Case 2:18-cv-03632-SDW-CLW Document 73 Filed 06/04/19 Page 1 of 2 PageID: 1080
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`MARTIN LUTHER KING COURTHOUSE
`50 WALNUT ST.
`ROOM 4040
`NEWARK, NJ 07101
`973-776-7862
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`CHAMBERS OF
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`CATHY L. WALDOR
`UNITED STATES MAGISTRATE JUDGE
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`LETTER ORDER
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`Re: Corcept Therapeutics, Inc. v. Teva Pharmaceuticals USA, Inc.
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`Civil Action No. 2:18-cv-03632-SDW-CLW
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`This matter comes before the Court on the parties’ letter dispute concerning the inclusion of patent
`prosecution and FDA bars in the Discovery Confidentiality Order (“DCO”). (DE 69-72). For the
`reasons below, the Court declines to impose Defendant Teva Pharmaceuticals, USA Inc.’s
`(“Teva”) proposed patent prosecution and FDA bar.
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`Teva seeks to include a DCO provision that would bar outside and in-house counsel who receive
`information designated as Confidential pursuant to the DCO from participating in patent
`prosecution and FDA correspondence related to formulations of mifepristone, the drug product at
`issue in this Hatch-Waxman litigation. (DE 69, at p. 1). Teva seeks to impose this patent
`prosecution and FDA bar during the pendency of the litigation and for two years after its
`conclusion, including any appeals. (Id. at p. 2).
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`Plaintiff Corcept Therapeutics, Inc. (“Corcept”) opposes Teva’s proposed patent prosecution and
`FDA bar. (DE 70). Corcept indicates that it will designate Vice President of Legal Gary
`Francesconi as its representative under the DCO, and it has represented that Francesconi “does not
`have involvement with” patent prosecution and FDA correspondence. (DE 70, at p. 5).
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`As an alternative, Corcept proposes a DCO provision that bars attorneys who receive Confidential
`Information from using that information for patent prosecution or FDA petitions. (DE 70, at p. 2).
`Corcept’s proposed language provides in part: “All Confidential Information….shall be used by a
`recipient thereof solely for the purposes of this litigation and not for any business, regulatory,
`commercial or competitive purposes, including, but not limited to, filing or prosecuting patent
`applications or any communicating or petitioning activity with the FDA.” (Id.).
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`“[A] party seeking imposition of a patent prosecution bar must show that the information
`designated to trigger the bar, the scope of activities prohibited by the bar, the duration of the bar,
`and the subject matter covered by the bar reasonably reflect the risk presented by the disclosure of
`proprietary competitive information.” In re Deutsche Bank Tr. Co. Americas, 605 F.3d 1373, 1381
`(Fed. Cir. 2010). Here, Teva has not met its threshold burden of establishing that its proposed
`patent prosecution and FDA bar is a reasonable precautionary measure. In light of Corcept’s
`designation of Francesoni and its representation that he is not involved in competitive decision-
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`Teva Pharmaceuticals USA, Inc. v. Corcept Therapeutics, Inc.
`PGR2019-00048
`Corcept Ex. 2005, Page 1
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`Case 2:18-cv-03632-SDW-CLW Document 73 Filed 06/04/19 Page 2 of 2 PageID: 1081
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`making, Teva’s fears about the improper or inadvertent use of Confidential Information are
`speculative at this point.
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`The Court’s denial of Teva’s application is without prejudice. If new, particularized concerns arise
`about the use of Confidential Information, Teva may renew its request for a patent prosecution and
`FDA bar.
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`Conclusion
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`Teva’s request to include a two-year patent prosecution and FDA bar in the Discovery
`Confidentiality Order is DENIED. The parties are directed to meet and confer and submit a
`proposed Discovery Confidentiality Order, consistent with this Order, by June 11, 2019.
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`SO ORDERED
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`Dated:
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`June 4, 2019
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`s/Cathy L. Waldor
`CATHY L. WALDOR
`United States Magistrate Judge
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`Teva Pharmaceuticals USA, Inc. v. Corcept Therapeutics, Inc.
`PGR2019-00048
`Corcept Ex. 2005, Page 2
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