UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`EDWARDS LIFESCIENCES CORPORATION, EDWARDS
`LIFESCIENCES LLC, AND EDWARDS LIFESCIENCES AG
`
`Petitioners,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`______________
`
`Case IPR2017-00060
`Patent 8,992,608
`______________
`
`Before the Honorable NEIL T. POWELL, JAMES A. TARTAL, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`PATENT OWNER’S REQUEST FOR RECONSIDERATION
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`EDWARDS LIFESCIENCES CORPORATION, EDWARDS
`LIFESCIENCES LLC, AND EDWARDS LIFESCIENCES AG
`
`Petitioners,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`______________
`
`Case IPR2017-00060
`Patent 8,992,608
`______________
`
`Before the Honorable NEIL T. POWELL, JAMES A. TARTAL, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`PATENT OWNER’S REQUEST FOR RECONSIDERATION
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.71(d) and the Board’s February 9, 2018 Decision
`
`(the “Decision,” Paper 57), Patent Owner Boston Scientific Scimed, Inc. (“Patent
`
`Owner”) respectfully requests reconsideration and that the Board find good cause
`
`exists to set aside the requirement that a motion to seal be filed concurrently with
`
`papers 21, 39, and 48 and exhibits 2094, 2096, 2098, 2099, and 2100 and/or that
`
`such requirement should be set aside in the interest of justice.
`
`II. GOVERNING RULES
`
`37 C.F.R. § 42.71(d) states:
`
`A party dissatisfied with a decision may file a single request
`for rehearing without prior authorization from the Board. The burden
`of showing a decision should be modified lies with the party
`challenging the decision. The request must specifically identify all
`matters the party believes the Board misapprehended or overlooked,
`and the place where each matter was previously addressed in
`a motion, an opposition, or a reply. A request for rehearing does not
`toll times for taking action. Any request must be filed:
`(1) Within 14 days of the entry of a non-final decision or a
`decision to institute a trial as to at least one ground of unpatentability
`asserted in the petition.
`
`(37 C.F.R. § 42.71(d).)
`
`Further, the Board’s Decision indicated an additional motion to seal would
`
`not be considered absent “a showing of good cause to set aside the requirement
`
`-1-
`
`
`
`that a motion to seal be filed concurrently with the document to be sealed, or in the
`
`interest of justice . . . .” (Paper 57 at 13.)
`
`III.
`
`STATEMENT OF MATERIAL FACTS
`
`Based on the following facts, Patent Owner submits that a showing of good
`
`cause and/or the interests of justice has been made to set aside the requirement that
`
`a motion to seal be filed concurrently with papers 21, 39, and 48 and exhibits 2094,
`
`2096, 2098, 2099, and 2100.1
`
`Paper 21 is Patent Owner’s Response, Paper 39 is Patent Owner’s Motion
`
`for Observations on Cross-Examination, and Paper 48 is Patent Owner’s Reply in
`
`Support of Its Motion to Exclude Evidence Pursuant to 37 C.F.R. § 42.64. All of
`
`these documents contain information that Petitioner Edwards Lifesciences Corp.
`
`(“Petitioner”) designated confidential in accordance with the Stipulated Protective
`
`Order (Ex. 2092; see Paper 29 (Order entering Stipulated Protective Order)) or
`
`highly confidential in accordance with the Protective Order entered in the United
`
`States District Court for the District of Delaware matter captioned Boston Scientific
`
`Corp., et al. v. Edwards Lifesciences Corp., et al., No. 1:16-cv-275-JFB-SRF (the
`
`1 Petitioner informed Patent Owner that it intends to also file a request for
`
`reconsideration regarding at least these same papers and exhibits that specifically
`
`identifies what information Petitioner contends is confidential and its importance
`
`to Petitioner.
`
`-2-
`
`
`
`“Delaware Action”) (D.I. 78)—designations that Patent Owner does not dispute.
`
`Patent Owner also publicly filed redacted versions of these documents as papers
`
`22, 40, and 49, respectively. These versions contain redactions tailored to
`
`encompass only the information previously designated confidential or highly
`
`confidential by Petitioner.
`
`Exhibit 2094 is the deposition transcript of Petitioner’s expert Nigel P.
`
`Buller, exhibit 2096 is the deposition transcript of Petitioner’s witness Larry
`
`Wood, exhibit 2098 is the deposition transcript from the Delaware Action of
`
`Petitioner’s witness Larry Wood, exhibit 2099 is Petitioner’s document titled
`
`“Global THV – Q2 2016 Update,” and exhibit 2100 is Patent Owner’s
`
`Demonstrative Exhibits. All of these documents contain information that
`
`Petitioner designated confidential in accordance with the Stipulated Protective
`
`Order (Ex. 2092) or highly confidential in accordance with the Protective Order
`
`entered in the Delaware Action—designations that Patent Owner does not dispute.
`
`At the time of filing, Patent Owner could not publicly file redacted versions of
`
`exhibits 2094, 2096, 2098, and 2099 because Petitioner’s confidential and highly
`
`confidential information is pervasive within these exhibits and Patent Owner was
`
`not in a position to determine what information Petitioner wanted redacted. Patent
`
`Owner publicly filed a redacted version of exhibit 2100 as exhibit 2101, which
`
`-3-
`
`
`
`contains redactions tailored to encompass only the information previously
`
`designated confidential or highly confidential by Petitioner.
`
`IV.
`
`STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED
`First, this Request is timely because it is filed within 14 days of the Board’s
`
`February 9, 2018 Decision. (37 C.F.R. § 42.71(d)(1); see Paper 57 at 16.)
`
`Second, pursuant to its Decision, the Board indicated that it may reconsider a
`
`motion to seal papers and exhibits upon “a showing of good cause to set aside the
`
`requirement that a motion to seal be filed concurrently with the document to be
`
`sealed, or in the interest of justice . . . . ” (Paper 57 at 13.) The foregoing facts
`
`demonstrate that good cause exists, and/or the interest of justice requires such a
`
`consideration here.
`
`Papers 21, 39, and 48 and exhibits 2094, 2096, 2098, 2099, and 2100 were
`
`all filed by Patent Owner but contained the confidential information of Petitioner.
`
`Because of this, Patent Owner did not know at the time of filing certain facts that
`
`must be included in a motion to seal, including what portions of its submissions
`
`Petitioner contended were confidential and/or Petitioner’s “reasons why the
`
`information . . . is confidential and should not be made publicly available.” (Paper
`
`24 at 7 n.3 (quoting Patent Office Trial Practice Guide, 77 Fed. Reg. at 48,711);
`
`see id. at 6-7 (“This includes showing that the information is truly confidential, and
`
`that such confidentiality outweighs the strong public interest in having an open
`
`-4-
`
`
`
`record. A motion to seal will not be granted if based only on broad or generic
`
`contentions of confidentiality.”).) Indeed, this is why, “[g]enerally, the party
`
`asserting confidentiality bears the burden of showing that the relief requested
`
`should be granted.” (Id. at 6 (citing 37 C.F.R. § 42.20(c).) However, under these
`
`circumstances, Petitioner also was not able to file a contemporaneous motion to
`
`seal because it did not know at the time of filing what information (e.g., excerpts
`
`from transcripts, exhibits, etc.) Patent Owner intended to file.
`
`Moreover, logistics made contemporaneous motions to seal with each filing
`
`impractical. Patent Owner was revising and finalizing each filing until its due date,
`
`leaving no time to coordinate motions to seal with Petitioner, which must begin
`
`days before a filing. For this same reason, contemporaneous motions to seal would
`
`have effectively shortened Patent Owner’s filing periods and elongated those of
`
`Petitioner. In addition, where possible, Patent Owner attempted to adhere to the
`
`Board’s “strong interest in promoting public accessibility to the proceedings” by
`
`publicly filing versions of its papers and exhibits with redactions tailored to
`
`encompass only the information previously designated confidential by Petitioner.
`
`(Paper 8 at 3; see Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,771.)
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests the Board find
`
`that good cause exists here to set aside the requirement that a motion to seal be
`
`-5-
`
`
`
`filed concurrently with papers 21, 39, and 48 and exhibits 2094, 2096, 2098, 2099,
`
`and 2100 and/or that such requirement be set aside in the interests of justice.
`
`Dated: February 23, 2018
`
`Respectfully submitted,
`
`/Jennifer A. Sklenar/
`Jennifer A. Sklenar (Reg. No. 40,205)
`Wallace Wu (Reg. No. 45,380)
`ARNOLD & PORTER
`KAYE SCHOLER LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel:
`(213) 243-4000
`Fax: (213) 243-4199
`
`Attorneys for Patent Owner Boston
`Scientific Scimed, Inc.
`
`-6-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
`REQUEST FOR RECONSIDERATION was served on February 23, 2018 to the
`following Counsel for Petitioner via e-mail:
`
`Gregory S. Cordrey (Reg. No. 44,089)
`Jeffer Mangels Butler & Mitchell, LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 926214
`Email: gcordrey@jmbm.com
`Telephone: 949-623-7200
`Facsimile: 949-623-7201
`
`Brian Egan (Reg. No. 54,866)
`Morris, Nichols, Arsht & Tunnell, LLP
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899-1347
`Email: began@MNAT.com
`Telephone: 302-351-9454
`Facsimile: 302-498-6216
`
`Catherine Nyarardy (Reg. No. 42,042)
`Paul, Weiss, Rifkind, Wharton &
`Garrison, LLP
`1285 Avenue of the Americas
`New York, NY 10019
`Email: cnyarardy@paulweiss.com
`Telephone: 212-373-3532
`Facsimile: 212-492-0532
`
`Attorneys for Petitioners Edwards LifeSciences Corporation, Edwards Lifesciences
`LLC, and Edwards Lifesciences AG
`
`/Jennifer A. Sklenar/
`Jennifer A. Sklenar (Reg. No. 40,205)
`ARNOLD & PORTER LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel: (213) 243-4000
`Fax: (213) 243-4199
`
`-i-
`
`
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