UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC., 1
`Petitioners,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`_____________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)
`_____________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017- 00596,
`IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017- 00599,
`IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and IPR2017-00601 have
`respectively been joined with the captioned proceedings. The word-for-word
`identical paper is filed in each proceeding identified in the caption pursuant to the
`Board’s Scheduling Order (Paper 10).
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC., 1
`Petitioners,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`_____________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)
`_____________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017- 00596,
`IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017- 00599,
`IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and IPR2017-00601 have
`respectively been joined with the captioned proceedings. The word-for-word
`identical paper is filed in each proceeding identified in the caption pursuant to the
`Board’s Scheduling Order (Paper 10).
`
`
`
`Paper No. 100
`Proceeding No.: IPR2016-01128
`I. INTRODUCTION
`On November 9, 2017, the Board issued an Order on the Conduct of the
`
`Proceedings instructing the parties to confer as to whether any information in
`
`Exhibits 2086, 2087, and Paper 86 should be treated as confidential. The Board
`
`also ordered that after this conference the Saint Regis Mohawk Tribe (“Tribe”)
`
`may file a motion to seal with a showing of good cause as to why the information
`
`constitutes confidential information. The parties conferred on November 15, 2017
`
`and agree that Paper 86 may be unsealed in its entirety.
`
`The Tribe files this motion asking that certain confidential portions of Exhibits
`
`2086 and 2087 remain under seal. The Tribe has filed redacted versions of Exhibits
`
`2086 and 2087 with this motion.
`
` Petitioners do not oppose the relief sought in this motion.
`
`II. STATEMENT OF PRECISE RELIEF REQUESTED
`Under 37 C.F.R. § 42.14, Patent Owner respectfully submits redacted versions
`
`of Exhibits 2086 and 2087 because the redacted portions of these documents
`
`contain confidential information that was not relied upon by either party in any of
`
`the briefs related to Patent Owner’s Motion to Dismiss.
`
`III. GOOD CAUSE EXISTS FOR SEALING THE REDACTED
`CONFIDENTIAL INFORMATION
`There is a strong public policy that favors making information filed in an inter
`
`partes review open to the public. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`1
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`
`
`Paper No. 100
`Proceeding No.: IPR2016-01128
`IPR2012-00001, slip op. 1-2 (PTAB Mar. 14, 2013) (Paper 34). The standard for
`
`granting a motion to seal is good cause. 37 C.F.R. § 42.14.
`
`Exhibits 2086 and 2087 are the Long-Form Assignment Agreement and License
`
`Agreement between Patent Owner, Saint Regis Mohawk Tribe and Allergan. These
`
`agreements contain confidential commercial information pertaining to the business
`
`of Patent Owner and Allergan. Both Agreements contain Confidentiality and Non-
`
`Disclosure Clauses that prohibit disclosure unless made in response to a valid court
`
`order. EX. 2086 at §5(d)(1); EX. 2087 at 6.3.1. Nevertheless, Patent Owner seeks
`
`to seal only a few provisions of Exhibits 2086 and 2087, which fall into the three
`
`categories discussed below.
`
`First, Patent Owner seeks to seal information regarding the resolution of
`
`disputes between Patent Owner and Allergan related to the agreements. These
`
`provisions are important to Patent Owner’s competitive standing during patent
`
`licensing negotiations. Declaration of Dale White at ¶ 5. If made public, this
`
`information would provide a third party attempting to negotiate with either Patent
`
`Owner or Allergan a road map regarding dispute resolution issues, and therefore,
`
`an unfair advantage in future negotiations. Patent Owner thus respectfully requests
`
`that paragraph 11.a. of Exhibit 2086 and paragraphs 8.1, 8.2, and 10.7 of Exhibit
`
`2087 remain sealed.
`
`Second, Patent Owner seeks seal information related to confidential settlement
`
`2
`
`
`
`Paper No. 100
`Proceeding No.: IPR2016-01128
`agreements between Allergan and third parties. Those settlement agreements
`
`between Allergan and other parties are confidential business information of
`
`Allergan and those third parties. Moreover, they are ancillary to the matter at hand
`
`and do not relate to the issues of tribal sovereign immunity that are at issue here.
`
`Patent Owner thus respectfully requests that paragraphs 3.b. and 3.c., and Schedule
`
`3a of Exhibit 2086, and Schedule 1.43 of Exhibit 2087 remain sealed.
`
` Finally, Patent Owner respectfully requests that the bank and routing
`
`information for the payment under the License Agreement, paragraph 4.1 of
`
`exhibit 2087, be sealed. To be clear, Patent Owner is not requesting sealing of the
`
`entirety of paragraph 4.1, but instead only requests that the bank account
`
`information be kept under seal. That information is not relevant to any claim or
`
`issue here, and could be highly damaging if made public.
`
`Moreover, the redacted portions do not materially detract from any material
`
`understanding of the public record because neither party cited to or quoted from
`
`any of the redacted portions in any of the briefs concerning the Tribe’s Motion to
`
`Dismiss. Id. at ¶ 9. Additionally, none of the redacted provisions relate to the tribal
`
`sovereign immunity at issue before the Board. Thus, the redactions to Exhibits
`
`2086 and 2087 are limited only to what is necessary to protect confidential
`
`information and do not detract from any material understanding of the public
`
`record because neither party quoted the redacted portions. Accordingly, good cause
`
`3
`
`
`
`Paper No. 100
`Proceeding No.: IPR2016-01128
`exists for sealing the redacted portions of Exhibits 2086 and 2087.
`
`IV. CONCLUSION
`For the foregoing reasons the Board should find that good cause exists to seal
`
`the redacted portions of Exhibits 2086 and 2087.
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Alfonso Chan /
`Alfonso Chan
`Reg. No. 45,964
`achan@shorechan.com
`Michael Shore*
`mshore@shorechan.com
`Christopher Evans*
`cevans@shorechan.com
`
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, TX 75201
`Tel: (214) 593-9110
`Fax: (214) 593-9111
`
`Marsha Schmidt*
`Attorney at Law
`14928 Perrywood Drive
`Burtonsville, MD 20866
`marsha@mkschmidtlaw.com
`Tel: (301) 949-5176
`*admitted pro hac vice
`
`Attorneys for Saint Regis Mohawk Tribe
`
`
`
`Dated: November 16, 2017
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`4
`
`
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`
`
`
`
`Paper No. 100
`Proceeding No.: IPR2016-01128
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that
`
`on November 16, 2017, a complete and entire copy of Patent Owner’s Motion to Seal
`
`was provided, via electronic service, to the Petitioners by serving the correspondence
`
`address of record as follows:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`Wendy L. Devine
`WILSON SONSINI GOODRICH & ROSATI
`One Market Street, Spear Tower Floor 33
`San Francisco, CA 94105-1126
`wdevine@wsgr.com
`
`Douglas H. Carsten
`WILSON SONSINI GOODRICH & ROSATI
`12235 El Camino Real, Suite 200
`San Diego, CA 92130
`dcarsten@wsgr.com
`
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`1700 K Street NW, 5th Floor
`Washington, DC 20006
`rtorczon@wsgr.com
`
`
`5
`
`
`
`Paper No. 100
`Proceeding No.: IPR2016-01128
`Brandon M. White
`Crystal Canterbury
`Charles G. Curtis, Jr.
`Jennifer MacLean
`Benjamin S. Sharp
`Shannon M. Bloodworth
`PERKINS COIE LLP
`700 13th Street NW
`Washington DC 20005
`bmwhite@perkinscoie.com
`ccanterbury@perkinscoie.com
`ccurtis@perkinscoie.com
`jmaclean@perkinscoie.com
`bsharp@perkinscoie.com
`sbloodworth@perkinscoie.com
`
`Eric D. Miller
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`emiller@perkinscoie.com
`Attorneys for Mylan Pharmaceuticals, Inc.
`
`
`And upon the remaining Petitioners as follows:
`
`
`Michael R. Dzwonczyk
`Azy S. Kokabi
`Travis B. Ribar
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., NW, Suite 800
`Washington, DC 20037
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`tribar@sughrue.com
`Attorneys for Akorn Inc.
`
`6
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`
`
`Paper No. 100
`Proceeding No.: IPR2016-01128
`
`/Alfonso G. Chan/
`Alfonso G. Chan
`
`SHORE CHAN DEPUMPO LLP
`
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`(214) 593-9110
`
`
`Gary J. Speier
`Mark D. Schuman
`CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`IPRCyclosporine@carlsoncaspers.com
`Attorneys for Teva Pharmaceuticals
`
`
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`7
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`
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