Filed on behalf of Patent Owner Genentech, Inc. by:
`
`David L. Cavanaugh
`Reg. No. 36,476
`Owen K. Allen
`Reg. No. 71,118
`Robert J. Gunther, Jr.
`Pro Hac Vice to be filed
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`
`Adam R. Brausa
`Reg. No. 60,287
`Daralyn J. Durie
`Pro Hac Vice to be filed
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`
`Cases IPR2016-01693
`Patent 6,407,213
`____________________________________________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`
`
`
`David L. Cavanaugh
`Reg. No. 36,476
`Owen K. Allen
`Reg. No. 71,118
`Robert J. Gunther, Jr.
`Pro Hac Vice to be filed
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`
`Adam R. Brausa
`Reg. No. 60,287
`Daralyn J. Durie
`Pro Hac Vice to be filed
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`
`Cases IPR2016-01693
`Patent 6,407,213
`____________________________________________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`
`
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`IPR2016-01693
`Patent Owner’s Motion to Seal
`
`
`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner Genentech, Inc.
`
`respectfully requests that the Board seal Exhibits 2001 (Notebook 10098 (Leonard
`
`Presta)), 2002 (Notebook 10823 (Leonard Presta)), 2003 (Notebook 11268 (Paul
`
`Carter)), 2004 (Notebook 11643 (Paul Carter)), 2005 (Notebook 10840 (John
`
`Brady)), 2006 (Notebook 11162 (John Brady)), 2007 (Excerpts from Notebook
`
`11008 (Ann Rowland)), 2008 (Excerpts from Notebook 11297 (Tim Hotaling)),
`
`2009 (Excerpts from Notebook 11568 (Monique Carver)), 2010 (Interoffice
`
`Memorandum from Paul Carter to Leonard Presta and Dennis Henner dated Mar.
`
`8, 1990), 2011 (Interoffice Memorandum from Paul Carter to Leonard Presta dated
`
`Apr. 20, 1990), 2012 (Synthetic DNA Requests dated Mar. 9, 1990), 2013
`
`(Synthetic DNA Requests dated Apr. 3, 1990), 2014 (Protein Engineering of 4D5:
`
`Status 5/14/90), 2015 (RCC Meeting Minutes dated Aug. 8, 1990), 2018
`
`(Declaration of John Ridgway Brady), 2029 (Declaration of Dr. Leonard G.
`
`Presta), and 2030 (Declaration of Dr. Paul J. Carter).
`
`REASONS FOR RELIEF REQUESTED
`
`
`
`Although “the default rule is that all papers filed in an inter partes review
`
`are open and available for access by the public,” a party may file a motion with the
`
`Board to seal confidential information that is protected from disclosure. Garmin v.
`
`Cuozzo, IPR2012-00001, Paper No. 36. “The standard for granting a motion to
`
`
`
`1
`
`
`
`seal is ‘for good cause.’” Id. (quoting 37 C.F.R § 42.54). The Office Patent Trial
`
`IPR2016-01693
`Patent Owner’s Motion to Seal
`
`
`Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), states that the “rules
`
`identify confidential information in a manner consistent with Federal Rule of Civil
`
`Procedure (“FRCP”) 26(c)(1)(G), which provides for protective orders for trade
`
`secret or other confidential research, development, or commercial information.”
`
`The parties have conferred and agreed to the provisions of the Modified
`
`Default Standing Protective Order set forth in Exhibit 2031, and have stipulated to
`
`be bound to the terms set forth therein. Exhibit 2017 shows the proposed
`
`modifications from the Default Standing Protective Order, to which the parties
`
`have stipulated, in redline.1 The Modified Default Standing Protective Order
`
`provides:
`
`Where confidentiality is alleged as to some but not all of the
`information submitted to the Board, the submitting party shall file
`confidential and non-confidential versions of its submission, together
`
`1 In IPR2015-01624, to which Genentech Inc. was a party, the parties stipulated to
`
`an identical modified default standing protective order, and Patent Owners filed the
`
`modified protective order on the record concurrently with a Motion to Seal. See
`
`IPR2015-01624, Paper No. 28, Exhibits 2137-38. The proceeding was terminated
`
`before the Board ruled on the Motion to Seal or the proposed modified default
`
`standing protective order.
`
`
`
`2
`
`
`
`IPR2016-01693
`Patent Owner’s Motion to Seal
`
`
`with a Motion to Seal the confidential version setting forth the reasons
`why the information redacted from the non-confidential version is
`confidential and should not be made available to the public. The
`nonconfidential version of the submission shall clearly indicate the
`locations of information that has been redacted. The confidential
`version of the submission shall be filed under seal. The redacted
`information shall remain under seal unless, upon motion of a party
`and after a hearing on the issue, or sua sponte, the Board determines
`that some or all of the redacted information does not qualify for
`confidential treatment.
`(Ex. 2031, Modified Default Standing Protective Order and Patent Owner’s
`
`Certification of Agreement to Terms, at 3.)
`
`Exhibits 2001-2009 are laboratory notebooks authored by several Genentech
`
`scientists. Exhibits 2001-2009 contain information pertaining to each scientist’s
`
`work product during the course of his or her employment at Genentech, and are
`
`therefore “confidential research [and] development . . . information” pursuant to
`
`FRCP 26(c)(1)(G).
`
`Exhibits 2010-2015 are internal communications within Genentech
`
`pertaining to confidential research and development activities being conducted by
`
`scientists at Genentech, and are therefore “confidential research [and] development
`
`. . . information” pursuant to FRCP 26(c)(1)(G). Furthermore, Exhibit 2015 was
`
`marked “CONFIDENTIAL” internally by Genentech.
`
`
`
`3
`
`
`
`IPR2016-01693
`Patent Owner’s Motion to Seal
`
`Exhibits 2018, 2029, and 2030 are declarations by three Genentech scientists
`
`pertaining to confidential research and development activities related to the
`
`invention described and claimed in U.S. Patent No. 6,407,213. The redacted
`
`portions of Exhibits 2018, 2029, and 2030 contain “confidential research [and]
`
`development . . . information” pursuant to FRCP 26(c)(1)(G).
`
`Patent Owner therefore respectfully requests that the aforementioned
`
`materials remain under seal pursuant to the Proposed Modified Default Standing
`
`Respectfully Submitted,
`
`/David L. Cavanaugh/
`
`David L. Cavanaugh
`Registration No. 36,476
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`1875 Pennsylvania Avenue, N.W.
`Washington, D.C. 20006
`david.cavanaugh@wilmerhale.com
`Tel.: 202-663-6000
`Fax: 202-663-6363
`
`Protective Order.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: December 16, 2016
`
`
`
`4
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