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`IPR2019-00400
`Patent 8,633,194
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APOTEX INC.
`Petitioner,
`
`v.
`
`UCB BIOPHARMA SPRL,
`Patent Owner.
`______________
`
`Case IPR2019-00400
`Patent 8,633,194
`______________
`
`
`PATENT OWNER’S MOTION TO SEAL AND FOR ENTRY OF A
`PROTECTIVE ORDER PURSUANT TO 37 C.F.R. § 42.54
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`
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`
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`IPR2019-00400
`Patent 8,633,194
`Patent Owner UCB Biopharma Sprl hereby moves for entry of the Protective
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`
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`Order appended as Addendum A and further moves to seal Exhibit 3005, which
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`contains Patent Owner’s confidential information. Patent Owner has concurrently
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`with this motion filed a redacted, non-confidential version of Exhibit 3005
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`(EX2008), which Patent Owner consents may be made available on the public
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`docket.
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`Patent Owner and Petitioner have discussed this Motion, and Petitioner does
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`not oppose this Motion.
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`I. MOTION TO SEAL
`Patent Owner moves to seal Exhibit 3005. Exhibit 3005 is an email sent on
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`July 24, 2019 by counsel for Patent Owner, Robert Counihan, to the Board providing
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`certain information requested by the Board in its July 15, 2019 Decision on
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`Institution of Inter Partes Review of U.S. Patent No. 8,633,194 B2 (IPR2019-00400,
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`Paper 17). In particular, Exhibit 3005 discloses the nature of the relationship
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`between Patent Owner and Sanofi-Aventis with respect to the patent subject to this
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`proceeding and the product Xyzal 24HR®. As reflected in the redacted version of
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`Exhibit 3005 that Patent Owner has provided with this Motion, Patent Owner
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`respectfully requests that only the portion of Exhibit 3005 that addresses this
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`relationship be maintained under seal.
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`The standard for granting a motion to seal is “for good cause.” 37 C.F.R.
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`
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`
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`IPR2019-00400
`Patent 8,633,194
`§ 42.54. Good cause exists here because the nature of the relationship between
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`
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`Patent Owner and Sanofi-Aventis is competitively-sensitive, non-public, business
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`information that is itself subject to confidentiality obligations between Patent Owner
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`and Sanofi-Aventis. See, e.g. Westinghouse Air Brake Techs. Corp. v. Siemens
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`Mobility, Inc., IPR2017-01669, Paper 60 (PTAB Jan. 8, 2019) (granting motion to
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`seal similar information). Moreover, the strong public policy for making all
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`information filed in inter partes review proceedings available to the public should
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`not apply here because the information that Patent Owner requests to keep
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`confidential does not relate to the patentability of claims in an issued patent or
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`otherwise affect the rights of the public.
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`II. MOTION FOR ENTRY OF A PROTECTIVE ORDER
`Pursuant to 37 CFR § 42.54(a), a motion to seal must be accompanied by a
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`proposed protective order and a certification that the parties have met-and-conferred
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`regarding the issue. On July 29, 2019, Patent Owner emailed counsel for Petitioner
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`to notify Petitioner of Patent Owner’s intent to file the present motion and propose
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`that the parties adopt the Board’s default protective order, which is appended as
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`Addendum A. Petitioner had no objections to the requests made in this motion.
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`Patent Owner respectfully requests that the Board’s default protective order be
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`entered in this proceeding.
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`-2-
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`IPR2019-00400
`Patent 8,633,194
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`III. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`grant this motion to seal and entry of a protective order.
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`
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`Dated: July 30, 2019
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`
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`Respectfully submitted,
`
`/s/ James S. Trainor (Electronically signed)
`James S. Trainor, Reg. No. 52,297
`Lead Counsel
`
`Robert E. Counihan, Reg. No. 61,382
`Back-Up Counsel
`
`Fenwick & West LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 430-2600
`jtrainor@fenwick.com
`rcounihan@fenwick.com
`
`Erica R. Sutter, Reg. No. 77,450
`801 California Street
`Mountain View, CA 94041
`(650) 988-8500
`esutter@fenwick.com
`
`
`Counsel for Patent Owner UCB Biopharma
`Sprl
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`
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`-3-
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`IPR2019-00400
`Patent 8,633,194
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on July 30, 2019, the
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`foregoing document is being served by filing this document through the Patent Trial
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`and Appeal Board End to End System, as well as by delivering a copy via electronic
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`mail upon the following counsel of record for the Petitioner:
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`
`
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`
`
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`joe.janusz@kattenlaw.com
`lance.soderstrom@kattenlaw.com
`
`
`Date: July 30, 2019
`
`
`Respectfully submitted,
`
`/s/ James S. Trainor (Electronically signed)
`James S. Trainor
`Reg. No. 52,297
`Phone: (212) 921-2001
`
`-4-
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`
`
`
`
`ADDENDUM A
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`IPR2019-00400
`Patent 8,633,194
`
`Standing Protective Order
`This standing protective order governs the treatment and filing of confidential
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`information, including documents and testimony.
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`1.
`
`Confidential information shall be clearly marked “PROTECTIVE ORDER
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`MATERIAL.”
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`2.
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`Access to confidential information is limited to the following individuals
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`who have executed the acknowledgment appended to this order:
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`(A) Parties. Persons who are owners of a patent involved in the
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`proceeding and other persons who are named parties to the proceeding.
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`(B) Party Representatives. Representatives of record for a party in the
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`proceeding.
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`(C) Experts. Retained experts of a party in the proceeding who further
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`certify in the Acknowledgement that they are not a competitor to any party, or a
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`consultant for, or employed by, such a competitor with respect to the subject matter of
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`the proceeding.
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`(D)
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`In-house counsel. In-house counsel of a party.
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`(E) Other Employees of a Party. Employees, consultants, or other
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`persons performing work for a party, other than in-house counsel and in-house counsel’s
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`support staff, who sign the Acknowledgement shall be extended access to confidential
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`information only upon agreement of the parties or by order of the Board upon a motion
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`-5-
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`
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`IPR2019-00400
`Patent 8,633,194
`brought by the party seeking to disclose confidential information to that person. The
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`
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`party opposing disclosure to that person shall have the burden of proving that such
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`person should be restricted from access to confidential information.
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`(F) The Office. Employees and representatives of the Office who have a
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`need for access to the confidential information shall have such access without the
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`requirement to sign an Acknowledgement. Such employees and representatives shall
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`include the Director, members of the Board and their clerical staff, other support
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`personnel, court reporters, and other persons acting on behalf of the Office.
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`(G) Support Personnel. Administrative assistants, clerical staff, court
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`reporters and other support personnel of the foregoing persons who are reasonably
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`necessary to assist those persons in the proceeding shall not be required to sign an
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`Acknowledgement, but shall be informed of the terms and requirements of the Protective
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`Order by the person they are supporting who receives confidential information.
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`3.
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`Persons receiving confidential information shall use reasonable efforts to
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`maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which
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`persons not authorized to receive the information shall not have access;
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`(B) Otherwise using reasonable efforts to maintain the confidentiality
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`of the information, which efforts shall be no less rigorous than those the recipient
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`uses to maintain the confidentiality of information not received from the disclosing
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`party;
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`-6-
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`IPR2019-00400
`Patent 8,633,194
`(C) Ensuring that support personnel of the recipient who have access
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`
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`to the confidential information understand and abide by the obligation to maintain the
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`confidentiality of information received that is designated as confidential; and
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`(D) Limiting the copying of confidential information to a reasonable
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`number of copies needed for conduct of the proceeding and maintaining a record of
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`the locations of such copies.
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`4.
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`Persons receiving confidential information shall use the following
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`procedures to maintain the confidentiality of the information:
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`(A) Documents and Information Filed With the Board.
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`(i) A party may file documents or information with the Board
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`under seal, together with a non-confidential description of the nature of the confidential
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`information that is under seal and the reasons why the information is confidential and
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`should not be made available to the public. The submission shall be treated as
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`confidential and remain under seal, unless, upon motion of a party and after a hearing on
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`the issue, or sua sponte, the Board determines that the documents or information do not
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`qualify for confidential treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the
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`information submitted to the Board, the submitting party shall file confidential and non-
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`confidential versions of its submission, together with a Motion to Seal the confidential
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`version setting forth the reasons why the information redacted from the non-confidential
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`version is confidential and should not be made available to the public. The non-
`-7-
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`IPR2019-00400
`Patent 8,633,194
`confidential version of the submission shall clearly indicate the locations of information
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`
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`that has been redacted. The confidential version of the submission shall be filed under
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`seal. The redacted information shall remain under seal unless, upon motion of a party
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`and after a hearing on the issue, or sua sponte, the Board determines that some or all of
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`the redacted information does not qualify for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties.
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`Information designated as confidential that is disclosed to another party during
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`discovery or other proceedings before the Board shall be clearly marked as
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`“PROTECTIVE ORDER MATERIAL” and shall be produced in a manner that
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`maintains its confidentiality.
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`Standard Acknowledgement of Protective Order. The following form may be
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`used to acknowledge a protective order and gain access to information covered by the
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`protective order.
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`-8-
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`IPR2019-00400
`Patent 8,633,194
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APOTEX INC.
`Petitioner,
`
`v.
`
`UCB BIOPHARMA SPRL,
`Patent Owner.
`______________
`
`Case IPR2019-00400
`Patent 8,633,194
`______________
`
`
`Standard Acknowledgement for Access to Protective Order Material
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`-9-
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`
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`IPR2019-00400
`Patent 8,633,194
`Standard Acknowledgment for Access to Protective Order Material
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`
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`I
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`, affirm that I have
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`read the Protective Order; that I will abide by its terms; that I will use the confidential
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`information only in connection with this proceeding and for no other purpose; that I
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`will only allow access to support staff who are reasonably necessary to assist me in
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`this proceeding; that prior to any disclosure to such support staff I informed or will
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`inform them of the requirements of the Protective Order; that I am personally
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`responsible for the requirements of the terms of the Protective Order and I agree to
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`submit to the jurisdiction of the Office and the United States District Court for the
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`Eastern District of Virginia for purposes of enforcing the terms of the Protective
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`Order and providing remedies for its breach.
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`[Signature]
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`-10-
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