Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 74
`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 Petitioner’s Motion to Seal
`Paper 35 and Exhibits 1077–1079, and 1106
`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 74
`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 Petitioner’s Motion to Seal
`Paper 35 and Exhibits 1077–1079, and 1106
`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.
`Petitioner moves to seal its Petitioner’s Reply (Paper 35) and Exhibits
`1077–1079, and 1106. Paper 34 (“Mot.”).3 Exhibit 1077 is the Transcript
`for the Deposition of Peter Tessier, Ph.D. Exhibit 1078 is the Transcript for
`the Deposition of Dorthe Kot Engelund. Exhibit 1079 is the Transcript for
`the Deposition of Tina B. Pedersen, Ph.D. Exhibit 1106 is the Reply
`Declaration of Laird Forrest, Ph.D. The motion to seal is unopposed. For
`the reasons explained below, we grant Petitioner’s motion to seal the
`confidential versions of the Petitioner’s Reply (Paper 35), the Transcript for
`the Deposition of Peter Tessier, Ph.D. (Ex. 1077), and the Reply Declaration
`of Laird Forrest, Ph.D. (Ex. 1106). However, as explained below, we deny
`without prejudice Petitioner’s motion to seal the Transcript for the
`Deposition of Dorthe Kot Engelund (Exhibit 1078) and the Transcript for the
`Deposition of Tina B. Pedersen, Ph.D. (Exhibit 1079).
`
`II. DISCUSSION
` “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
`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
`
`
`3 As noted in footnote 1, this case has been terminated as to the original
`petitioner, Mylan Institutional LLC. Although the instant request and
`motion were filed by that original petitioner, we now attribute it to the
`previously joined and remaining petitioner, Pfizer, Inc.
`2
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`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, Petitioner asserts that “good cause exists for placing the
`Exhibits and corresponding portions of the Reply under seal because Patent
`Owner has contended this information should be sealed according to the
`reasons set forth in Paper No. 22 [Patent Owner’s Motion to Seal and for
`Entry of A Protective Order].” Mot. 2. Petitioner explains that it “takes no
`position as to whether the underlying information satisfies the Board’s
`requirements for filing under seal, as it is Patent Owner that has asserted the
`confidentiality of these exhibits.” Id.
`In the motion, Petitioner also states, “Petitioner will file redacted
`versions of these Exhibits and the Reply shortly hereafter after conferring
`with Patent Owner.” Id. at 3. However, we are only able to locate redacted,
`public versions of Petitioner’s Reply (Paper 40), Exhibits 1077 and 1106,
`
`
`4 November 2019 Edition, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`filed in this proceeding. We do not see that Petitioner has filed redacted
`versions of Exhibits 1078 or 1079. Nor has Petitioner asserted that those
`exhibits should be sealed in their entirety and demonstrated that either party
`has shown good cause for doing so. Indeed, based on our review of those
`exhibits, it does not appear that the testimony is limited to confidential
`information. In any event, the issue of whether Exhibits 1078 or 1079
`contain solely confidential information has not been properly addressed in
`the motion.
`We therefore determine that Petitioner has shown good cause to seal
`the confidential version of the Petitioner’s Reply (Paper 35), the confidential
`version of the Transcript of the Deposition of Peter M. Tessier, Ph.D.
`(Exhibit 1077), and the confidential version of the Reply Declaration of
`Laird Forrest, Ph.D. (Ex. 1106). However, we do not find good cause to seal
`the Transcripts for the Depositions of Dorthe Kot Engelund (Exhibit 1078)
`and Tina B. Pedersen, Ph.D. (Exhibit 1079), in their entirety. For that
`matter, we exercise our discretion to maintain Exhibits 1078 and 1079 under
`a provisional seal to permit Petitioner an opportunity to file a renewed
`motion to seal those exhibits, along with redacted, public versions of the
`exhibits, as may be appropriate.
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Motion to Seal is granted-in-part,
`wherein we grant the motion to seal with respect to the confidential versions
`of the Petitioner’s Reply (Paper 35), the Transcript of the Deposition of
`Peter M. Tessier, Ph.D. (Exhibit 1077), and the Reply Declaration of Laird
`
`4
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`Forrest, Ph.D. (Ex. 1106), and deny the motion to seal without prejudice
`with respect to Exhibits 1078 and 1079 in their entirety; and
`FURTHER ORDERED that Exhibits 1078 and 1079 shall be
`maintained under a provisional seal to permit Petitioner an opportunity to
`file a renewed motion to seal those exhibits, along with redacted, public
`versions of the exhibits, 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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