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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
`ELI LILLY AND COMPANY,
`Petitioner,
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`v.
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`TEVA PHARMACEUTICALS INTERNATIONAL GMBH,
`Patent Owner.
`______________________
`CASE IPR2018-01423
`Patent 9,266,951
`______________________
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`PATENT OWNER'S MOTION TO EXPUNGE
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`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`Introduction
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`Case IPR2018-01423
`Patent 9,266,951
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`Patent Owner Teva Pharmaceuticals International GmbH respectfully
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`submits this Motion to Expunge the confidential version of Exhibit 2257 from the
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`record, per 37 C.F.R. § 42.56. The confidential version of Exhibit 2257 contains
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`information relating to highly-confidential and competitively-sensitive business
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`information that the Board did not rely on it in its Final Written Decision. Further,
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`the public's interests are served by the redacted version of Exhibit 2257. Thus,
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`Petitioner’s interests in expunging the confidential version of Exhibit 2257
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`outweighs the public’s interest in maintaining it in the record. Patent Owner
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`certifies that the parties have conferred in good faith regarding this motion, and
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`that Petitioner has indicated that it will not oppose this motion.
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`II. Authorization for the motion
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`The Board authorized this motion in the Decision Granting Patent Owner’s
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`Combined Unopposed Motions (1) for Entry of Modified Protective Order and (2)
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`to Seal Exhibit 2257, dated October 15, 2019. Paper 46, 6.
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`III. Procedural Background
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`On July 1, 2019, Patent Owner filed a Combined Motion for Entry of
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`Modified Protective Order and Motion to Seal Exhibit 2257 (Paper 28; “Combined
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`Motion”). The Board granted Patent Owner’s Combined Motion on October 15,
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`Case IPR2018-01423
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`Patent 9,266,951
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`2019. Paper 46. The Board entered its Final Written Decision in this proceeding on
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`February 18, 2020. Paper 77. In the Final Written Decision, the Board expressly
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`stated that it did not rely upon any of the redacted confidential information in
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`reaching its decision:
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`We granted Patent Owner’s Motion to Seal with respect
`to Exhibit 2257. See Paper 48. The record contains both a
`confidential version and a public, redacted version of
`Exhibit 2257. Citations herein are to the public version of
`the document. We do not rely on any of the redacted
`information for purposes of this Final Written Decision.
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`Paper 77, 138, n.113.
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`The confidential version of Exhibit 2257 currently remains under seal and
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`subject to the modified protective order in this proceeding.
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`IV. Argument
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`37 C.F.R. § 42.56 provides: "[a]fter denial of a petition to institute a trial or
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`after final judgment in a trial, a party may file a motion to expunge confidential
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`information from the record." The Board has previously explained that a party
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`moving to expunge has to show that i) "any information sought to be expunged
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`constitutes confidential information" and ii) the movant's interest in expunging the
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`information "outweighs the public's interest in maintaining a complete and
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`Case IPR2018-01423
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`Patent 9,266,951
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`understandable file history." RPX Corp. v. Virnetx Inc., IPR2014-00171, Paper 62,
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`3 (P.T.A.B. Sept. 9, 2014). The rules identify confidential information as including
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`"a trade secret or other confidential research, development, or commercial
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`information." 37 C.F.R. §§ 42.54(a)(7) and 42.2. And the Board must strike "a
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`balance between the public's interest in maintaining a complete and understandable
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`file history and the parties' interest in protecting truly sensitive information." 37
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`C.F.R. § 42.54(a); 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
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`In this case, Patent Owner has already demonstrated, and the Board already
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`agreed, that the confidential version of Exhibit 2257 contains highly-confidential,
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`competitively-sensitive business information. Paper 46, 4-5. Broadly, the
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`confidential version of Exhibit 2257 contains information about settlement and
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`license terms between Teva and a third party, Alder Bio, which are of the nature
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`contemplated as protectable under Fed. R. Civ. P. 26(c)(1)(G). Therefore, public
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`disclosure of the confidential version of Exhibit 2257 would cause significant
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`competitive harm not only to Patent Owner, but also to a third party who is not part
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`of this proceeding. There has been no change in the sensitivity or confidentiality of
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`the information contained in the confidential version of Exhibit 2257 since Teva
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`filed its Combined Motion. Thus, Patent Owner has met its burden in showing that
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`Case IPR2018-01423
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`Patent 9,266,951
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`"any information sought to be expunged constitutes confidential information." RPX
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`Corp. v. Virnetx Inc., IPR2014-00171, Paper 62, 3 (P.T.A.B. Sept. 9, 2014).
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`Patent Owner's interest in expunging the confidential version of Exhibit
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`2257 "outweighs the public's interest in maintaining a complete and understandable
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`file history." Id. None of the redacted portions of the confidential version of
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`Exhibit 2257 are material to this proceeding, as neither party cited to a confidential
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`portion of the confidential version of Exhibit 2257. Further, in the Final Written
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`Decision, the Board expressly stated: "[w]e do not rely on any of the redacted
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`information for purposes of this Final Written Decision." Paper 77, 138. Moreover,
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`the record contains a public redacted version of Exhibit 2257 that contains all the
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`information upon-which the Board did rely. Accordingly, the public's access to the
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`redacted version of Exhibit 2257 fulfills the public's interest in maintaining a
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`complete and understandable record, and the expungement of the confidential
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`version of Exhibit 2257 from the record will not diminish the public's
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`understanding of the Final Written Decision.
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`V. Conclusion
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`Case IPR2018-01423
`Patent 9,266,951
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`For the reasons stated above, Patent Owner respectfully requests that the
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`Board expunge the confidential version of Exhibit 2257.
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` Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` Deborah A. Sterling, Ph.D.
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`Date: April 3, 2020
`1100 New York Avenue, N.W. Registration No. 62,732
`Washington, D.C. 20005-3934 Lead Attorney for Patent Owner
`(202) 371-2600
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the above-captioned “Patent Owner's
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`Motion to Expunge” was served in its entirety on April 3, 2020, upon the following
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`parties via electronic mail:
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`Sanjay M. Jivraj
`Mark J. Stewart
`Eli Lilly and Company
`Lilly Corporate Center Patent Dept.
`Indianapolis, IN 46285
`jivraj_sanjay@lilly.com
`stewart_mark@lilly.com
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`
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`Deborah A. Sterling, Ph.D.
`Registration No. 62,732
`Lead Attorney for Patent Owner
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`
`William B. Raich
`Erin M. Sommers
`Pier D. DeRoo
`Yieyie Yang
`John Williamson
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`william.raich@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`yieyie.yang@finnegan.com
`john.williamson@finnegan.com
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`Date: April 3, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`14821762.1
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