`Tel: 571-272-7822
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`Paper 34
`Entered: May 11, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TARO PHARMACEUTICALS U.S.A., INC.,
`Petitioner,
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`v.
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`APOTEX TECHNOLOGIES, INC.,
`Patent Owner.
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`Case IPR2017-01446
`Patent 7,049,328 B2
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`Before LORA M. GREEN, JEFFREY N. FREDMAN, and
`ZHENYU YANG, Administrative Patent Judges.
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`FREDMAN, Administrative Patent Judge.
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`DECISION
`Denying Motions to Seal Without Prejudice
`37 C.F.R. § 42.54
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`I.
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`INTRODUCTION
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`With authorization of the Board, Paper 18, Taro Pharmaceuticals
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`U.S.A., Inc. (“Petitioner”) filed a redacted motion for additional discovery
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`relating to Exhibits 1037–1045 and 1047–1049 (Paper 22) along with a
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`Motion to Seal. Paper 21. Apotex Technologies, Inc. (“Patent Owner”)
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`IPR2017-01446
`Patent 7,049,328 B2
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`filed a redacted paper that opposes the Motion (Paper 30), and also filed a
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`Motion to Seal. Paper 31. In the motion, Petitioner explains that these
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`documents were generated during litigation in parallel litigation related to
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`the ’328 patent, ApoPharma Inc. v. Taro Pharmaceutical Industries, Ltd.,
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`No. 2:16-cv-00528, currently pending in the District Court for the Eastern
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`District of Texas – Marshall Division.
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`Patent Owner moves to seal Exhibits 1037–1045 and 1047–1049 on
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`the basis that they “are documents that Patent Owner has designated as
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`Highly Confidential pursuant to the Stipulated Protective Order entered in
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`the concurrent district court case, ApoPharma Inc. v. Taro Pharmaceutical
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`Industries, Ltd., Case No. 2:16-cv-00528 (E.D. Tex.).” Paper 31, 2. See
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`also, Petitioner’s motion to seal. Paper 21, 3. However, neither Patent
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`Owner, the owner of the information sought to be sealed, nor Petitioner,
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`have made any showing to establish that the material sought to be sealed is,
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`in fact, confidential, or to justify that sealing outweighs the public’s interest
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`in an open file history.
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`On that point, the standard for granting a motion to seal in this forum
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`is “good cause,” reflecting the strong public policy for making all
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`information in inter partes review proceedings open to the public. 37 C.F.R.
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`§ 42.54. The moving parties bear the burden of showing that the relief
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`requested should be granted. 37 C.F.R. § 42.20(c). That includes a showing
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`that the information is truly confidential, and that such confidentiality
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`outweighs the strong public interest in having an open record. See Garmin
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`Int’l v. Cuozzo Speed Techs., LLC, Case IPR2012–00001, slip op. at 3
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`(PTAB Mar. 14, 2013) (Paper 36). The stated reason by Patent Owner and
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`Petitioner for sealing—that the documents contain information previously
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`IPR2017-01446
`Patent 7,049,328 B2
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`sealed by a district court (Paper 31, 2–3, Paper 21, 2)—is insufficient, as that
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`fact, by itself, is insufficient to establish good cause as to why the
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`information should be sealed. Accordingly, the Motion is denied.
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`Either party may file a motion to seal Exhibits 1037–1045 and 1047–
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`1049 within ten (10) business days of the entry date of this Order. The
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`parties are directed to provide in their motion a justification sufficient to
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`establish good cause for sealing the exhibit in its entirety. If no timely
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`motion is filed, Exhibits 1037–1045 and 1047–1049 shall be made public.
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`In the interim, those documents, and our concurrently entered Decision
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`Granting Petitioner’s Motion for Additional Discovery, shall be protected
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`according to the terms of the Board’s Default Protective Order.
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`Exhibit 1051 is a joint proposed Protective Order. It is based in
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`substantial part on the default standing protective order in the Office Patent
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`Trial Practice Guide. In light of the parties’ agreement on the scope of the
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`proposed Protective Order and their competitive position (Papers 21, 31), we
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`determine the proposed Protective Order is acceptable, that order shall apply
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`to confidential information filed under seal in this proceeding.
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`II.
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`CONCLUSION
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`For the reasons discussed above, we conclude neither Patent Owner’s
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`nor Petitioner’s Motion to Seal met the requirement of a “good cause”
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`showing that the need for confidentiality outweighs the strong public interest
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`in having the record open to the public.
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`III. ORDER
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`Accordingly, it is:
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`ORDERED that Patent Owner’s and Petitioner’s Motions to Seal and
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`for Entry of Protective Order are denied without prejudice;
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`IPR2017-01446
`Patent 7,049,328 B2
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`FURTHER ORDERED that each party is authorized to file a Second
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`Motion to Seal subject to the conditions set forth in this Order for the
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`purpose of requesting to seal Exhibits 1037–1045 and 1047–1049;
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`FURTHER ORDERED that the Second Motion to Seal is limited to
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`seven (7) pages;
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`FURTHER ORDERED that the Second Motion to Seal shall be filed
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`within ten (10) business days of entry of this Order;
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`FURTHER ORDERED that the Second Motion to Seal shall address
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`the “good cause” standard as explained in this Order;
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`FURTHER ORDERED that the Modified Default Standing Protective
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`Order filed as Exhibit 1051 shall apply to confidential information filed
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`under seal in this proceeding.
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`IPR2017-01446
`Patent 7,049,328 B2
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`PETITIONER:
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`Huiya Wu
`Robert V. Cerwinski (pro hac vice)
`Sara Fink
`GOODWIN PROCTER LLP
`hwu@goodwinlaw.com
`rcerwinski@goodwinlaw.com
`sfink@goodwinlaw.com
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`PATENT OWNER:
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`William Blake Coblentz
`Aaron S. Lukas, Ph. D.
`COZEN O’CONNOR
`WCoblentz@cozen.com
`ALukas@cozen.com
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