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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. ___
`Date Filed: July 16, 2019
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMERIGEN PHARMACEUTICALS LIMITED and
`ARGENTUM PHARMACEUTICALS LLC
`Petitioners,
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`v.
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`JANSSEN ONCOLOGY, INC.
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`Patent Owner.
`
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`Case IPR2016-002861
`Patent 8,822,438 B2
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`
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`PATENT OWNER’S MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.56
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`1 Case IPR2017-01317 was joined with this proceeding.
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`
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`Case: IPR2016-00286
`U.S. Patent No. 8,822,438
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.56 and the Board’s email authorization of July
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`16, 2019, Patent Owner Janssen Oncology, Inc. (“Patent Owner”) respectfully
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`requests that the Board expunge from the record Exhibits 2038, 2044, 2092, 2093,
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`2094, and 2118—all of which contain Patent Owner’s confidential information—
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`for the reasons set forth below. Patent Owner certifies that the parties have
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`conferred in good faith, and Petitioners do not oppose this motion.
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`II. BACKGROUND
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`On January 31, 2018, Patent Owner filed a motion to seal Exhibits 2038 and
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`2044 (which are the confidential versions of redacted Exhibits 2119 and 2115,
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`respectively), and Exhibits 2092, 2093, 2094, and 2118 (which are confidential in
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`their entirety). See Paper 87. All of the aforementioned exhibits contain Patent
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`Owner’s confidential information. On February 13, 2018, the Board granted Patent
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`Owner’s motion to seal. See Paper 89. Furthermore, the Board found that “[i]n
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`rendering [its] Final Decision, it was not necessary to identify, nor discuss in
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`detail, any confidential information.” Id. at 3. The Board ordered that the exhibits
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`remain under seal until “the time period for filing a notice of appeal has expired or,
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`if an appeal is taken, the appeal process has concluded.” Id.
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`On December 19, 2018, Patent Owner filed a Notice of Appeal. Paper 93.
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`On May 14, 2019, the United States Court of Appeals for the Federal Circuit (the
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`1
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`Case: IPR2016-00286
`U.S. Patent No. 8,822,438
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`“Federal Circuit”) issued its opinion and judgment, and on June 20, 2019, the
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`Federal Circuit issued its mandate.
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`III. APPLICABLE LEGAL STANDARDS
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`37 C.F.R. § 42.56 provides that “[a]fter denial of a petition to institute a trial
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`or after final judgment in a trial, a party may file a motion to expunge confidential
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`information from the record.” The Board has previously explained that a party
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`moving to expunge has to show that: i) “any information sought to be expunged
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`constitutes confidential information[;]” and ii) the movant’s interest in expunging
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`the information “outweighs the public’s interest in maintaining a complete and
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`understandable file history.” RPX Corp. v. VirnetX Inc., IPR 2014-00171, Paper 62
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`at 3 (P.T.A.B. Sept. 9, 2014). The regulations identify confidential information as
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`“a trade secret or other confidential research, development, or commercial
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`information.” 37 C.F.R. § 42.54(a)(7). The Board must strike “a balance between
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`the public’s interest in maintaining a complete and understandable file history and
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`the parties’ interest in protecting truly sensitive information.” 77 Fed. Reg. 48756,
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`48760 (Aug. 14, 2012).
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`IV. REASONS FOR THE RELIEF REQUESTED
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`In its order granting the motion to seal, the Board stated that “confidential
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`information that is subject to a protective order ordinarily would become public 45
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`days after final judgment in a trial, unless a motion to expunge is granted.” Paper
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`2
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`
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`Case: IPR2016-00286
`U.S. Patent No. 8,822,438
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`89 at 3. Accordingly, Patent Owner moves to expunge from the record the
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`following sealed exhibits containing Patent Owner’s confidential information:
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` Internal, non-public research summaries concerning the use of Patent
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`Owner’s product: Exhibit 2092 (filed October 4, 2016); Exhibit 2093
`
`(filed October 4, 2016); Ex. 2094 (filed October 4, 2016).
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` Internal, non-public technical research and development information
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`concerning Patent Owner’s product: Exhibit 2118 (filed October 4,
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`2016).
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` Expert declarations and deposition transcripts referring to Patent Owner’s
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`confidential information: Declaration of Matthew B. Rettig, M.D., Ex.
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`2038 (filed October 4, 2016); Declaration of Christopher A. Vellturo,
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`Ph.D., Exhibit 2044 (filed October 12, 2016).
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`Patent Owner has already demonstrated, and the Board agreed, that Exhibits
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`2038, 2044, 2092, 2093, 2094, and 2118 contain confidential information. Paper 89
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`at 2. There has been no change in confidentiality of the information contained in
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`these exhibits. Thus, Patent Owner has met its burden of showing that “any
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`information sought to be expunged constitutes confidential information.” RPX,
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`IPR2014-00171, Paper 62 at 3.
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`In addition, Patent Owner’s interest in expunging the confidential
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`information in Exhibits 2038, 2044, 2092, 2093, 2094, and 2118 “outweigh[s] the
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`3
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`Case: IPR2016-00286
`U.S. Patent No. 8,822,438
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`public’s interest in maintaining a complete and understandable file history.” Id. As
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`stated in its Final Written Decision, the Board did not “identify, nor discuss in
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`detail” the confidential information when rendering its decision. Paper 89 at 3. The
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`public, therefore, has access to all the materials relevant to the merits of this
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`proceeding, either through publicly filed papers and exhibits or through redacted,
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`public versions of Exhibit 2038 (Declaration of Matthew B. Rettig, M.D. - Exhibit
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`2119), and Exhibit 2044 (Declaration of Christopher A. Vellturo, Ph.D. - Exhibit
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`2115). Given the confidential nature of the information in Exhibits 2038, 2044,
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`2092, 2093, 2094, and 2118, good cause exists for the Board to expunge these
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`exhibits pursuant to 37 C.F.R. § 42.56.
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`V. CONCLUSION
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`For the reasons set forth above, Patent Owner requests that the Board grant
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`this motion and expunge confidential Exhibits 2038, 2044, 2092, 2093, 2094, and
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`2118 from the record.
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`July 16, 2019
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`4
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`Respectfully submitted,
`
`By: /Dianne B. Elderkin/
`Dianne B. Elderkin (Reg. No. 28,598)
`delderkin@akingump.com
`Ruben H. Munoz (Reg. No. 66,998)
`rmunoz@akingump.com
`AKIN GUMP STRAUSS HAUER &
`FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`
`
`
`Case: IPR2016-00286
`U.S. Patent No. 8,822,438
`
`Philadelphia, PA 19103
`Tel: (215) 965-1200
`Fax: (215) 965-1210
`JANS-ZYTIGA@akingump.com
`
`David T. Pritikin (pro hac vice)
`dpritikin@sidley.com
`Paul Zegger (Reg. No. 33,821)
`pzegger@sidley.com
`Alyssa B. Monsen (pro hac vice)
`amonsen@sidley.com
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`Tel.: (212) 839-5300
`Fax: (212) 839-5599
`ZytigaIPRTeam@sidley.com
`
`Counsel for Patent Owner
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`5
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`Case: IPR2016-00286
`U.S. Patent No. 8,822,438
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Motion to Expunge Under 37 C.F.R. § 42.56 was served on counsel of
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`record on July 16, 2019 by filing this document through the End-to-End System, as
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`well as delivering a copy via electronic mail to counsel of record for the Petitioners
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`and Patent Co-Owner at the following addresses:
`
`William Hare - bill@miplaw.com
`Christopher Casieri - chris@miplaw.com
`Renita Rathinam - rathinam@miplaw.com
`
`Teresa Stanek Rea - TRea@Crowell.com
`Shannon M. Lentz - SLentz@Crowell.com
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`Anthony C. Tridico - anthony.tridico@finnegan.com
`Jennifer H. Roscetti - jennifer.roscetti@finnegan.com
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`(Reg. No. 28,598)
`
`Counsel for Patent Owner
`Janssen Oncology, Inc.
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`6
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`July 16, 2019
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