Paper No. ___
`Filed: March 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`MYLAN LABORATIORIES, LTD.,
`Petitioner,
`
`v.
`
`AVNETIS PHARMA S.A.,
`Patent Owner.
`
`_____________________________
`
`Case IPR2016-00712
`Patent 8,927,592
`_____________________________
`
`
`
`PETITIONER’S MOTION TO SEAL
`
`
`Filed: March 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`MYLAN LABORATIORIES, LTD.,
`Petitioner,
`
`v.
`
`AVNETIS PHARMA S.A.,
`Patent Owner.
`
`_____________________________
`
`Case IPR2016-00712
`Patent 8,927,592
`_____________________________
`
`
`
`PETITIONER’S MOTION TO SEAL
`
`
`
`Case IPR2016-007121
`Patent 8,927,592
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.14, Petitioner Mylan Laboratories, Ltd. (“Mylan”
`
`or “Petitioner”) respectfully moves to seal Petitioner’s Opposition Motion to Patent
`
`Owner’s Contingent Motion to Amend (Paper 43/44, “Opposition”), the reply
`
`declarations of Dr. Rahul Seth (EX1043, “Seth Reply Declaration”) and Robert
`
`McSorley (EX1044, “McSorley Declaration”), and the Transcript of the Deposition
`
`of Michael E. Tate (EX1042), as well as Exhibits EX1054, EX1065, EX1069-
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`EX1072, EX1074, EX1079, and EX1089-EX1090, subject to the Stipulated
`
`Protective Order (Paper 36).
`
`Patent Owner Aventis previously moved for entry of the Stipulated
`
`Protective Order and to seal similar information found in earlier filings. Paper 24.
`
`Mylan did not oppose. The Board granted the motion to seal (Paper 35) and
`
`authorized Aventis to file the Stipulated Protective Order (Paper 36).
`
`Mylan submits concurrently with this motion to seal the following:
`
`a.
`
`b.
`
`c.
`
`d.
`
`Redacted version of Paper 43/44, Petitioner’s
`Opposition to Patent Owner’s Contingent Motion to
`Amend
`
`Confidential Exhibit EX1042 (Tate Deposition)
`
`Redacted version of Exhibit EX1043 (Seth Reply
`Declaration)
`
`Confidential version of Exhibit EX1043 (Seth Reply
`Declaration)
`
`
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`-1-
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`Case IPR2016-007121
`Patent 8,927,592
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` Redacted version of Exhibit EX1044 (McSorley
`Declaration)
`
` Confidential version of Exhibit EX1044 (McSorley
`Declaration)
`
`Confidential Exhibit EX1054
`
`Confidential Exhibit EX1065
`
`Confidential Exhibit EX1068
`
`Confidential Exhibit EX1069
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`Confidential Exhibit EX1070
`
`Confidential Exhibit EX1071
`
`e.
`
`f.
`
`g.
`
`h.
`
`i.
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`j.
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`k.
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`l.
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`m. Confidential Exhibit EX1072
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`n.
`
`o.
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`p.
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`q.
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`Confidential Exhibit EX1074
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`Confidential Exhibit EX1079
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`Confidential Exhibit EX1089
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`Confidential Exhibit EX1090
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`
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`II. GOOD CAUSE EXISTS FOR SEALING CONFIDENTIAL
`INFORMATION
`
`The record of a proceeding is open and available for access by the public.
`
`See 37 C.F.R. § 42.14. The Board must find “good cause” to seal documents.
`
`Garmin v. Cuozzo, IPR2012-00001, Paper 36 at 3 (PTAB April 5, 2013). “The
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`rules aim to strike a balance between the public’s interest in maintaining a
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`complete and understandable file history and the parties’ interest in protecting truly
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`-2-
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`Case IPR2016-007121
`Patent 8,927,592
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`sensitive information.” The Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48760 (Aug. 14, 2012).
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`The public’s interest in having access to a party’s confidential business or
`
`clinical research information that is only indirectly related to patent validity is
`
`“minimal.” Garmin at 8-9 (granting the patent owner’s motion to seal an
`
`agreement relating to the “commercializ[ation]” of the patent-at-issue). Here, the
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`Petitioner’s interests in protecting its confidential business information outweighs
`
`the public’s interest in viewing that information. Additionally, Patent Owner has
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`produced in discovery certain documents relating to business information and
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`clinical research designated as confidential, which Petitioner seeks to submit. Such
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`documents would be subject to the Stipulated Protective Order. Paper 36 at 4
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`(“Information designated as confidential that is disclosed to another party during
`
`discovery or other proceedings before the Board shall be clearly marked as
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`‘PROTECTIVE ORDER MATERIAL’ and shall be produced in a manner that
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`maintains its confidentiality”).
`
`A.
`
`Petitioner’s Opposition to Patent Owner’s Contingent Motion to
`Amend
`
`Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend
`
`includes references to and discussion of EX2182 that was filed under seal subject
`
`to the Stipulated Protective Order. Paper 24 at 5-6; Paper 36. Mylan seeks to
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`maintain the confidentiality of those select portions of the Opposition that discuss
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`-3-
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`
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`the contents of EX2182. The portions Mylan seeks to seal have been redacted from
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`Case IPR2016-007121
`Patent 8,927,592
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`the publicly-filed version of the Opposition.
`
`B.
`
`Tate Deposition (EX1042)
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`The Tate Deposition contains questions relating to the Tate Declaration
`
`(EX2149), which was filed under seal, subject to the Stipulated Protective Order.
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`The discussion recorded in the Tate Deposition reveals Aventis’s confidential
`
`business information discussed in the context of the Tate Declaration, and should
`
`accordingly be sealed for reasons similar to those for which the Tate Declaration
`
`was filed under seal.
`
`C.
`
`Seth Declaration (EX1043)
`
`Mylan seeks to seal portions of EX1043, the March 14, 2017 Expert
`
`Declaration of Dr. Rahul Seth, which responds to the arguments put forth by
`
`Aventis and Dr. Sartor relating to the Patent Owner Response (Paper 21) and
`
`Contingent Motion to Amend (Paper 22). Mylan seeks to maintain the
`
`confidentiality of select portions EX1043 that rely on EX2182, which was filed
`
`under seal subject to the Stipulated Protective Order. Paper 24 at 5-6; Paper 36.
`
`The portions Mylan seeks to seal have been redacted from the publicly-filed
`
`version of Exhibit 1043.
`
`D. McSorley Declaration (EX1044)
`
`Mylan seeks to seal portions of EX1044, the March 14, 2017 Expert
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`-4-
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`
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`Case IPR2016-007121
`Patent 8,927,592
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`Declaration of Robert McSorley, which rebuts Aventis’s arguments alleging
`
`commercial success based on sales of Jevtana®. Mylan seeks to maintain the
`
`confidentiality of select portions EX044 that rely on the below mentioned EX1065,
`
`EX1069-EX1072, EX1074, EX1079, and EX1089 and EX1090 for their highly
`
`sensitive business information. The portions Mylan seeks to seal have been
`
`redacted from the publicly-filed version of EX1044.
`
`E.
`
`Exhibit EX1054
`
`EX1054, the Briefing Document for the End-of-Phase II Meeting in 1996,
`
`was produced by Aventis in discovery and designated as confidential. Aventis
`
`previously filed the minutes of the same meeting as EX2211 (Paper 24 at 5-6), and
`
`the Board granted a motion to seal. Paper 36. Mylan uses EX1054 to rebut
`
`arguments made by Aventis, including arguments relating to sealed EX2211.
`
`F.
`
`Exhibits EX1065, EX1069-EX1072, EX1074, and EX1079
`
`EX1065, EX1069-EX1072, EX1074, and EX1079 were produced by
`
`Aventis in discovery and designated as confidential. Aventis previously filed
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`Exhibits 2170 and 2179 under seal, stating that “they contain highly sensitive
`
`business information.” Paper 24 at 3-4. The Board granted a motion to seal. Paper
`
`36. Exhibits EX1065, EX1069-EX1072, EX1074, and EX1079 contain
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`information from Aventis that is of substantially similar character, and Mylan
`
`seeks to rely on those documents to rebut Aventis’s arguments regarding
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`-5-
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`Case IPR2016-007121
`Patent 8,927,592
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`commercial success.
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`G. Exhibits EX1089 and EX1090
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`The third-party analyst reports in EX1089 and EX1090 are proprietary
`
`materials that contain third-party proprietary commercial information that would
`
`lose their value if publicly available. To the best of Mylan’s knowledge, the
`
`information to be sealed is not otherwise publicly available. Mylan relies on these
`
`reports to rebut Aventis’s arguments regarding commercial success. The Board has
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`previously granted a motion to seal under similar circumstances. See Athena
`
`Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00167, Paper
`
`32 at 2.
`
`Mylan proposes adoption of the Stipulated Protective Order that Aventis has
`
`already submitted (Paper 36). To balance between the public interest in an open
`
`record and the needs of third-party analysts to protect their proprietary data, Mylan
`
`submits redacted versions of the Opposition and Exhibits EX1043 and EX1044.
`
`Exhibits EX1042, EX1054, EX1065, EX1069-EX1072, EX1074, EX1079, and
`
`EX1089-EX1090 should be sealed in their entirety because they contain material
`
`that is confidential to a party or a third party and, in each case, redaction to protect
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`confidential information would render the remaining document meaningless.
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`III. CERTIFICATION OF NON-PUBLICATION
`
`On behalf of the Petitioner, the undersigned counsel certifies that, to the best
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`-6-
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`
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`of his knowledge, the information sought to be sealed by this Motion has not been
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`published or otherwise made public.
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`Case IPR2016-007121
`Patent 8,927,592
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`IV. CERTIFICATION OF CONFERENCE WITH OPPOSING PARTY
`PURSUANT TO 37 C.F.R. §42.54
`
`Counsel for Mylan has conferred with counsel for Aventis. Mylan
`
`understands that Aventis does not oppose sealing the requested portions of
`
`Petitioner’s Opposition Motion to Patent Owner’s Contingent Motion to Amend
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`(Paper 43/44) and Exhibits EX1043 and EX1044, and to seal Exhibits EX1042,
`
`EX1054, EX1065, EX1069-EX1072, EX1074, EX1079, and EX1089-EX1090.
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`V. CONCLUSION
`
`For the reasons provided above, Mylan requests that the Board seal
`
`Petitioner’s Opposition Motion to Patent Owner’s Contingent Motion to Amend
`
`and Exhibits EX1042-EX1044, EX1054, EX1065, EX1069-EX1072, EX1074,
`
`EX1079, and EX1089-EX1090.
`
`
`
`
`
`Date: March 14, 2017
`
`
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Steven W. Parmelee
`Reg. No. 31,990
`
`
`
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`-7-
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`
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`Case IPR2016-007121
`Patent 8,927,592
`
`
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`CERTIFICATE OF SERVICE
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`I certify that, on 14 March 2017, this PETITIONER’S MOTION TO SEAL
`
`was served on Aventis at the following service electronic addresses:
`
`Dominick A. Conde
`
`dconde@fchs.com
`
`Whitney Meier
`
`wmeier@fchs.com
`
`Daniel J. Minion
`
`dminion@fchs.com
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`Joshua I. Rothman
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`jrothman@fchs.com
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`William E. Solander
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`wsolander@fchs.com
`
`Jason A. Leonard
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`jleonard@fchs.com
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`
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`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Steven W. Parmelee
`Reg. No. 31,990
`
`
`
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`
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`Date: March 14, 2017
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`-8-
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