`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`ELI LILLY AND COMPANY,
`Petitioner,
`
`v.
`
`TEVA PHARMACEUTICALS INTERNATIONAL GMBH,
`Patent Owner.
`______________________
`
`CASE IPR2018-01711
`Patent 9,884,907
`______________________
`
`
`
`PATENT OWNER'S MOTION TO EXPUNGE
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`
`
`
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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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`
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`
`
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`
`
`I.
`
`Introduction
`
`
`
`
`Case IPR2018-01711
`Patent No. 9,884,907
`
`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
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`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
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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 Order 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 28, 2019. Paper 39, 5.
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`III. Procedural Background
`
`On July 3, 2019, Patent Owner filed a Combined Motion for Entry of
`
`Modified Protective Order and Motion to Seal Exhibit 2257 (Paper 22; “Combined
`
`Motion”). The Board granted Patent Owner’s Combined Motion on October 28,
`- 1 -
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`
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`
`
`Case IPR2018-01711
`
`
`Patent No. 9,884,907
`
`
`2019. Paper 39. Neither Petitioner nor Patent Owner cited to the confidential
`
`version of Exhibit 2257. The Board entered its Final Written Decision in this
`
`proceeding on March 31, 2020. Paper 69. The Board did not cite or discuss Exhibit
`
`2257 in that Decision.
`
`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
`
`understandable file history." RPX Corp. v. Virnetx Inc., IPR 2014-00171, Paper 62
`
`at 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
`
`
`
`- 2 -
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`
`
`
`
`Case IPR2018-01711
`
`
`Patent No. 9,884,907
`
`
`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
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`information. Paper 39, 3-5. Broadly,
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`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
`
`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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`"any information sought to be expunged constitutes confidential information." RPX
`
`Corp. v. Virnetx Inc., IPR 2014-00171, Paper 62 at 3 (P.T.A.B. Sept. 9, 2014).
`
`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
`
`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
`- 3 -
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`
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`
`
`Case IPR2018-01711
`
`
`Patent No. 9,884,907
`
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`portion of the confidential version of Exhibit 2257. Further, he Board's Final
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`Written Decision did not cite or discuss Exhibit 2257. Moreover, the record
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`contains a public redacted version of Exhibit 2257 that contains all the information
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`upon-which the Parties did rely. Accordingly, the public's access to the redacted
`
`version of Exhibit 2257 fulfills the public's interest in maintaining a complete and
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`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.
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`V. Conclusion
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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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`
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`
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`
`
`
`
`
` Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
` Deborah A. Sterling, Ph.D.
`
`Date: May 15, 2020
`1100 New York Avenue, N.W. Registration No. 62,732
`Washington, D.C. 20005-3934 Lead Attorney for Patent Owner
`(202) 371-2600
`15004501
`
`
`
`- 4 -
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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
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`Motion to Expunge” was served in its entirety on May 15, 2020, upon the
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`following parties via electronic mail:
`
`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
`
`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
`
`
`
`
`
`
`
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`Deborah A. Sterling, Ph.D.
`Registration No. 62,732
`Lead Attorney for Patent Owner
`
`
`
`
`Date: May 15, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
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