit 2017A ...................................................... 6
`
`A.
`
`B.
`
`C.
`
`The Portions of the Stock Purchase Agreement Cited and
`Relied on by Biogen Are in the Public Record ..................................... 6
`
`The Portions of the Stock Purchase Agreement Redacted in
`Exhibit 2017 Contain Confidential Information Not Relied On
`by Biogen .............................................................................................. 7
`
`Certification Regarding Public Availability of Confidential
`Information Redacted from Exhibit 2017 ............................................. 9
`
`V.
`
`Certification Regarding Scope of the Proposed Protective Order ................. 10
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`VI. Conclusion ..................................................................................................... 10
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`i
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`Case No. IPR2015-01993
`Patent 8,399,514
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Blackberry Corp. v. WI-LAN USA Inc.,
`IPR2013-00126, Paper 30 (PTAB Nov. 5, 2013) ............................................. 4, 7
`
`Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 34 (PTAB Mar. 14, 2013) ............................................... 2
`
`Regulations
`
`37 C.F.R. § 42.14 ....................................................................................................... 1
`
`37 C.F.R. § 42.54 ................................................................................................... 1, 2
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760
`(Aug. 14, 2012) ..................................................................................................... 2
`
`
`
`
`
`ii
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`
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`Case No. IPR2015-01993
`Patent 8,399,514
`
`I.
`
`Introduction and Statement of Relief Requested
`
`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner Biogen MA Inc.
`
`(“Biogen”) moves to seal Biogen Exhibits 2016A and 2017A, filed concurrently
`
`herewith, and for entry of the Board’s default protective order, also filed herewith
`
`as Exhibit 2093. Exhibit 2016A is an unredacted copy of the September 25, 2003
`
`license agreement entered into between Fumapharm AG and Biogen, Inc. for the
`
`purpose of developing a DMF-only product to treat multiple sclerosis and
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`psoriasis. (Ex. 2016A, “License Agreement.”) Exhibit 2017A is an unredacted
`
`copy of the May 26, 2006 stock purchase agreement through which Biogen Idec
`
`MA Inc. purchased 100% of the total share capital of Fumapharm AG. (Ex.
`
`2017A, “Stock Purchase Agreement.”) To maintain a complete and understandable
`
`public record of this proceeding, redacted versions of Exhibits 2016A and 2017A
`
`are also being filed concurrently herewith as Exhibits 2016 and 2017, respectively.
`
`Because the relevant portions of these documents cited in Biogen’s
`
`Opposition to the Petition are being made of public record, and the portions
`
`redacted in Exhibits 2016 and 2017 contain confidential information not cited or
`
`otherwise relied on by Biogen, the public’s interest in accessing the entirety of
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`Exhibits 2016A and 2017A is minimal, if any. Further, Biogen certifies that it has
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`conferred in good faith with Petitioner’s counsel and that the parties agree on the
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`scope of the proposed Protective Order (Ex. 2093), which is the Board’s default
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`1
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`Case No. IPR2015-01993
`Patent 8,399,514
`protective order. Indeed, Petitioner’s counsel has already signed the Standard
`
`Acknowledgment for Access to Protective Order Material. (Ex. 2084; Ex. 2094.)
`
`Finally, Biogen also certifies that the confidential information redacted from
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`Exhibits 2016 and 2017 has not previously been made publicly available. For
`
`these reasons, further developed below, good cause exists to seal Exhibits 2016A
`
`and 2017A and to enter the default protective order in this proceeding.
`
`II.
`
`Standard for Granting a Motion to Seal
`
`A motion to seal may be granted for good cause. 37 C.F.R. § 42.54. In
`
`determining whether good cause exists, the Board must “strike a balance between
`
`the public’s interest in maintaining a complete and understandable file history and
`
`the parties’ interest in protecting truly sensitive information.” Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 34, at 2 (PTAB Mar. 14, 2013)
`
`(quoting Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug.
`
`14, 2012)). Only confidential information may be sealed, and the Board may
`
`require the movant to certify that no information sought to be sealed is publicly
`
`available. Id. at 2, 5. A motion to seal must include a proposed protective order and
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`certify that the moving party has conferred in good faith with the opposing party
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`regarding the scope of the proposed protective order. Id. at 3 (citing 37 C.F.R.
`
`§ 42.54). As explained below, good cause exists here to seal Exhibits 2016A and
`
`2017A.
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`2
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`Case No. IPR2015-01993
`Patent 8,399,514
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`III. Good Cause Exists to Seal Exhibit 2016A
`A. The Portions of the License Agreement Cited and Relied On by
`Biogen Are in the Public Record
`The relevant portions of the License Agreement (Ex. 2016 (redacted), Ex.
`
`2016A (unredacted)) cited and relied on in Biogen’s Opposition to the Petition are
`
`being made of public record concurrently herewith. Biogen’s Opposition cites the
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`License Agreement to show that U.S. Patent No. 7,320,999 (“Joshi ’999”) and the
`
`invention of claims 1-16 and 20 of U.S. Patent No. 8,399,514 (“the ’514 patent”)
`
`were commonly owned when Dr. Gilmore O’Neill conceived of the invention by
`
`February 2004. (Opp’n at 19-21.) In particular, Biogen’s Opposition cites pages
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`11, 14, and 15 of the License Agreement, which define the terms “Collaboration
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`Patents,” “Collaboration Technology,” “Improvements,” “Inventions,” and
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`“Licensed Products.” (See id. at 21 (citing Ex. 2016 at 11, 14, 15).) These
`
`definitions have not been redacted from publicly accessible Exhibit 2016. (Ex.
`
`2016 at 11, 14, 15.) Biogen’s Opposition further cites pages 47, 51, and 58 and
`
`clause 46.1(c) of the License Agreement. (Opp’n at 20 (citing Ex. 2016 at 47, 51,
`
`clause 46.1(c), 58).) Clause 46.1(c) states that all Collaboration Technology shall
`
`be solely owned by Fumapharm AG and that Biogen, Inc. assigns to Fumapharm
`
`AG all of its and its Affiliates rights in and to such Inventions and Improvements
`
`relating to the Collaboration Technology. (Ex. 2016 at 51, clause 46.1(c).) Like the
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`3
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`Case No. IPR2015-01993
`Patent 8,399,514
`relevant definitions, the material on pages 47, 51, 58, and clause 46.1(c) relied on
`
`by Biogen has not been redacted from publicly accessible Exhibit 2016.
`
`Because the relevant portions of the License Agreement cited in Biogen’s
`
`Opposition are publicly disclosed in Exhibit 2016 and discussed in Biogen’s
`
`Opposition, sealing Exhibit 2016A will not preclude a complete and
`
`understandable public record of this proceeding, and the public’s interest in
`
`accessing the entirety of Exhibit 2016A is minimal. See Blackberry Corp. v. WI-
`
`LAN USA Inc., IPR2013-00126, Paper 30, at 4-5 (PTAB Nov. 5, 2013).
`
`B.
`
`The Portions of the License Agreement Redacted in Exhibit 2016
`Contain Confidential Information Not Relied On by Biogen
`
`Unlike the portions of the License Agreement relied on by Biogen, the
`
`portions redacted in Exhibit 2016 contain confidential commercial and financial
`
`information that is not cited or relied on by Biogen and that is of minimal
`
`relevance to this proceeding.
`
`Clauses 4-42 of the License Agreement describe the terms and conditions of
`
`Fumapharm AG’s and Biogen, Inc.’s agreement to develop, register, produce, and
`
`market a DMF-only therapy for psoriasis, MS, and other indications. (Ex. 2016A
`
`at 18-46.) Although Biogen publicly disclosed the existence of this Agreement in a
`
`Form 10-K filed March 10, 2004, it did not disclose the confidential terms and
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`conditions specified in these clauses. For example, although Biogen’s Form 10-K
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`4
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`Patent 8,399,514
`states that Biogen, Inc. committed to pay additional amounts upon achievement of
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`certain future research milestones and first and second indication development
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`milestones and that Biogen, Inc. could be required to pay up to 25 million Swiss
`
`francs plus royalties over the life of the agreement, it did not disclose any specific
`
`details regarding the number, nature, or timing of these milestones or the amounts
`
`to be paid upon completion of each milestone. (Ex. 2088 at 55-56.) These details,
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`which remain confidential, have been redacted from publicly accessible Exhibit
`
`2016. (Ex. 2016 at 38.) Similarly, certain initial fees were to be paid under the
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`License Agreement. (Ex. 2016A at 34, 38-39.) The amount of these fees was not
`
`publicly disclosed in Biogen’s Form 10-K and remains confidential, and therefore
`
`has been redacted in publicly accessible Exhibit 2016. (Ex. 2088 at 13, 55-56.)
`
`The remaining clauses redacted in Exhibit 2016 address details such as the
`
`production, registration, and marketing of FAG-201, payment
`
`terms and
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`conditions, warranties, insurance, and management of the License Agreement,
`
`none of which have been publicly disclosed and all of which remain confidential.
`
`These portions of the License Agreement are not cited or otherwise relied on in
`
`Biogen’s Opposition and have little, if any, relevance to this proceeding.
`
`As explained above, all relevant portions of the License Agreement cited
`
`and relied on in Biogen’s Opposition are being made of public record concurrently
`
`herewith so as to maintain a complete and understandable record. Accordingly,
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`5
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`Case No. IPR2015-01993
`Patent 8,399,514
`whereas the public interest in accessing the entirety of Exhibit 2016A is minimal,
`
`Biogen would be substantially prejudiced by the public dissemination of the
`
`confidential information contained in the License Agreement that has been
`
`redacted from publicly accessible Exhibit 2016. Good cause therefore exists to
`
`seal Exhibit 2016A.
`
`C. Certification Regarding the Public Availability of the Confidential
`Information Redacted from Exhibit 2016
`
`Biogen certifies that none of the confidential information redacted in
`
`Exhibit 2016 has previously been made publicly available and that Biogen has
`
`taken reasonable steps to prevent the public disclosure of this information.
`
`IV. Good Cause Exists to Seal Exhibit 2017A
`A. The Portions of the Stock Purchase Agreement Cited and Relied
`on by Biogen Are in the Public Record
`
`As with the License Agreement, the relevant portions of the Stock Purchase
`
`Agreement (Ex. 2017 (redacted), Ex. 2017A (unredacted)) cited and relied on in
`
`Biogen’s Opposition are in the public record. Biogen’s Opposition cites the Stock
`
`Purchase Agreement to show that both Joshi ’999 and the subject matter of claims
`
`1-20 of the ’514 patent were owned by or subject to an obligation of assignment to
`
`Biogen Idec MA Inc. on February 8, 2007, when the invention claimed in the ’514
`
`patent was constructively reduced to practice. (Opp’n at 21-24.) Specifically,
`
`Biogen’s Opposition states that on May 26, 2006, Biogen Idec MA Inc. purchased
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`6
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`Case No. IPR2015-01993
`Patent 8,399,514
`100% of the total share capital of Fumapharm AG and that through this
`
`acquisition, Biogen Idec MA Inc. became the owner of Joshi ’999 and all
`
`collaboration technology that already existed, including at least the invention of
`
`claims 1-16 and 20 of the ’514 patent. (Id. at 24-25 (citing Ex. 2017 at 2).)
`
`Biogen’s Opposition cites page 2 of the Stock Purchase Agreement, which states
`
`that based on preliminary negotiations between the shareholders of Fumapharm
`
`AG and Biogen Idec MA Inc., the parties agreed that Biogen Idec MA Inc. will
`
`purchase 100% of the share capital of Fumapharm AG. (Ex. 2017 at 2.) The relied-
`
`upon portion of page 2 of the Stock Purchase Agreement has not been redacted
`
`from publicly accessible Exhibit 2017. (Ex. 2017 at 2.)
`
`Thus, because the relevant portions of the Stock Purchase Agreement cited
`
`and relied on by Biogen are publicly disclosed in Exhibit 2017 and are discussed
`
`and summarized in Biogen’s Opposition, sealing Exhibit 2017A will not preclude
`
`a complete and understandable public record of this proceeding, and the public’s
`
`interest in accessing the entirety of Exhibit 2017A is minimal. See Blackberry
`
`Corp., IPR2013-00126, Paper 30 at 4-5.
`
`B.
`
`The Portions of the Stock Purchase Agreement Redacted in
`Exhibit 2017 Contain Confidential Information Not Relied On by
`Biogen
`
`Unlike the portions of the Stock Purchase Agreement relied on by Biogen,
`
`the portions redacted in Exhibit 2017 contain confidential commercial and
`
`7
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`Case No. IPR2015-01993
`Patent 8,399,514
`financial information that is not cited or otherwise relied on in Biogen’s
`
`Opposition and that is of little, if any, relevance to this proceeding. For example,
`
`the Stock Purchase Agreement contains confidential commercial and financial
`
`information, including a schedule of milestone payments to be made by Biogen
`
`Idec MA Inc. to the shareholders of Fumapharm AG based on sales of Fumapharm
`
`AG Products. (Ex. 2017A at 4-10.) Although a Form 10-Q filed by Biogen on
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`November 9, 2006, discloses that Biogen Idec MA Inc. paid $220 million to
`
`acquire Fumapharm AG and agreed to pay up to an additional $300 million in the
`
`event that annual and cumulative sales targets were achieved, it does not provide
`
`any specific details regarding these sales targets or the corresponding required
`
`payments. (Ex. 2089 at 14; see Ex. 2091 at 79, 159.) These payment details and
`
`other financial information such as bank account numbers—which are not cited by
`
`Biogen and have little, if any, relevance to this proceeding—remain confidential
`
`and therefore have been redacted from Exhibit 2017. (Ex. 2017 at 11-30.) Indeed,
`
`in undertaking the Stock Purchase Agreement, Biogen Idec MA Inc. agreed “to
`
`keep the present AGREEMENT and its subject matter, in particular the purchase
`
`price, confidential.” (Ex. 2017 at 32, clause 57.1.) Other portions of the Stock
`
`Purchase Agreement redacted in Exhibit 2017 disclose additional confidential
`
`information such as the class, ownership, and par value of the shares of
`
`Fumapharm AG acquired by Biogen Idec MA Inc., the identities of all of
`
`8
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`Case No. IPR2015-01993
`Patent 8,399,514
`Fumapharm AG’s shareholders, the closing conditions, various representations and
`
`warranties, and additional financial information and disclosures. (Compare Ex.
`
`2017, with Ex. 2017A.) This information has not been publicly disclosed and
`
`therefore remains confidential, and Biogen does not cite or otherwise rely on this
`
`information in its Opposition.
`
`In sum, the portions of the Stock Purchase Agreement redacted in Exhibit
`
`2017 are confidential, are not cited or otherwise relied on in Biogen’s Opposition,
`
`and have little, if any, relevance to the issues in this proceeding. And, as explained
`
`above, all relevant portions of the Stock Purchase Agreement cited and relied on in
`
`Biogen’s Opposition are being made of public record concurrently herewith.
`
`Accordingly, because the public interest in accessing the entirety of Exhibit
`
`2017A is minimal, and Biogen would be substantially prejudiced by the public
`
`dissemination of the confidential information contained in the Stock Purchase
`
`Agreement, good cause exists to seal Exhibit 2017A.
`
`C. Certification Regarding Public Availability of Confidential
`Information Redacted from Exhibit 2017
`
`Biogen certifies that none of the confidential information redacted from
`
`Exhibit 2017 has previously been made publicly available and that Biogen has
`
`taken reasonable steps to prevent the public disclosure of this information.
`
`9
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`
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`Case No. IPR2015-01993
`Patent 8,399,514
`V. Certification Regarding Scope of the Proposed Protective Order
`Biogen certifies that it has conferred in good faith with counsel for Petitioner
`
`and that the parties agree on the scope of the proposed Protective Order (Ex.
`
`2093), which is the Board’s default protective order. In addition, counsel for
`
`Petitioner has signed the Standard Acknowledgement for Access to Protective
`
`Order Material. (Ex. 2084 at 5; Ex. 2094 at 6.)
`
`VI. Conclusion
`For these reasons, Biogen respectfully requests that the Board grant
`
`Biogen’s motion to seal Exhibits 2016A and 2017A and enter the default
`
`protective order.
`
`Dated: June 22, 2016
`
`
`
`Respectfully submitted,
`
`By: /Michael J. Flibbert /
`Michael J. Flibbert, Reg. No. 33,234
`Erin M. Sommers, Reg. No. 60,974
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`(202) 408-4000
`
`Counsel for Patent Owner in
`IPR2015-01993
`
`10
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing BIOGEN’S
`
`MOTION TO SEAL EXHIBITS 2016A AND 2017A was served electronically
`
`via e-mail on June 22, 2016, in its entirety on the following:
`
`
`James T. Carmichael
`Carol A. Spiegel
`Carmichael IP, PLLC
`8000 Towers Crescent Drive, 13th Floor
`Tysons Corner, VA 22182
`jim@carmichaelip.com
`carol@carmichaelip.com
`
`Petitioner has agreed to electronic service.
`
`
`
`Dated: June 22, 2016
`
`
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`
`
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`
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`
`
`
`
`By: /Erin M. Sommers/
`Erin M. Sommers (Reg. No. 60,974)
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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