`
`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
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`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
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`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`
`Cases IPR2016-01694
`Patent 6,407,213
`____________________________________________
`
`PATENT OWNER’S MOTION TO SEAL
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`
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`STATEMENT OF PRECISE RELIEF REQUESTED
`
`IPR2016-01694
`Patent Owner’s Motion to Seal
`
`
`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner Genentech, Inc.
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`respectfully requests that the Board seal Exhibits 2001 (Notebook 10098 (Leonard
`
`Presta)), 2002 (Notebook 10823 (Leonard Presta)), 2003 (Notebook 11268 (Paul
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`Carter)), 2004 (Notebook 11643 (Paul Carter)), 2005 (Notebook 10840 (John
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`Brady)), 2006 (Notebook 11162 (John Brady)), 2007 (Excerpts from Notebook
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`11008 (Ann Rowland)), 2008 (Excerpts from Notebook 11297 (Tim Hotaling)),
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`2009 (Excerpts from Notebook 11568 (Monique Carver)), 2010 (Interoffice
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`Memorandum from Paul Carter to Leonard Presta and Dennis Henner dated Mar.
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`8, 1990), 2011 (Interoffice Memorandum from Paul Carter to Leonard Presta dated
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`Apr. 20, 1990), 2012 (Synthetic DNA Requests dated Mar. 9, 1990), 2013
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`(Synthetic DNA Requests dated Apr. 3, 1990), 2014 (Protein Engineering of 4D5:
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`Status 5/14/90), 2015 (RCC Meeting Minutes dated Aug. 8, 1990), 2018
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`(Declaration of John Ridgway Brady), 2029 (Declaration of Dr. Leonard G.
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`Presta), and 2030 (Declaration of Dr. Paul J. Carter).
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`REASONS FOR RELIEF REQUESTED
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`
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`Although “the default rule is that all papers filed in an inter partes review
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`are open and available for access by the public,” a party may file a motion with the
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`Board to seal confidential information that is protected from disclosure. Garmin v.
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`Cuozzo, IPR2012-00001, Paper No. 36. “The standard for granting a motion to
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`
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`1
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`
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`seal is ‘for good cause.’” Id. (quoting 37 C.F.R § 42.54). The Office Patent Trial
`
`IPR2016-01694
`Patent Owner’s Motion to Seal
`
`
`Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), states that the “rules
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`identify confidential information in a manner consistent with Federal Rule of Civil
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`Procedure (“FRCP”) 26(c)(1)(G), which provides for protective orders for trade
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`secret or other confidential research, development, or commercial information.”
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`The parties have conferred and agreed to the provisions of the Modified
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`Default Standing Protective Order set forth in Exhibit 2031, and have stipulated to
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`be bound to the terms set forth therein. Exhibit 2017 shows the proposed
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`modifications from the Default Standing Protective Order, to which the parties
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`have stipulated, in redline.1 The Modified Default Standing Protective Order
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`provides:
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`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
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`1 In IPR2015-01624, to which Genentech Inc. was a party, the parties stipulated to
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`an identical modified default standing protective order, and Patent Owners filed the
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`modified protective order on the record concurrently with a Motion to Seal. See
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`IPR2015-01624, Paper No. 28, Exhibits 2137-38. The proceeding was terminated
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`before the Board ruled on the Motion to Seal or the proposed modified default
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`standing protective order.
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`
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`2
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`
`
`IPR2016-01694
`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
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`Certification of Agreement to Terms, at 3.)
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`Exhibits 2001-2009 are laboratory notebooks authored by several Genentech
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`scientists. Exhibits 2001-2009 contain information pertaining to each scientist’s
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`work product during the course of his or her employment at Genentech, and are
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`therefore “confidential research [and] development . . . information” pursuant to
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`FRCP 26(c)(1)(G).
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`Exhibits 2010-2015 are internal communications within Genentech
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`pertaining to confidential research and development activities being conducted by
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`scientists at Genentech, and are therefore “confidential research [and] development
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`. . . information” pursuant to FRCP 26(c)(1)(G). Furthermore, Exhibit 2015 was
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`marked “CONFIDENTIAL” internally by Genentech.
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`
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`3
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`
`
`IPR2016-01694
`Patent Owner’s Motion to Seal
`
`Exhibits 2018, 2029, and 2030 are declarations by three Genentech scientists
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`pertaining to confidential research and development activities related to the
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`invention described and claimed in U.S. Patent No. 6,407,213. The redacted
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`portions of Exhibits 2018, 2029, and 2030 contain “confidential research [and]
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`development . . . information” pursuant to FRCP 26(c)(1)(G).
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`Patent Owner therefore respectfully requests that the aforementioned
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`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.
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`Dated: December 16, 2016
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`4