Trials@uspto.gov
`571-272-7822
`
` Paper 46
` Entered: October 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ELI LILLY AND COMPANY
`Petitioner
`
`v.
`
`TEVA PHARMACEUTICALS INTERNATIONAL GMBH
`Patent Owner.
`
`Case IPR2018-01422 (Patent No. 9,340,614)
`Case IPR2018-01423 (Patent No. 9,266,951)
`Case IPR2018-01424 (Patent No. 9,346,881)
`Case IPR2018-01425 (Patent No. 9,890,210)
`Case IPR2018-01426 (Patent No. 9,890,211)
` Case IPR2018-01427 (Patent No. 8,597,649)1
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Combined Unopposed Motions (1) for Entry of
`Modified Protective Order and (2) to Seal Exhibit 2257
`37 C.F.R. § 42.14
`
`1This Order addresses issues that are common to all six cases. We,
`therefore, issue a single Order that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`

`

`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`Inter partes review was instituted in the above-referenced cases on
`
`February 19, 2019 (IPR2018-01422, -01423, -01424) and February 25, 2019
`
`(IPR2018-01425, -01426, -01427). Paper 14.2 Patent Owner filed a
`
`Response (Paper 24) to each Petition, and Petitioner filed a Reply (Paper 39,
`
`“Reply”) to each Response.3
`
`In an e-mail to the Board on June 13, 2019, Patent Owner requested a
`
`conference call with the Board to seek guidance regarding Petitioner’s
`
`objections to a redacted exhibit (Exhibit 2257 filed in all of the above-
`
`referenced cases). Ex. 3001. According to that e-mail, Petitioner objected
`
`to Exhibit 2257 as “improperly filed as redacted without a protective order.”
`
`Id. That e-mail also indicated that the parties had conferred and that
`
`Petitioner opposed Patent Owner’s request for guidance from the Board, and
`
`that Petitioner further opposed the Board performing an in camera review of
`
`an unredacted version of Exhibit 2257 to determine whether the redacted
`
`information is immaterial. Id.
`
`A conference call was held between counsel for the parties and the
`
`Board (Judges Chagnon, Worth, and Smith) on June 19, 2019, to discuss
`
`Patent Owner’s request. See Ex. 2261 (“Tr.”). One of the options for
`
`resolution discussed during the call was an agreed upon, modified protective
`
`order, and the parties agreed to discuss the matter further to determine
`
`whether the issue regarding Exhibit No. 2257 could be resolved. Tr. 18–21.
`
`2
`
`
` Paper numbers in this Order refer to papers filed in IPR2018-01422. A
`redacted version of Exhibit 2257 was filed in each of the above-referenced
`cases on May 31, 2019, and a confidential unredacted version of Exhibit
`2257 was filed in each of the above-referenced cases on July 1, 2019.
`3
` By stipulation of the parties, Patent Owner’s Sur-reply is due October 18,
`2019. Paper 27.
`
`
`
`2
`
`

`

`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`On July 1, 2019, Patent Owner filed a Combined Motion for Entry of
`
`Modified Protective Order and Motion to Seal Exhibit 2257 (Paper 29)
`
`(“Combined Motion”), and an unredacted version of Exhibit 2257. The
`
`Combined Motion states that “[w]hile Petitioner does not concede that the
`
`information redacted in Exhibit 2257 is immaterial, Petitioner has confirmed
`
`that it will not oppose either Motion.” Paper 29, 2.
`
`In an inter partes review, the moving party bears the burden of
`
`showing that the relief requested should be granted. 37 C.F.R. § 42.20(c).
`
`Motion for Entry of Modified Protective Order
`
`The Combined Motion indicates that the proposed protective order
`
`modifies the Board’s Default Protective Order, and attaches both a Modified
`
`Protective Order (Addendum A) and a redline version (Addendum B)
`
`showing the differences between the Modified Protective Order and the
`
`Board’s Default Protective Order.4 According to Patent Owner:
`
`The differences are minimal and relate to: (i) specifying
`Petitioner’s counsel who have access to the to-be-sealed Exhibit
`2257; (ii) limiting use of confidential information to the purposes
`of this proceeding as opposed to other purposes (including
`business or competitive purposes,
`for example); and
`(iii) specifying a timeframe during which those in possession of
`confidential
`information must destroy
`it. These
`limited
`modifications to the Default Protective Order are justified to
`
`
`4 Subsequent to the filing of the Combined Motion, the Board issued the July
`2019 Trial Practice Guide Update (“2019 TPG Update”), that attached a
`revised Default Protective Order as Appendix B. The redline comparison
`provided by Patent Owner is between the Modified Protective Order and the
`Default Protective Order in place prior to the 2019 TPG Update. However,
`the differences between the prior Default Protective Order and the revised
`Default Protective Order attached to the 2019 TPG Update do not appear to
`be materially significant as relates to these cases.
`
`
`
`3
`
`

`

`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`provide clarity to the parties as to treatment of the sealed, highly
`confidential information.
`
`Paper 29, 1.
`
`Patent Owner further states that provisions of the Modified Protective
`
`Order do not conflict with any provision of the Default Protective Order and
`
`do not impact the Board or the public. Id.
`
`Upon review of the proposed Modified Protective Order, and in the
`
`absence of opposition from Petitioner, we find good cause for entry of the
`
`Modified Protective Order.
`
`Motion to Seal Exhibit 2257
`
`A party moving to seal must show “good cause” for the relief
`
`requested. 37 C.F.R. § 42.54(a). The “good cause” standard for
`
`granting a motion to seal reflects the strong public policy towards
`
`making information in an inter partes review open to the public. See
`
`Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053,
`
`Paper 27 at 3 (PTAB Jan. 19, 2018) (informative) (citing Garmin Int’l
`
`v. Cuozzo Speed Techs., LLC, IPR2012-00001, Paper 34 (PTAB
`
`Mar. 14, 2013), and Corning Optical Commc’ns RF, LLC v. PPC
`
`Broadband, Inc., IPR2014-00440, Papers 46, 47, 49 (PTAB Apr. 6,
`
`14, 17, 2015) for guidance on how to establish “good cause.” When
`
`assessing if the good cause standard has been met, we may consider
`
`whether the information at issue is truly confidential, whether harm
`
`would result upon public disclosure, whether there exists a genuine
`
`need to rely in the trial on the specific information sought to be sealed,
`
`and whether the interest in maintaining confidentiality as to the
`
`information outweighs the strong public interest in an open record.
`
`See id. at 4.
`
`
`
`4
`
`

`

`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`Patent Owner argues that good cause exists for sealing Exhibit
`
`2257, and states that Petitioner does not oppose the motion to seal
`
`Exhibit 2257. Paper 29, 4. Patent Owner advances several arguments
`
`in support of its motion to seal Exhibit 2257. Id. at 4–6.
`
`Patent Owner argues that Exhibit 2257 “contains information relating
`
`to highly-confidential business information that is competitively sensitive.”5
`
`Paper 29, 4. According to Patent Owner, Exhibit 2257 contains information
`
`about settlement and license terms between Patent Owner and a third party,
`
`Alder Bio, which is of the nature contemplated as protectable under Fed. R.
`
`Civ. P. 26(c)(1)(G). Id. at 5. Patent Owner thus asserts that public
`
`disclosure would cause significant competitive harm to Patent Owner and a
`
`third party (Alder Bio) that is not part of these proceedings. Id.
`
`Patent Owner also argues that the public interest “is at best slight” and
`
`that “[a] mostly unredacted version of Exhibit 2257 has already been
`
`publicly filed in this case.” Id. Patent Owner asserts that none of its
`
`“arguments cite to or rely upon any of the confidential information that is
`
`redacted from that public document.” Id. at 6.
`
`In balancing the need for protecting the redacted information in
`
`Exhibit 2257 against the public’s interest in maintaining a complete and
`
`understandable file history, we find that good cause exits for sealing the
`
`confidential unredacted version of Exhibit 2257 filed July 1, 2019.
`
`Therefore, Patent Owner’s Motion to Seal is granted.
`
`
`5 Counsel for Patent Owner certifies, on behalf of Patent Owner, that the
`information sought to be sealed has not, to Patent Owner’s knowledge, been
`published or otherwise made public by Patent Owner. Paper 29, 6.
`
`
`
`5
`
`

`

`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`Although we grant the Motion to Seal, we remind the parties of the
`
`public’s interest in maintaining a complete and understandable file history,
`
`and of the general expectation that information will be made public when a
`
`final written decision indicates that the information exists. See Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760–61 (Aug. 14, 2012). We
`
`also note that confidential information subject to a protective order
`
`ordinarily becomes public 45 days after final judgment in a trial. See id. at
`
`48,761. After final judgment, a party may file a motion to expunge
`
`confidential information from the record prior to the information becoming
`
`public.6 See 37 C.F.R. § 42.56.
`
`In consideration of the foregoing, it is hereby:
`
`ORDER
`
`ORDERED that Patent Owner’s Motion for Entry of the Modified
`
`Protective Order (Paper 29, IPR2018-01422, and Paper 28 in each of
`
`IPR2018-01423, IPR2018-01424, IPR2018-01425, IPR2018-01426, and
`
`IPR2018-01427) is GRANTED;
`
`
`
`FURTHER ORDERED that Patent Owner shall file the Modified
`
`Protective Order as a “paper” in each of IPR2018-01422, IPR2018-01423,
`
`IPR2018-01424, IPR2018-01425, IPR2018-01426, and IPR2018-01427,
`
`except that the title of the document shall be changed to PROTECTIVE
`
`ORDER;
`
`
`6 Any confidential documents filed in these proceedings will remain under
`seal at least until the time for filing a notice of appeal has expired or, if an
`appeal is taken, the appeal process has concluded. The records for these
`proceedings will be preserved in their entirety, and the confidential
`documents will not be expunged or made public, during any appeal.
`
`
`
`6
`
`

`

`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`FURTHER ORDERED that the Modified Protective Order shall
`
`govern the conduct of the proceedings unless otherwise modified by the
`
`Board;
`
`FURTHER ORDERED that Patent Owner’s Motion to Seal the
`
`confidential unredacted version of Exhibit 2257 filed July 1, 2019, is hereby
`
`GRANTED in each of IPR2018-01422, IPR2018-01423, IPR2018-01424,
`
`IPR2018-01425, IPR2018-01426, and IPR2018-01427; and
`
`FURTHER ORDERED that the confidential unredacted version of
`
`Exhibit 2257 filed July 1, 2019, shall be maintained under seal pursuant to
`
`this ORDER, in each of IPR2018-01422, IPR2018-01423, IPR2018-01424,
`
`IPR2018-01425, IPR2018-01426, and IPR2018-01427.
`
`
`
`
`
`PETITIONER:
`
`William B. Raich
`Erin M. Sommers
`Pier D. DeRoo
`Yieyie Yang
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`william.raich@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`yieyie.yang@finnegan.com
`
`Sanjay M. Jivraj
`Mark J. Stewart
`ELI LILLY AND COMPANY
`jivraj_sanjay@lilly.com
`stewart_mark@lilly.com
`
`
`
`
`7
`
`

`

`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`PATENT OWNER:
`
`Deborah A. Sterling
`Robert C. Millonig
`Gaby L. Longsworth
`Jeremiah B. Frueauf
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dsterling-ptab@sternekessler.com
`bobm-ptab@sternekessler.com
`glongs-ptab@sternekessler.com
`jfrueauf-ptab@sternekessler.com
`
`
`
`8
`
`