`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. ___
`Date Filed: July 16, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`WOCKHARDT BIO AG,
`
`Petitioner
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner
`________________
`
`Case IPR2016-01582
`________________
`
`Patent No. 8,822,438 B2
`
`
`
`PATENT OWNER’S MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.56
`
`
`
`
`
`Case: IPR2016-01582
`U.S. Patent No. 8,822,438
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.56 and the Board’s email authorization of July
`
`16, 2019, Patent Owner Janssen Oncology, Inc. (“Patent Owner”) respectfully
`
`requests that, for the reasons set forth below, the Board expunge from the record:
`
`1) Paper Nos. 12, 26, and Paper 28 and Exhibits 2002, 2003, which reflect business
`
`confidential communications between the parties; and 2) Exhibits 1089, 1103,
`
`2044, 2092, 2093, 2118 and 2161, which contain Patent Owner’s confidential
`
`information. Patent Owner certifies that the parties have conferred in good faith,
`
`and Petitioner does not oppose this motion.
`
`II.
`
`PROCEDURAL BACKGROUND
`
`On November 16, 2016, December 22, 2016, and March 17, 2017, Patent
`
`Owner filed motions to seal Papers 12 and 26 (which are the confidential versions
`
`of redacted Papers 13 and 27, respectively),1 Exhibits 2002, 2003, 2044, and 2161
`
`(which are the confidential versions of redacted Exhibits 2005, 2004, 2115, and
`
`2162, respectively), and Exhibits 2092, 2093, and 2118 (which are confidential in
`
`their entirety). See Paper 11, 25, and 41. On April 19, 2017, Petitioner filed a
`
`motion to seal Exhibits 1089 and 1103 (which are the confidential versions of
`
`redacted Exhibits 1121 and 1122, respectively). See Paper 52.
`
`
`1 On January 19, 2017, the Board issued the institution decision under seal (Paper
`
`28) along with a corresponding public version (Paper 29).
`
`
`
`1
`
`
`
`Case: IPR2016-01582
`U.S. Patent No. 8,822,438
`
`
`Paper 12, Paper 26, and Exhibits 2002 and 2003 reflect the parties’
`
`confidential communications that addressed Patent Owner’s assertion that
`
`Petitioner did not properly identify all real parties-in-interest. Exhibits 1089, 1103,
`
`2044, 2092, 2093, 2118, and 2161 contain Patent Owner’s confidential
`
`information. In the Final Written Decision, the Board granted Patent Owner’s and
`
`Petitioner’s motions to seal. See Paper No. 72 at 47-49. Furthermore, the Board
`
`found that “[i]n rendering [its] Final Written Decision, it was not necessary to
`
`identify, nor discuss in detail, any confidential information.” Id. at 48. The Board
`
`ordered that the exhibits and papers remain under seal until “the time period for
`
`filing a notice of appeal has expired or, if an appeal is taken, the appeal process has
`
`concluded.” Id. at 49.
`
`On December 19, 2018, Patent Owner filed a Notice of Appeal. Paper 77.
`
`On May 14, 2019, the United States Court of Appeals for the Federal Circuit (the
`
`“Federal Circuit”) issued its opinion and judgment, and on June 20, 2019, the
`
`Federal Circuit issued its mandate.
`
`III. APPLICABLE LEGAL STANDARDS
`
`37 C.F.R. § 42.56 provides that “[a]fter denial of a petition to institute a trial or
`
`after final judgment in a trial, a party may file a motion to expunge confidential
`
`information from the record.” The Board has previously explained that a party
`
`moving to expunge has to show that: i) “any information sought to be expunged
`
`
`
`2
`
`
`
`Case: IPR2016-01582
`U.S. Patent No. 8,822,438
`
`constitutes confidential information[;]” and ii) the movant’s interest in expunging
`
`the information “outweighs the public’s interest in maintaining a complete and
`
`understandable file history.” RPX Corp. v. VirnetX Inc., IPR 2014-00171, Paper 62
`
`at 3 (P.T.A.B. Sept. 9, 2014). The regulations identify confidential information as
`
`“a trade secret or other confidential research, development, or commercial
`
`information.” 37 C.F.R. § 42.54(a)(7). 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.” 77 Fed. Reg. 48756,
`
`48760 (Aug. 14, 2012).
`
`IV. REASONS FOR THE RELIEF REQUESTED
`
`In its Final Written Decision, the Board stated that “confidential information
`
`that is subject to a protective order ordinarily would become public 45 days after
`
`final judgment in a trial, unless a motion to expunge is granted.” Paper 72 at 48.
`
`Accordingly, Patent Owner moves to expunge from the record the following sealed
`
`papers and exhibits reflecting the parties’ confidential communications or
`
`containing Patent Owner’s confidential information:
`
` Papers and exhibits concerning Petitioner’s disclosure of real parties-in-
`
`interest: Patent Owner’s Preliminary response, Paper 12 (filed November
`
`16, 2016); Patent Owner’s Surreply to Patent Owner Preliminary
`
`Response, Paper 26 (filed December 22, 2016); Exhibit 2002 (filed
`
`
`
`3
`
`
`
`Case: IPR2016-01582
`U.S. Patent No. 8,822,438
`
`
`November 16, 2016); Exhibit 2003 (filed November 16, 2016);
`
`Institution Decision, Paper 28 (entered January 19, 2017).
`
` Internal, non-public research summaries concerning the use of Patent
`
`Owner’s product: Exhibit 2092 (filed March 17, 2017); Exhibit 2093
`
`(filed March 17, 2017);
`
` Internal, non-public technical research and development information
`
`concerning Patent Owner’s product: Exhibit 2118 (filed March 17,
`
`2017).
`
` Expert declarations and deposition transcripts referring to Patent Owner’s
`
`confidential information: Deposition of Richard J. Auchus, M.D., Ph.D.,
`
`Exhibit 1089 (filed April 19, 2017); Reply Declaration of Robert B.
`
`Stoner, Ph.D., Exhibit 1103 (filed April 19, 2017); Declaration of
`
`Christopher A. Vellturo, Ph.D., Exhibit 2044 (filed March 17, 2017);
`
`Deposition transcript of Paul A. Godley, M.D., Ph.D., MPP, Exhibit 2161
`
`(filed March 17, 2017).
`
`The parties have already demonstrated, and the Board agreed, that Papers
`
`12, 26, and 28, and Exhibits 1089, 1103, 2002, 2003, 2044, 2092, 2093, 2118, and
`
`2161 contain confidential information. Paper 72 at 48; Paper 29. There has been no
`
`change in confidentiality of the information contained in these papers and exhibits.
`
`Thus, the parties have met their burden of showing that “any information sought to
`
`
`
`4
`
`
`
`Case: IPR2016-01582
`U.S. Patent No. 8,822,438
`
`be expunged constitutes confidential information.” RPX, IPR2014-00171, Paper 62
`
`at 3.
`
`In addition, the parties’ interest in expunging the parties’ confidential
`
`business communications (in Papers 12, 26, and 28, and Exhibits 2002 and 2003)
`
`and Patent Owner’s interest in expunging the confidential information in Exhibits
`
`1089, 1103, 2044, 2092, 2093, 2118, and 2161 “outweigh[s] the public’s interest in
`
`maintaining a complete and understandable file history.” Id. As stated in its Final
`
`Written Decision, the Board did not “identify, nor discuss in detail” the
`
`confidential information when rendering its decision. Paper 72 at 48.
`
`Although the Board’s institution decision discussed Papers 12 and 26, and
`
`Exhibits 2002 and 2003, the analysis did not concern the patentability of the
`
`challenged claims, but the identification of real parties-in-interest. See Google
`
`LLC v. Seven Networks, LLC, IPR2018-01048, Paper 38 at 3 (P.T.A.B. Mar. 29,
`
`2019) (finding good cause exists to expunge confidential versions of papers,
`
`exhibits, and the institution decision that concern real party-in-interest and privity
`
`issues, but are not relevant to the merits of the case); Jiawei Tech. Ltd. v.
`
`Richmond, IPR2014-00935, Paper 71 at 3 (P.T.A.B. Jul. 23, 2018) (finding that
`
`“consideration of the [subject exhibits] was not necessary for the panel’s
`
`determination of whether the challenged claims of the challenged patent were
`
`
`
`5
`
`
`
`Case: IPR2016-01582
`U.S. Patent No. 8,822,438
`
`shown to be unpatentable, but rather only to [the Board’s] determination of
`
`whether [petitioner] had properly identified all real parties in interest”).
`
`The public, therefore, has access to all the materials relevant to the merits of
`
`this proceeding, either through publicly filed papers and exhibits or through
`
`redacted, public versions of Paper 12 (Paper 13), Paper 26 (Paper 27), Paper 28
`
`(Paper 29), Exhibit 2002 (Exhibit 2005), Exhibit 2003 (Exhibit 2004), Exhibit
`
`2044 (Declaration of Christopher A. Vellturo, Ph.D. - Exhibit 2115), Exhibit 2161
`
`(Deposition transcript of Paul A. Godley, M.D., Ph.D., MPP - Exhibit 2162),
`
`Exhibit 1089 (Deposition Transcript of Richard J. Auchus, M.D., Ph.D. - Exhibit
`
`1121), and Exhibit 1103 (Reply Declaration of Robert B. Stoner, Ph.D. - Exhibit
`
`1122). Given the confidential nature of the information in Papers 12, 26, and 28, as
`
`well as Exhibits 1089, 1103, 2002, 2003, 2044, 2092, 2093, 2118, and 2161, good
`
`cause exists for the Board to expunge these papers and exhibits pursuant to 37
`
`C.F.R. § 42.56.
`
`V. CONCLUSION
`
`For the reasons set forth above, Patent Owner requests that the Board grant
`
`this motion and expunge Paper Nos. 12, 26, and 28, as well as Exhibits 1089, 1103,
`
`2002, 2003, 2044, 2092, 2093, 2118 and 2161 from the record.
`
`
`
`
`
`
`
`6
`
`
`
`Case: IPR2016-01582
`U.S. Patent No. 8,822,438
`
`July 16, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`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
`
`
`
`
`
`
`
`
`
`7
`
`
`
`Case: IPR2016-01582
`U.S. Patent No. 8,822,438
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Motion to Expunge Under 37 C.F.R. § 42.56 was served on counsel of
`
`record on July 16, 2019 by filing this document through the End-to-End System, as
`
`well as delivering a copy via electronic mail to counsel of record for the Petitioner
`
`and Patent Co-Owner at the following addresses:
`
`Dennies Varughese – dvarughe-PTAB@skgf.com
`Deborah A. Sterling – dsterlin-PTAB@skgf.com
`Lestin L. Kenton Jr. – lkenton-PTAB@skgf.com
`Ralph W. Powers III – tpowers-PTAB@skgf.com
`
`Anthony C. Tridico – anthony.tridico@finnegan.com
`Jennifer H. Roscetti – jennifer.roscetti@finnegan.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`(Reg. No. 28,598)
`
`Counsel for Patent Owner
`Janssen Oncology, Inc.
`
`8
`
`July 16, 2019
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
