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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 83
`Filed: July 23, 2018
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ACRUX DDS PTY LTD., ACRUX LIMITED, and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioners,
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`v.
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`KAKEN PHARMACEUTICAL CO., LTD. and
`VALEANT PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner.
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`Case: IPR2017-001901
`U.S. Patent No. 7,214,506
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`PATENT OWNER’S MOTION TO PRESERVE THE RECORD
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`1 Case IPR2017-01429 has been joined with the instant proceeding.
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`TABLE OF CONTENTS
`RELIEF REQUESTED ................................................................................... 1
`I.
`BACKGROUND ............................................................................................. 1
`II.
`III. ARGUMENT ................................................................................................... 4
`IV. CONCLUSION ................................................................................................ 5
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`i
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`C&D Zodiac, Inc. v. B/E Aerospace, Inc.,
`IPR2014-00727, Paper 71 (P.T.A.B. Jan. 5, 2016) .............................................. 5
`Illumina, Inc. v. The Trs. of Columbia Univ. in the City of New York,
`IPR2014-00758, Paper 29 (P.T.A.B. Sept. 30, 2015) ........................................... 5
`Regulations and Statutes
`37 C.F.R. § 42.56 .............................................................................................. 1, 3, 4
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`ii
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`I.
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.56 and the Board’s email authorization dated July
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`20, 2018, Patent Owner Kaken Pharmaceutical Co., Ltd. and Valeant
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`Pharmaceuticals International, Inc. (collectively, “Patent Owner”) respectfully
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`moves the Board to preserve the record for appeal, maintain confidentiality of
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`sealed documents, and to provide Patent Owner with an opportunity to file a
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`motion to expunge sealed confidential information after appeal. Specifically,
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`Patent Owner seeks (i) to preserve and maintain under seal Exhibits 1663, 2093-
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`2095, 2098, and 2099, unredacted versions of Exhibits 1506, 1507, 1511, and
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`2116, and unredacted versions of Papers 52, 64, 69, and 74, and (ii) two weeks to
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`file a motion to expunge after all opportunities for appeal.
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`Patent Owner conferred with Acrux DDS Pty Ltd., Acrux Limited, and
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`Argentum Pharmaceuticals LLC (collectively “Petitioners”), who proposed
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`preservation of the record until completion of any appeal.
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`II. BACKGROUND
`During the course of this inter partes review proceeding, Patent Owner filed
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`three unopposed motions to seal. See Papers 25, 59, 72. Petitioners also filed four
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`unopposed motions to seal. See Papers 36, 50, 62, 77. Both parties additionally
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`requested entry of the Board’s default protective order (see Office Patent Trial
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`1
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`Practice Guide, 77 Fed. Reg. 48,756, 48,771 (Appendix B: Standing Protective
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`Order) (Aug 14, 2012)). See Paper 24 at 1 n.1; Paper 36 at 2.
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`Collectively, the parties’ motions sought to seal, in their entirety, Exhibits
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`1663, 2093-2095, 2098, and 2099. Exhibit 1663 contains confidential sales data
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`that constitute Patent Owner’s confidential commercial and financial information
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`that is not publicly available. See Paper 79 at 6; see also Paper 72 at 3-6; Paper 36
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`at 2; Paper 50 at 2-3. Exhibits 2093-2095, 2098, and 2099 contain select sales and
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`prescription data that constitute Patent Owner’s confidential commercial and
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`financial information that is not publicly available. See Paper 79 at 3 (citing Paper
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`26, 3-5 [sic, Paper 25]); see also Paper 25 at 3-5; Paper 72 at 3-6; Paper 50 at 2-3;
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`Paper 62 at 2-3; Paper 77 at 2.
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`The parties also sought to seal portions of Exhibits 1506, 1507, 1511, and
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`21162 and filed both redacted and unredacted versions of each exhibit. Exhibit
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`1506 is the deposition transcript of patent inventor, Dr. Yoshiyuki Tatsumi.
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`Exhibit 1507 is the deposition transcript of Patent Owner’s expert, Mr. Vince
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`Thomas. Exhibit 1511 is Petitioners’ expert, Mr. John Staines’ rebuttal
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`declaration. Exhibit 2116 is the deposition transcript of Mr. Staines. Designated
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`portions of each of these documents include or refer to exhibits that contain Patent
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`2 Exhibit 2116 (unredacted version) is also referred to as “Exhibit 2116A” in Paper
`72.
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`2
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`Owner’s confidential and proprietary sales and commercial market information.
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`See Paper 79 at 3-6; see also Paper 72 at 3-6; Paper 36 at 3-6; Paper 50 at 2-3;
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`Paper 62 at 2-3.
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`The parties relied on the above-identified confidential information in Papers
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`52, 64, 69, and 74, and accordingly submitted confidential versions, which the
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`parties requested be sealed. See Paper 79 at 3-6; see also Paper 50; Paper 62;
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`Paper 72; Paper 77. Public versions of these papers, respectively Papers 51, 65,
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`70, and 75, were also filed.
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`On June 6, 2018, the Board entered the default protective order. Paper 79.
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`The Board also determined that Patent Owner had shown good cause to seal the
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`confidential information and therefore, granted each of the parties’ motions to seal.
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`Id. The Board further directed the parties that “[i]f any sealed document contains
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`information that is not substantively relied on in the final written decision, the
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`sponsoring party may file a motion to expunge that document from the official
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`record.” Id. at 4, 6 (citing 37 C.F.R. § 42.56). Also, on June 6, 2018, the Board
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`issued its Final Written Decision in this proceeding and did not rely upon any
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`confidential information for which the parties had sealed. Paper 80.
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`In an email dated July 20, 2018, the Board notified the parties that “where
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`confidential information is a part of a trial, parties have sought to preserve the
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`record pending appeal, including all sealed documents to be preserved in non-
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`3
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`public form, and to extend the deadline for filing motions to expunge sealed
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`confidential information. . . .”
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`III. ARGUMENT
`The under-seal documents contain Patent Owner’s confidential commercial
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`and financial information that the Board found good cause to maintain under seal
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`(Paper 79) and that the Board did not cite in its Final Written Decision (Paper 80).
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`The only confidential information sealed in this proceeding belongs to Patent
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`Owner. 3 Thus, Patent Owner has a strong interest in protecting its confidential and
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`proprietary information.
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`Where Patent Owner represents that it will file a notice of appeal, the Board
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`has indicated that a motion to preserve the record pending appeal would be
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`appropriate prior to a motion to expunge following an appeal. Accordingly, in
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`order to preserve the record for appeal and to preserve Patent Owner’s opportunity
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`to expunge confidential information from the record, Patent Owner requests the
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`3 Petitioner Acrux asserted that it has no independent basis for sealing portions of
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`the documents designated in its four motions to seal (Papers 36, 50, 62, 77), but
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`that it relies on Patent Owner’s assertions that information is confidential. See
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`Paper 36 at 3; Paper 50 at 2-3; Paper 62 at 2-3; Paper 77 at 2; see also Paper 79 at
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`4-6.
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`4
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`Board preserve the entire docket and maintain under seal in non-public form all
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`currently sealed documents pending the outcome of all appeals. See, e.g., C&D
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`Zodiac, Inc. v. B/E Aerospace, Inc., IPR2014-00727, Paper 71 (P.T.A.B. Jan. 5,
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`2016); Illumina, Inc. v. The Trs. of Columbia Univ. in the City of New York,
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`IPR2012-00006, Paper 133 (P.T.A.B. Apr. 25, 2014). Specifically, Patent Owner
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`requests the Board preserve under seal Exhibits 1663, 2093-2095, 2098, and 2099
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`and preserve under seal unredacted versions of Exhibits 1506, 1507, 1511, and
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`2116 and Papers 52, 64, 69, and 74.
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`Patent Owner further requests that the Board order a date certain at the
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`conclusion of all appeal proceedings for Patent Owner to file a motion to expunge
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`the confidential information from the record. Specifically, Patent Owner seeks an
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`order that a motion to expunge will be due two weeks following all appeals and
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`opportunities to appeal. See Illumina, IPR2012-00006, Paper 133 at 4.
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`IV. CONCLUSION
`For each of the above-stated reasons, Patent Owner respectfully requests the
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`Board preserve the record of this proceeding for appeal, maintain confidentiality of
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`sealed documents, and provide Patent Owner with two weeks to file a motion to
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`expunge sealed confidential information after all opportunities for appeal.
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`5
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`Dated: July 23, 2018
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`Respectfully submitted,
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`By: /Anthony A. Hartmann/
`Anthony A. Hartmann, Reg. No. 43,662
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`(202) 408-4000
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`Counsel for Patent Owner in
`IPR2017-00190
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`6
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`Case: IPR2017-00190
`U.S. Patent No. 7,214,506
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
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`MOTION TO PRESERVE THE RECORD was served electronically via email
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`on July 23, 2018, in its entirety on the following:
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`E. Anthony Figg
`Aydin H. Harston
`Lisa N. Phillips
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`efigg@rothwellfigg.com
`aharston@rothwellfigg.com
`lphillips@rothwellfigg.com
`litigationparalegals@rothwellfigg.com
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`Teresa Stanek Rea
`Shannon M. Lentz
`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Ave., NW
`Washington, DC 20004-2595
`trea@crowell.com
`slentz@crowell.com
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`Tyler C. Liu
`Argentum Pharmaceuticals, LLC
`tliu@agpharm.com
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`By: /Anthony A. Hartmann/
`Anthony A. Hartmann
`Reg. No. 43,662
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