Trials@uspto.gov
`571.272.7822
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` Paper No. 12
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` Entered: November 30, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`BAYER INTELLECTUAL PROPERTY GMBH,
`Patent Owner.
`____________
`
`Case IPR2018-01143
`Patent 9,539,218 B2
`____________
`
`
`Before JACQUELINE WRIGHT BONILLA, Acting Deputy Chief
`Administrative Patent Judge, RAMA G. ELLURU and
`TINA E. HULSE, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Petitioner’s Motion for Entry of Stipulated Protective Order and
`Denying Without Prejudice Petitioner’s Motion to Seal
`37 C.F.R. § 42.54
`
`
`
`
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`

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`IPR2018-01143
`Patent 9,539,218 B2
`
`
`I. INTRODUCTION
`Mylan Pharmaceuticals Inc. (“Petitioner”) filed a Motion to Seal
`Exhibits 1066–1068. (Paper 9, “Mot.”). In that Motion, Petitioner requests
`entry of a Stipulated Protective Order. Mot. 1. Bayer Intellectual Property
`GmbH (“Patent Owner”) did not file an opposition to the Motion.
`For the reasons set forth below, we grant Petitioner’s motion for entry
`of a Stipulated Protective Order and deny without prejudice Petitioner’s
`Motion to Seal.
`
`II. ANALYSIS
`The standard for granting a motion to seal is “for good cause.”
`37 C.F.R. § 42.54. Petitioner, as the moving party, has the burden of proof
`in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c). The
`Board has a strong interest in the public availability of the proceedings.
`Accordingly, our rules aim to “strike a balance between the public’s interest
`in maintaining a complete and understandable file history and the parties’
`interest in protecting truly sensitive information.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012) (“Trial Practice
`Guide”).
`
`Proposed Modified Protective Order
`A.
`Petitioner requests entry of the Stipulated Protective Order submitted
`as Exhibit 1070. Paper 9, 1. The Stipulated Protective Order differs from
`the Default Protective Order in the Trial Practice Guide by replacing the
`word “Representatives” with the phrase “Attorneys associated with the law
`firm.” Id. (citing redline comparison in Ex. 1071).
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`IPR2018-01143
`Patent 9,539,218 B2
`Having considered the minor changes in the proposed Stipulated
`Protective Order, we grant Petitioner’s motion for entry of the Stipulated
`Protective Order.
`B. Motion to Seal Exhibits 1066–1068
`Petitioner requests that Exhibits 1066–1068 (“the Exhibits”) be sealed
`because they allegedly contain “non-public, business-sensitive information.”
`Id. at 2. The Exhibits are briefs filed under seal in the district court case and
`are governed by the protective order in that case. Id. Here, Petitioner cites
`the exhibits to support its claim construction argument, noting that Patent
`Owner “asked the district court to further construe Bayer’s construction of
`rapid-release tablet.” Paper 8 (“Reply”), 1 (citing Exhibits 1066–1068).
`To show good cause, Petitioner contends the following:
`Mylan’s competitors are not privy to the redacted portions of
`Exhibits 1066–1068. Disclosure of this non-public briefing to
`Mylan’s competitors may subject Mylan to business-related
`competitive harm. Mylan has minimized any prejudice to the
`public’s interest in access to the record in these proceedings by
`filing its Reply brief without redaction (while preserving the
`confidentiality of the redacted information in the exhibits). The
`prospect of competitive harm to Mylan, coupled with the
`minimal public interest in accessing the underlying exhibits that
`were filed under seal at the district court, favors sealing the
`unredacted documents.
`Mot. 2.
`It is unclear from Petitioner’s Motion how disclosure of the claim
`construction arguments in the Exhibits could cause Petitioner “business-
`related competitive harm.” Id. The only explanation Petitioner provides is
`that its “competitors are not privy to the redacted portions” of the exhibits.
`Id. But that assertion does not explain how the information would cause
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`IPR2018-01143
`Patent 9,539,218 B2
`competitive harm, particularly when the information relates to claim
`construction and will likely—if not necessarily—become public during trial.
`Moreover, we question the confidentiality of certain redactions, which
`include quotes from public documents, such as the ’218 patent specification
`(Ex. 1067, 1) and public filings in this proceeding (Ex. 1066, 1–2).
`We also note that Patent Owner filed its Surreply (Paper 10) under
`seal in its entirety without an accompanying motion to seal. One month
`later, Patent Owner filed a redacted, public version of the Surreply, redacting
`the allegedly confidential information from Petitioner’s Exhibits. 1 Paper 11.
`But the public version of the Surreply also redacts quotes from public
`documents (see id. at 1), which again raises doubt as to the confidentiality of
`the information redacted.
`Accordingly, having considered the arguments, we determine
`Petitioner has not established good cause to seal Exhibits 1066–1068 (or the
`Surreply). We, therefore, deny Petitioner’s Motion to Seal without
`prejudice. If Petitioner maintains that the redacted information is
`
`
`1 We assume Patent Owner did not file a motion to seal because it is
`Petitioner who contends the information is confidential. As a practical
`matter, however, a party who is submitting under seal the opposing party’s
`confidential information may concurrently file a motion to seal with the
`filing (see 37 C.F.R. § 42.14) and indicate that it is doing so because the
`opposing party has designated it confidential information. The panel may
`then require the designating party to respond with an explanation as to why
`the information should be sealed.
`We also note that a public, redacted version of the Surreply should
`have been filed along with the confidential version. See Trial Practice
`Guide, 77 Fed. Reg. at 48,770 (“Where confidentiality is alleged as to some
`but not all of the information submitted to the Board, the submitting party
`shall file confidential and non-confidential versions of its submission . . . .”).
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`IPR2018-01143
`Patent 9,539,218 B2
`confidential and requires sealing, Petitioner may renew its Motion to Seal
`the redacted portions of Exhibits 1066–1068 and the redacted portions of the
`Surreply by December 14, 2018. The documents shall remain under seal
`until the motion is decided. If, however, Petitioner does not renew its
`motion, the documents shall become public.
`III. CONCLUSION
`For the foregoing reasons, we conclude that Petitioner has established
`good cause to enter its Stipulated Protective Order, but has not established
`good cause to seal Exhibits 1066–1068.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion for entry of the Stipulated
`Protective Order is granted;
`FURTHER ORDERED that Petitioner’s Motion to Seal Exhibits
`1066–1068 is denied without prejudice;
`FURTHER ORDERED that Petitioner may file a Renewed Motion to
`Seal Exhibits 1066–1068 and Patent Owner’s Surreply by December 14,
`2018; and
`FURTHER ORDERED that the documents shall remain under seal
`until the Renewed Motion to Seal is decided or if Petitioner does not file a
`Renewed Motion by December 14, 2018.
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`IPR2018-01143
`Patent 9,539,218 B2
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`PETITIONER:
`
`Steven Parmelee
`Michael Rosato
`Jad Mills
`Wilson Sonsini Goodrich & Rosati
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`
`
`PATENT OWNER:
`
`Dov Grossman
`Ben Picozzi
`Williams & Connolly LLP
`dgrossman@wc.com
`bpicozzi@wc.com
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