From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`McGuffin, Asher S.
`Segrest, Philip; Sportel, Nathan; Howe, Steve; Mizerk, Don; Hitchens, A. Lauren
`WH Merck KGaA Mavenclad ANDA; Whelan, Emily; Geng, Deric; Bassett, David; Ferrera, Vinita; Kan, Cindy
`RE: TWi v. Merck Serono, IPR2023-00049 & -00050: Protective Order
`Friday, March 8, 2024 11:29:59 AM
`IPR2023-00480, Paper 19 (Motion to Seal).pdf
`
`[EXTERNAL EMAIL]
`
`Counsel,
`
`First, thank you for agreeing to use the Board’s default protective order for materials for which
`Patent Owner shows good cause for filing under seal.
`
`Second, Patent Owner anticipates moving to seal the same exhibits it moved to seal in
`Hopewell Pharma Ventures, Inc. v. Merck Serono SA, IPR2023-00480 and -00481:
`The October 2002 Product Development and License Agreement between IVAX, Inc. and
`Ares Trading S.A.;
`An email and attached draft regulatory briefing document that Serono sent to members
`of the IVAX team on December 17, 2003; and
`The written minutes of a meeting between Serono and IVAX on August 27, 2003.
`
`
`Descriptions of the confidential information in each document and explanations of why there
`is good cause to seal each are included in Patent Owner’s motion to seal in IPR2023-00480,
`Paper 19, which is attached for your reference. Please let us know whether TWi opposes
`similar motions to seal these three documents here.
`
`Thanks,
`
`Asher S. McGuffin | WilmerHale
`60 State Street
`Boston, MA 02109 USA
`+1 617 526 6201 (t)
`+1 617 526 5000 (f)
`asher.mcguffin@wilmerhale.com
`
`Please consider the environment before printing this email.
`
`This email message and any attachments are being sent by Wilmer Cutler Pickering Hale and Dorr LLP, are confidential, and may
`be privileged. If you are not the intended recipient, please notify us immediately—by replying to this message or by sending an
`email to postmaster@wilmerhale.com—and destroy all copies of this message and any attachments. Thank you.
`
`For more information about WilmerHale, please visit us at http://www.wilmerhale.com.
`
`From: Segrest, Philip <Philip.Segrest@huschblackwell.com>
`Sent: Tuesday, March 5, 2024 3:27 PM
`
`EXHIBIT 1037
`Petitioner TWi
`IPR2023-00049, -00050
`
`Page 1 of 4
`
`

`

`To: McGuffin, Asher S. <Asher.McGuffin@wilmerhale.com>; Sportel, Nathan
`<Nathan.Sportel@huschblackwell.com>; Howe, Steve <Steve.Howe@huschblackwell.com>; Mizerk,
`Don <Don.Mizerk@huschblackwell.com>; Hitchens, A. Lauren
`<Lauren.Hitchens@huschblackwell.com>
`Cc: WH Merck KGaA Mavenclad ANDA <WHMerckKGaAMavencladANDA@wilmerhale.com>;
`Whelan, Emily <Emily.Whelan@wilmerhale.com>; Geng, Deric <Deric.Geng@wilmerhale.com>;
`Bassett, David <David.Bassett@wilmerhale.com>; Ferrera, Vinita <Vinita.Ferrera@wilmerhale.com>;
`Kan, Cindy <Cindy.Kan@wilmerhale.com>
`Subject: RE: TWi v. Merck Serono, IPR2023-00049 & -00050: Protective Order
`
`EXTERNAL SENDER
`
`
`Counsel,
`
`Patent Owner has not provided sufficient information for Petitioner to agree that good cause exists
`to seal the materials, which have not been identified. Strong public policy favors making information
`filed in an inter partes review open to the public, and the default rule is that the record of an inter
`partes proceeding shall be made available to the public. Argentum Pharms. LLC v. Alcon Rsch., Ltd.,
`Case IPR2017-01053, 2018 WL 495204, at *1–2 (P.T.A.B. Jan. 19, 2018); Corning Optical
`Communications RF, LLC, v. PPC Broadband, Inc., Case IPR2014–00440, 2015 WL 1523712, 2015 WL
`1888338, 2015 WL 1745114 (PTAB April 6, 14, and 17, 2015) (Papers 46, 47, 49); Garmin Int’l v.
`Cuozzo Speed Techs., LLC, Case IPR2012–00001, 2013 WL 8696523, at *1 (PTAB Mar. 14, 2013)
`(Paper 34); 35 U.S.C.A. § 316; 37 C.F.R. § 42.14. A party moving to seal must show “good cause” for
`the relief requested. Argentum, 2018 WL 495204, at *1.
`
`“Good cause” for sealing is established by a “sufficient explanation as to why” the “information
`sought to be sealed is confidential information”; a demonstration that the information is not
`“excessively redacted”; and a showing that, on balance, the strong “public[ ] interest in maintaining a
`complete and understandable record” is outweighed by “the harm to a party, by disclosure of
`information” and “the need of either party to rely specifically on the information at issue.” Id.
`(quoting (Garmin, Paper 34 at 3, 2013 WL 8696523 and Corning, Paper 47 at 2–3, 2015 WL
`1888338). A movant to seal must demonstrate adequately that (1) the information sought to be
`sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a
`genuine need to rely in the trial on the specific information sought to be sealed, and (4), on balance,
`an interest in maintaining confidentiality outweighs the strong public interest in having an open
`record. Id. (quoting Corning, Paper 47 at 2–3, 2015 WL 1888338, Paper 49 at 2, 2015 WL 1745114);
`37 C.F.R. § 42.54(a). To show good cause the movant must (a) identify (i) the information believed to
`be confidential and sought to be sealed and (ii) the need of the party presenting the information to
`rely on the information; (b) explain (i) what adverse consequences and harm would result from
`public disclosure of each item of information sought to be sealed, and (ii) why the party presenting
`the item of information must rely, specifically, on the subject information; and (c) balance all three
`of (i) the public’s interest in maintaining a complete and understandable record, (ii) the harm to a
`party, by disclosure of information, and (iii) the need of either party to rely specifically on the
`information at issue. Corning, Paper 47 at 2–3, 2015 WL 1888338.
`
`EXHIBIT 1037
`Petitioner TWi
`IPR2023-00049, -00050
`
`Page 2 of 4
`
`

`

`
`Patent Owner has not identified the documents it will ask to be sealed. It has not identified its need
`to rely on the information. It has not shown that the information sought to be sealed is truly
`confidential. It has not indicated what information should be redacted and what can be filed in a
`public copy. It has not explained what adverse consequences and concrete harm would result from
`public disclosure of each item of information sought to be sealed. It has also not shown that on
`balance an interest in maintaining confidentiality outweighs the strong public interest in having an
`open record.
`
`Petitioner therefore does not agree to the filing of the unidentified information under seal. If Patent
`Owner sufficiently shows good cause for filing materials under seal, Petitioner does not object to use
`of the Default Protective Order from the Consolidated Trial Practice Guide, Appendix B. We note
`that the attachment to your email includes Protective Order Guidelines from pages 107–116 in
`addition to the template for the Default Protective Oder from pages 117–122, and is not formatted
`for entry in these specific proceedings.
`
`Philip D. Segrest, Jr.​​​​
`(he/him/his)
`Partner
`Direct: 312-526-1548
`Mobile: (312) 805‑0314
`Philip.Segrest@huschblackwell.com
`
`
`From: McGuffin, Asher S. <Asher.McGuffin@wilmerhale.com>
`Sent: Thursday, February 29, 2024 2:27 PM
`To: Segrest, Philip <Philip.Segrest@huschblackwell.com>; Sportel, Nathan
`<Nathan.Sportel@huschblackwell.com>; Howe, Steve <Steve.Howe@huschblackwell.com>; Mizerk,
`Don <Don.Mizerk@huschblackwell.com>; Hitchens, A. Lauren
`<Lauren.Hitchens@huschblackwell.com>
`Cc: WH Merck KGaA Mavenclad ANDA <WHMerckKGaAMavencladANDA@wilmerhale.com>;
`Whelan, Emily <Emily.Whelan@wilmerhale.com>; Geng, Deric <Deric.Geng@wilmerhale.com>;
`Bassett, David <David.Bassett@wilmerhale.com>; Ferrera, Vinita
`<Vinita.Ferrera@wilmerhale.com>; Kan, Cindy <Cindy.Kan@wilmerhale.com>
`Subject: TWi v. Merck Serono, IPR2023-00049 & -00050: Protective Order
`
`[EXTERNAL EMAIL]
`
`Counsel,
`
`We anticipate submitting confidential materials in connection with our Patent Owner
`Response in IPR2023-00049 and -00050. Accordingly, we would like to move to seal certain
`documents and for entry of a protective order, specifically the PTAB’s default protective
`order, a copy of which is attached.
`
`Please let us know if TWi opposes our motion to seal and if TWi consents to entry of the
`PTAB’s default protective order.
`
`
`EXHIBIT 1037
`Petitioner TWi
`IPR2023-00049, -00050
`
`Page 3 of 4
`
`

`

`Best,
`
`Asher S. McGuffin | WilmerHale
`60 State Street
`Boston, MA 02109 USA
`+1 617 526 6201 (t)
`+1 617 526 5000 (f)
`asher.mcguffin@wilmerhale.com
`Please consider the environment before printing this email.
`
`This email message and any attachments are being sent by Wilmer Cutler Pickering Hale and Dorr LLP, are confidential, and may be
`privileged. If you are not the intended recipient, please notify us immediately—by replying to this message or by sending an email to
`postmaster@wilmerhale.com—and destroy all copies of this message and any attachments. Thank you.
`
`For more information about WilmerHale, please visit us at http://www.wilmerhale.com.
`
`
`
`EXHIBIT 1037
`Petitioner TWi
`IPR2023-00049, -00050
`
`Page 4 of 4
`
`