Case No. IPR2023-00478
`U.S. Patent No. 10,272,083
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`SANDOZ INC.,
`Petitioners,
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`v.
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`ACERTA PHARMA B.V.,
`Patent Owner
`_________________________________________________
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`Case IPR 2023-00478
`Patent No. 10,272,083
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`_________________________________________________
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`PATENT OWNER’S MOTION TO SEAL
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`U.S. Patent No. 10,272,083
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`SANDOZ INC.,
`Petitioners,
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`v.
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`ACERTA PHARMA B.V.,
`Patent Owner
`_________________________________________________
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`
`Case IPR 2023-00478
`Patent No. 10,272,083
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`_________________________________________________
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`PATENT OWNER’S MOTION TO SEAL
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`Case No. IPR2023-00478
`U.S. Patent No. 10,272,083
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`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner Acerta Pharma
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`B.V. respectfully moves to seal Exhibit 2004, which is a document produced by
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`Patent Owner that contains the confidential business information of Patent Owner
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`and the third party that is the counterparty to the agreement. Specifically, Exhibit
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`2004 is an agreement between Acerta’s predecessor-in-interest and a third party
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`which is in its entirety confidential, has never been made public, and contains non-
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`public information that could be improperly used by competitors to gain unfair
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`business and competitive advantage.
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`“The Board may, for good cause, issue an order to protect a party or person
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`from disclosing confidential information . . .” 37 C.F.R. § 42.54(a). In Argentum
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`Pharmaceuticals LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (Jan. 19,
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`2018), the Board set forth the standard for sealing confidential information: “[A]
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`movant to seal must demonstrate adequately that (1) the information sought to be
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`sealed is truly confidential, (2) a concrete harm would result upon public
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`disclosure, (3) there exists a genuine need to rely in the trial on the specific
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`information sought to be sealed, and (4) on balance, an interest in maintaining
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`confidentiality outweighs the strong public interest in having an open record.” Id.
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`at 3; Unified Patents, LLC, v. Memoryweb, LLC, IPR2021-01413, Paper 49 at 2-3
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`(P.T.A.B. Dec. 13, 2022).
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`Case No. IPR2023-00478
`U.S. Patent No. 10,272,083
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`While there is a presumption in favor of public disclosure, and the burden is
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`on the movant to seal, application of the foregoing factors should be tempered by
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`reasonableness, which is the touchstone of good cause. Overly harsh or stringent
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`application of the “good cause” requirement would be contrary to Congress’ intent
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`that IPRs be conducted in a “timely, fair, and efficient manner” as an alternative to
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`expensive court litigation of patent validity. Trial Practice Guide, p. 2. As
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`explained below, the Argentum factors confirm that the information Patent Owner
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`seeks to protect from public disclosure should indeed be sealed in this Proceeding.
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`Truly Confidential. The rules identify confidential information in a manner
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`consistent with Federal Rule of Civil Procedure 26(c)(1)(G), which provides for
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`protective orders for trade secret or other confidential research, development, or
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`commercial information. 37 C.F.R. § 42.54. Exhibit 2004 is a confidential
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`business document. The document is an agreement between a third party and
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`Acerta’s predecessor-in-interest that sets forth research, licensing, and business
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`arrangements between the parties to that agreement. Execution of that agreement
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`imposes a duty to maintain as confidential the information that is the subject of the
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`agreement. In fact, the executed document itself contains several provisions
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`related to “Confidentiality.” The third party consented to the production of the
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`document under the condition that suitable steps would be taken to maintain the
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`Case No. IPR2023-00478
`U.S. Patent No. 10,272,083
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`confidentiality of the document. The specific information contained in this
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`document is not available from any non-confidential sources.
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`Concrete Harm. The information sought to be sealed reflects confidential
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`business and research information. This includes sensitive commercial information
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`concerning the financial terms of the agreement, and also descriptions of
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`proprietary information. That information could be improperly used by
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`competitors to gain unfair business and competitive advantage. This kind of harm
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`warrants sealing. Ecobee Technologies Ulc, v. Causam Enterprises, Inc.,
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`IPR2022-01339, Paper 22 at 4, (P.T.A.B. Apr. 10, 2023); Roku, Inc. & Vizio, Inc.,
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`v. Ancora Technologies, Inc., IPR2021-01406, Paper 35, at 1-3 (P.T.A.B. August
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`9, 2022) (sealing “patent license agreements” that “are confidential and thus have
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`not been published or otherwise made public”).
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`Genuine Need to Rely Upon. Patent Owner relies on Exhibit 2004 to assert
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`that one of the three references relied upon in the grounds raised in the Petition
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`does not qualify as prior art under § 102(b)(2)(C) and § 102(c). Specifically,
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`Acerta relies on EX2004 to show that the subject matter disclosed in both the
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`alleged prior art and the challenged patent were developed and disclosed by parties
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`to a joint research agreement. EX2004 is a version of that agreement in redacted
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`form. The information that remains unredacted (that is relevant to the joint
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`research agreement issue) is not available from any non-confidential sources and
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`Case No. IPR2023-00478
`U.S. Patent No. 10,272,083
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`may be relevant to the requirements set forth in § 102(b)(2)(C) and § 102(c). As a
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`result, Acerta has a genuine need to rely on Exhibit 2004.
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`Balancing. The third party allowed Acerta to produce the redacted
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`document on the condition that only information potentially relevant to the joint
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`research agreement exception was left unredacted, and that suitable steps would be
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`taken to maintain the confidentiality of the unredacted portions of the document.
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`Were the unredacted portions of the document to be made public, such action
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`could have a chilling effect in future proceedings in which other third parties may
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`be unwilling to agree to production of their confidential materials in connection
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`with PTAB trials. Thus, granting of this motion to seal would ultimately benefit
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`the public and the Board by reassuring third parties that they can participate in the
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`discovery process before the PTAB without significant risk to their confidential
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`information.
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`Further, Patent Owner does not seek to seal its Preliminary Patent Owner
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`Response which provides background on Exhibit 2004 and describes its relevance
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`without disclosing specific confidential information. This strikes an appropriate
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`balance of the public’s qualified interest in having an open record, on the one hand,
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`and the interest in maintaining a third party’s confidential information on the other.
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`The public will be able to comprehend and understand the issues to be decided
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`without needing to see the underlying confidential agreement itself.
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`Case No. IPR2023-00478
`U.S. Patent No. 10,272,083
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`Conclusion
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`Acerta respectfully requests that the Board grant this Motion to Seal.
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher (Reg. No. 55,820)
`David I. Berl (Reg. No. 72,751)
`WILLIAMS & CONNOLLY LLP
`680 Maine Avenue SW,
`Washington, D.C., 20024
`T: (202) 434-5000
`F: (202) 434-5029
`sfisher@wc.com
`dberl@wc.com
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`Counsel for Patent Owner
`Acerta Pharma B.V.
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`Date: May 15, 2023
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`Case No. IPR2023-00478
`U.S. Patent No. 10,272,083
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`CERTIFICATION UNDER 37 C.F.R. § 42.24(d)
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`Pursuant to 37 C.F.R. 42.6(e), the undersigned hereby certifies that a true and
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`correct copy of the foregoing was served on May 15, 2023, by delivering a copy via
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`electronic mail on the following attorneys of record:
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`Jovial Wong (Reg. No. 60,115)
`Charles B. Klein
`Sharon Lin
`WINSTON & STRAWN LLP
`1901 L Street NW
`Washington, DC 20036
`Telephone: (202) 282-5867
`Facsimile: (202) 282-5100
`jwong@winston.com
`cklein@winston.com
`slin@winston.com
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`Eimeric Reig-Plessis
`WINSTON & STRAWN LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: (415) 591-1000
`Facsimile: (415) 591-1400
`ereigplessis@winston.com
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`/Stanley E. Fisher/
`Stanley E. Fisher
`Reg. No. 55,820
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