`
`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 IPR2018-01427
`Patent 8,597,649
`______________________
`
`
`PATENT OWNER'S MOTION TO EXPUNGE
`
`
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`Introduction
`
`
`
`
`Case IPR2018-01427
`Patent 8,597,649
`
`Patent Owner Teva Pharmaceuticals International GmbH respectfully
`
`submits this Motion to Expunge the confidential version of Exhibit 2257 from the
`
`record, per 37 C.F.R. § 42.56. The confidential version of Exhibit 2257 contains
`
`information relating to highly-confidential and competitively-sensitive business
`
`information that the Board did not rely on it in its Final Written Decision. Further,
`
`the public's interests are served by the redacted version of Exhibit 2257. Thus,
`
`Petitioner’s interests in expunging the confidential version of Exhibit 2257
`
`outweighs the public’s interest in maintaining it in the record. Patent Owner
`
`certifies that the parties have conferred in good faith regarding this motion, and
`
`that Petitioner has indicated that it will not oppose this motion.
`
`II. Authorization for the motion
`
`The Board authorized this motion in the Decision Granting Patent Owner’s
`
`Combined Unopposed Motions (1) for Entry of Modified Protective Order and (2)
`
`to Seal Exhibit 2257, dated October 15, 2019. Paper 46, 6.
`
`III. Procedural Background
`
`On July 1, 2019, Patent Owner filed a Combined Motion for Entry of
`
`Modified Protective Order and Motion to Seal Exhibit 2257 (Paper 28; “Combined
`
`Motion”). The Board granted Patent Owner’s Combined Motion on October 15,
`- 1 -
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`
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`
`
`Case IPR2018-01427
`
`
`Patent 8,597,649
`
`
`2019. Paper 46. The Board entered its Final Written Decision in this proceeding on
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`February 18, 2020. Paper 78. In the Final Written Decision, the Board expressly
`
`stated that it did not rely upon any of the redacted confidential information in
`
`reaching its decision:
`
`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.
`
`Paper 78, 145, n.114.
`
`The confidential version of Exhibit 2257 currently remains under seal and
`
`subject to the modified protective order in this proceeding.
`
`IV. Argument
`
`37 C.F.R. § 42.56 provides: "[a]fter denial of a petition to institute a trial or
`
`after final judgment in a trial, a party may file a motion to expunge confidential
`
`information from the record." The Board has previously explained that a party
`
`moving to expunge has to show that i) "any information sought to be expunged
`
`constitutes confidential information" and ii) the movant's interest in expunging the
`
`information "outweighs the public's interest in maintaining a complete and
`- 2 -
`
`
`
`
`
`
`Case IPR2018-01427
`
`
`Patent 8,597,649
`
`
`understandable file history." RPX Corp. v. Virnetx Inc., IPR2014-00171, Paper 62,
`
`3 (P.T.A.B. Sept. 9, 2014). The rules identify confidential information as including
`
`"a trade secret or other confidential research, development, or commercial
`
`information." 37 C.F.R. §§ 42.54(a)(7) and 42.2. And the Board must strike "a
`
`balance between the public's interest in maintaining a complete and understandable
`
`file history and the parties' interest in protecting truly sensitive information." 37
`
`C.F.R. § 42.54(a); 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
`
`In this case, Patent Owner has already demonstrated, and the Board already
`
`agreed, that the confidential version of Exhibit 2257 contains highly-confidential,
`
`competitively-sensitive business information. Paper 46, 4-5. Broadly, the
`
`confidential version of Exhibit 2257 contains information about settlement and
`
`license terms between Teva and a third party, Alder Bio, which are of the nature
`
`contemplated as protectable under Fed. R. Civ. P. 26(c)(1)(G). Therefore, public
`
`disclosure of the confidential version of Exhibit 2257 would cause significant
`
`competitive harm not only to Patent Owner, but also to a third party who is not part
`
`of this proceeding. There has been no change in the sensitivity or confidentiality of
`
`the information contained in the confidential version of Exhibit 2257 since Teva
`
`filed its Combined Motion. Thus, Patent Owner has met its burden in showing that
`
`
`
`- 3 -
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`
`
`
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`Case IPR2018-01427
`
`
`Patent 8,597,649
`
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`"any information sought to be expunged constitutes confidential information." RPX
`
`Corp. v. Virnetx Inc., IPR2014-00171, Paper 62, 3 (P.T.A.B. Sept. 9, 2014).
`
`Patent Owner's interest in expunging the confidential version of Exhibit
`
`2257 "outweighs the public's interest in maintaining a complete and understandable
`
`file history." Id. None of the redacted portions of the confidential version of
`
`Exhibit 2257 are material to this proceeding, as neither party cited to a confidential
`
`portion of the confidential version of Exhibit 2257. Further, in the Final Written
`
`Decision, the Board expressly stated: "[w]e do not rely on any of the redacted
`
`information for purposes of this Final Written Decision." Paper 78, 145, n.114.
`
`Moreover, the record contains a public redacted version of Exhibit 2257 that
`
`contains all the information upon-which the Board did rely. Accordingly, the
`
`public's access to the redacted version of Exhibit 2257 fulfills the public's interest
`
`in maintaining a complete and understandable record, and the expungement of the
`
`confidential version of Exhibit 2257 from the record will not diminish the public's
`
`understanding of the Final Written Decision.
`
`
`
`
`
`
`
`- 4 -
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`
`
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`
`
`
`
`V. Conclusion
`
`
`
`
`Case IPR2018-01427
`Patent 8,597,649
`
`For the reasons stated above, Patent Owner respectfully requests that the
`
`Board expunge the confidential version of Exhibit 2257.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
` Deborah A. Sterling, Ph.D.
`
`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
`
`
`
`- 5 -
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`
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`
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the above-captioned “Patent Owner's
`
`Motion to Expunge” was served in its entirety on April 3, 2020, upon the following
`
`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
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`Deborah A. Sterling, Ph.D.
`Registration No. 62,732
`Lead Attorney for Patent Owner
`
`
`parties via electronic mail:
`
`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
`
`
`
`
`
`
`
`
`Date: April 3, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
`
`
`14821840.1
`
`
`
`
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