Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 72
`Date: June 8, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER INC.,1
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`____________
`
`IPR2020-003242
`Patent 8,114,833 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting-in-Part Patent Owner’s Motion to Seal
`and for Entry of a Protective Order
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`1 The proceeding has been terminated as to the original petitioner, Mylan
`Institutional LLC. Paper 67.
`2 IPR2020-01252 has been joined with this proceeding. See Paper 33.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 72
`Date: June 8, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER INC.,1
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`____________
`
`IPR2020-003242
`Patent 8,114,833 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting-in-Part Patent Owner’s Motion to Seal
`and for Entry of a Protective Order
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`1 The proceeding has been terminated as to the original petitioner, Mylan
`Institutional LLC. Paper 67.
`2 IPR2020-01252 has been joined with this proceeding. See Paper 33.
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`
`INTRODUCTION
`I.
`Patent Owner moves for entry of the Board’s default protective order
`and to seal its Patent Owner Response (Papers 20, 25)3 and Exhibits 2022,
`2023, 2050–53, 2055–60, 2062–75. Paper 22 (“Mot.”). The motion is
`unopposed. For the reasons explained below, we grant Patent Owner’s
`request for entry of the Board’s default protective order and Patent Owner’s
`motion to seal the confidential versions of the Patent Owner Response and
`Exhibit 2022, as well as Exhibits 2050–53, 2055–60, 2062–75, in their
`entirety. However, as explained below, we deny without prejudice Patent
`Owner’s motion to seal Exhibit 2023 in its entirety.
`
`II. DISCUSSION
`A. Default Protective Order
`Patent Owner certifies, pursuant to 37 C.F.R. § 42.54, that the parties
`have conferred in good faith, and agree that the Board’s Default Protective
`Order will govern the treatment of material designated and sealed as
`confidential information in this proceeding. See Paper 22, 1. Based on that
`certification, Patent Owner’s request to enter the Board’s Default Protective
`Order, Paper 22, Addendum A, in this proceeding is granted.
`B. Motion to Seal
`“There is a strong public policy for making all information filed in a
`quasi-judicial administrative proceeding open to the public, especially in an
`inter partes review which determines the patentability of claims in an issued
`
`
`3 Patent Owner originally filed the confidential version of the Patent Owner
`Response as Paper 20. With our authorization, Patent Owner subsequently
`filed a corrected confidential version of the Patent Owner Response as Paper
`25, which only added page numbers.
`
`2
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`patent and therefore affects the rights of the public.” Garmin Int’l v. Cuozzo
`Speed Techs., LLC, IPR2012-00001, Paper 34, 1–2 (PTAB Mar. 14, 2013).
`A motion to seal may be granted for good cause. 37 C.F.R. § 42.54. The
`moving party bears the burden of showing that there is good cause for the
`relief requested, including why the information is appropriate to be filed
`under seal. 37 C.F.R. §§ 42.20, 42.54; see also Argentum Pharms. LLC v.
`Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3–4 (PTAB Jan. 19,
`2018) (informative) (discussing factors the Board may consider when
`deciding whether to grant a motion to seal documents asserted to contain
`confidential information). The Patent Trial and Appeal Board Consolidated
`Trial Practice Guide (“CTPG”) notes that 37 C.F.R. § 42.54 identifies
`confidential information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for trade secret
`or other confidential research, development, or commercial information.
`CTPG at 19.4
`In the motion, Patent Owner asserts that “[g]ood cause exists here
`because the Patent Owner Response and Exhibits that are the subject of this
`Motion contain confidential, non-public research and development
`information in the form of proprietary clinical and scientific data.” Mot. 2.
`Patent Owner has provided a redacted, public version of the Patent Owner
`Response (Paper 21) and the Declaration of Peter M. Tessier, Ph.D. (Exhibit
`2080). Id. According to Patent Owner, the remaining exhibits subject to the
`motion are confidential in their entirety. Id. That appears to be true for
`
`
`4 November 2019 Edition, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`Exhibits 2050-2053, 2055–2060, and 2062–2075, which comprise
`confidential clinical testing protocols and investigations. However, Patent
`Owner has not demonstrated that the Declaration of Dorthe Kot Engelund
`(Exhibit 2023) should be sealed in its entirety. For example, we do not see
`any material in paragraphs 1–9 of the declaration that discusses
`“confidential, non-public research and development information in the form
`of proprietary clinical and scientific data,” or any other matter that may be
`considered confidential.
`Thus, we determine that Patent Owner has shown good cause to seal
`the confidential version of the Patent Owner Response (Papers 20 and 25
`(corrected Patent Owner Response)) and the confidential version of the
`Declaration of Peter M. Tessier, Ph.D. (Exhibit 2022), as well as Exhibits
`2050–53, 2055–60, 2062–75, in their entirety. However, we do not find
`good cause to seal the Declaration of Dorthe Kot Engelund (Exhibit 2023) in
`its entirety. For that matter, we exercise our discretion to maintain Exhibit
`2023 under a provisional seal to permit Patent Owner an opportunity to file a
`renewed motion to seal the exhibit, along with a redacted, public version of
`the exhibit, as may be appropriate.
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motion for Entry of the Default
`Protective Order is granted;
`FURTHER ORDERED that the Default Protective Order is hereby
`entered in these proceedings and shall govern the treatment and filing of
`confidential information;
`
`4
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`
`FURTHER ORDERED Patent Owner’s Motion to Seal is granted-in-
`part, wherein we grant the motion to seal with respect to the confidential
`versions of the Patent Owner Response (Papers 20, 25) and Exhibit 2022, as
`well as Exhibits 2050–53, 2055–60, 2062–75, in their entirety;
`FURTHER ORDERED that Patent Owner’s Motion to seal is denied
`without prejudice with respect to sealing Exhibit 2023 in its entirety; and
`FURTHER ORDERED that Exhibit 2023 shall be maintained under a
`provisional seal to permit Patent Owner an opportunity to file a renewed
`motion to seal the exhibit, along with a redacted, public version of the
`exhibit, as may be appropriate.
`
`
`
`5
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`For PETITIONER PFIZER:
`
`Thomas J. Meloro
`tmeloro@willkie.com
`
`Michael W. Johnson
`Mjohnson1@willkie.com
`
`For PATENT OWNER:
`
`Jeffrey Oelke
`joelke@fenwick.com
`
`Ryan Johnson
`Ryan.johnson@fenwick.com
`
`Laura Moran
`Laura.moran@fenwick.com
`
`6
`
`
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