`571-272-7822
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` Paper No. 14
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` Entered: April 8, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STEADYMED LTD.,
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00006
`Patent 8,497,393 B2
`____________
`
`
`
`Before LORA M. GREEN, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2016-00006
`Patent 8,497,393 B2
`
`
`
`A Decision to Institute an inter partes review is issued concurrently
`with this order. The Patent Owner’s Preliminary Response, and Exhibits
`2003, 2004, 2005, and 2006 were filed under seal. In addition, Patent
`Owner filed a Motion to File under Seal concurrently with its Preliminary
`Response and Exhibits. Paper 7. In that Motion, Patent Owner avers that
`the parties have agreed to the Default Protective Order in the Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48756, 48771 (Aug. 14, 2012). Id.
`We decline to rule on Patent Owner’s Motion to File under Seal at this
`time. However, because it discusses information contained in Exhibits 2003,
`2004, 2005, and 2006, we have filed our Decision to Institute under seal.
`We issue this order to request that the parties clarify and justify what, if
`anything, in the Decision to Institute should remain under seal.
`In undertaking to identify material in the Decision to Institute that
`should remain under seal, we remind the parties of the strong public policy
`for making all information filed in a quasi-judicial administrative proceeding
`open to the public. This policy favoring public disclosure is heightened in
`an inter partes review which determines the patentability of claims in an
`issued patent and, therefore, affects the rights of the public. Under
`35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an inter
`partes review are open and available for access by the public, and a party
`may file a concurrent motion to seal and the information at issue is sealed
`pending the outcome of the motion. Similarly, 37 C.F.R. § 42.14 provides:
`The record of a proceeding, including documents and
`things, shall be made available to the public, except as otherwise
`ordered. A party intending a document or thing to be sealed shall
`2
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`
`
`IPR2016-00006
`Patent 8,497,393 B2
`
`
`
`file a motion to seal concurrent with the filing of the document
`or thing to be sealed. The document or thing shall be
`provisionally sealed on receipt of the motion and remain so
`pending the outcome of the decision on the motion.
`It is, however, only “confidential information” that is protected from
`disclosure. 35 U.S.C. § 316(a)(7)(“The Director shall prescribe regulations
`— . . . providing for protective orders governing the exchange and
`submission of confidential information”). In that regard, note the Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012),
`which provides:
`The rules aim to 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.
`* * *
`Confidential Information: The rules identify confidential
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for
`trade secret or other confidential research, development, or
`commercial information. § 42.54.
`Confidential information may also be made public where the
`existence of the information is identified in a final written decision following
`a trial. See Office Patent Trial Practice Guide at 77 Fed. Reg. 48,756,
`48,761 (Aug. 14, 2012)).
`
`
`
`
`3
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`
`
`IPR2016-00006
`Patent 8,497,393 B2
`
`
`
`It is
`ORDERED that the parties are directed to submit by April 28, 2016, a
`joint written statement identifying those parts of the Decision to Institute that
`should remain under seal, accompanied by a redacted copy of the Decision
`to Institute;
`FURTHER ORDERED that if the parties come to an agreement that
`portions of the Decision to Institute should remain under seal, they should
`file a motion to seal; and
`FURTHER ORDERED that if a response as to which portions of the
`Decision to Institute should remain under seal is not received by April 22,
`2016, the Decision to Institute will be made available to the public in its
`entirety.
`
`
`
`
`4
`
`
`
`IPR2016-00006
`Patent 8,497,393 B2
`
`
`PETITIONER:
`
`Stuart E. Pollack
`Lisa A. Haile
`DLA Piper LLP
`stuart.pollack@dlapiper.com
`lisa.haile@dlapiper.com
`steadymed-ipr@dlapiper.com
`
`PATENT OWNER:
`
`Stephen B. Maebius
`George Quillin
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas Carsten
`Richard Torczon
`Robert Delafield
`WILSON, SONSINI, GOODRICH & ROSATI
`dcarsten@wsgr.com
`rtorczon@wsgr.com
`bdelafield@wsgr.com
`
`5
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`
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