Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 65
`Entered: April 13, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION, EDWARDS
`LIFESCIENCES LLC, AND EDWARDS LIFESCIENCES AG,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00060
`Patent 8,992,608 B2
`____________
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Denying Patent Owner’s Request for Reconsideration of
`Our Decision Granting Motions to Seal in Part, Denying in Part, and
`Additional Conduct of the Proceeding (Paper 57)
`37 C.F.R. §§ 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 65
`Entered: April 13, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION, EDWARDS
`LIFESCIENCES LLC, AND EDWARDS LIFESCIENCES AG,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00060
`Patent 8,992,608 B2
`____________
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Denying Patent Owner’s Request for Reconsideration of
`Our Decision Granting Motions to Seal in Part, Denying in Part, and
`Additional Conduct of the Proceeding (Paper 57)
`37 C.F.R. §§ 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`
`
`
`I.
`
`INTRODUCTION
`
`Boston Scientific Scimed, Inc., (“Patent Owner”) filed a Request for
`
`Reconsideration (Paper 59 (“Request” or “Req.”)) of our Decision (Paper 57
`
`(“Decision” or “Dec.”)) ordering that documents filed by Patent Owner with
`
`restricted public access (Papers 21, 39, and 501 and Exhibits 2094, 2096,
`
`2098, 2099, and 2100), but unaccompanied by a motion to seal, be made
`
`publicly available or expunged. Patent Owner’s request is denied for the
`
`reasons provided below.2
`
`II.
`
`STANDARD OF REVIEW
`
`The party seeking to modify a decision bears the burden of showing
`
`the decision should be modified. 37 C.F.R. § 42.71(d). Such a request
`
`“must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was
`
`previously addressed.” Id.
`
`
`1 With regard to the documents at issue, Patent Owner filed three documents
`as its Reply in Support of Its Motion to Exclude: the first as Paper 48 with
`restricted public access, the second as Paper 49 with public access in a
`redacted form, and the third as Paper 50 with restricted public access. Prior
`to the Decision, Patent Owner requested that the version filed as Paper 48 be
`expunged. Thus, Paper 48 has been expunged, leaving at issue Paper 50
`accompanied by a redacted version filed as Paper 49.
`2 Petitioner Edwards Lifesciences Corporation, Edwards Lifesciences LLC,
`and Edwards Lifesciences AG separately requested reconsideration of the
`Decision. Paper 60. The information at issue in both requests for
`reconsideration was designated as confidential by Petitioner, not by Patent
`Owner. We will separately determine whether all documents at issue should
`be disclosed, expunged, or further addressed when we resolve Petitioner’s
`pending request for reconsideration.
`
`2
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`
`Recognizing the seriousness of the use and disclosure of confidential
`
`information, our Decision did not require that the documents at issue be
`
`immediately expunged or publically disclosed to permit the parties an
`
`opportunity to file requests for reconsideration. Dec. 15. Thus, we further
`
`explained in our Decision that “[a]bsent 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 interests of justice, no additional motion to
`
`seal in this case is authorized at this time.” Id. at 13 (citing 37 C.F.R.
`
`§ 42.14, 42.5).
`
`III. DISCUSSION
`
`Patent Owner has not identified any matter we misapprehended or
`
`overlooked and has not shown good cause or the interests of justice supports
`
`reconsideration of our prior decision. As explained below, Patent Owner’s
`
`conduct demonstrates a repeated, intentional, and inexcusable disregard of
`
`not only the Board’s rule requiring that a party file a motion to seal when a
`
`document is filed with restricted public access, but also our prior orders in
`
`this case providing explicit guidance. Accordingly, Patent Owner’s request
`
`for reconsideration is denied.
`
`1. Patent Owner repeatedly filed documents with restricted public access
`unaccompanied by a motion to seal.
`
`On June 23, 2017, Patent Owner filed its Patent Owner Response as a
`
`confidential document with restricted public access. Paper 21. On the same
`
`date, Patent Owner also filed a publically accessible version of the Patent
`
`Owner Response with redactions of Petitioner’s allegedly confidential
`
`information. Paper 22. Patent Owner did not file a motion to seal Paper 21.
`
`On November 3, 2017, Patent Owner filed its Motion for
`
`3
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`Observations and Exhibits 2094, 2096, 2098, and 2099 as confidential
`
`documents with restricted public access. Paper 39. On the same date Patent
`
`Owner also filed a publically accessible version of its Motion for
`
`Observations with redactions of Petitioner’s allegedly confidential
`
`information. Paper 40. Patent Owner did not file publically accessible
`
`versions of Exhibits 2094, 2096, 2098, and 2099. Patent Owner did not file
`
`a motion to seal Paper 39 or Exhibits 2094, 2096, 2098, and 2099.
`
`On December 1, 2017, Patent Owner filed its Patent Owner Reply in
`
`Support of Its Motion to Exclude as a confidential document with restricted
`
`public access. Paper 50. On the same date Patent Owner also filed a
`
`publically accessible version of the Patent Owner Reply in Support of Its
`
`Motion to Exclude with redactions of Petitioner’s allegedly confidential
`
`information. Paper 49. Patent Owner did not file a motion to seal Paper 50.
`
`On December 19, 2017, Patent Owner filed as Exhibit 2100
`
`demonstratives for use in the hearing as a confidential document with
`
`restricted public access. On the same date, Patent Owner also filed a
`
`publically accessible version of its demonstratives with redactions of
`
`Petitioner’s allegedly confidential information. Exhibit 2101. Patent Owner
`
`did not file a motion to seal Exhibit 2100.
`
`Thus, the record demonstrates that Patent Owner repeatedly filed
`
`documents with restricted public access unaccompanied by a motion to seal.
`
`2. Patent Owner knew of its obligation to file motions to seal
`corresponding to documents it filed with restricted public access.
`
`Patent Owner is obligated to be aware of the rules governing practice
`
`before the Board, including 37 C.F.R. § 42.14, which states that “[a] party
`
`intending a document or thing to be sealed shall file a motion to seal
`
`4
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`concurrent with the filing of the document or thing to be sealed” (emphasis
`
`added).3 The record further makes clear that Patent Owner knew of its
`
`obligation to file a motion to seal before it filed its Patent Owner Response
`
`with restricted public access. On June 20, 2017, Patent Owner and
`
`Petitioner filed a Joint Motion for Entry of a Stipulated Protective Order.
`
`Paper 20, 1. The Stipulated Protective Order, proposed by Patent Owner
`
`jointly with Petitioner and based on the Default Protective Order, explicitly
`
`stated that:
`
`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, together with a Motion to Seal the confidential
`version setting forth the reasons why the information redacted
`from the non-confidential version is confidential and should not
`be made available to the public.
`
`Ex. 2012, 5–6 (emphasis added). The first Stipulated Protective Order
`
`proposed by the Parties was denied entry for various reasons. See Paper 24.
`
`A revised Stipulated Protective Order (Ex. 2092) filed on July 28, 2017, was
`
`entered August 10, 2017, and contained the same requirement that a party
`
`submitting confidential information also file an accompanying motion to
`
`seal. Paper 29; Ex. 2092, 5. Thus, Patent Owner’s own proposed protective
`
`order, which we entered, required Patent Owner to file a motion to seal when
`
`Patent Owner filed documents with restricted public access.
`
`
`3 Patent Owner also had resources available explaining “how to” actually
`file a motion to seal. See, e.g., https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/ptab-e2e-frequently-asked-
`questions#G1. How do I file other documents (e.g., a motion to seal or
`proposed protective order)? (“G1. How do I file other documents (e.g., a
`motion to seal or proposed protective order)?”).
`5
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`
`Were there any possible doubt over whether Patent Owner was aware
`
`of its obligation to file a motion to seal when it filed documents with
`
`restricted public access, any such doubt was removed by our decision on
`
`July 20, 2017, which stated that “[t]he requirement that a motion to seal
`
`must accompany the filing of a document with restricted public access is
`
`unambiguous.” Paper 24 (the “July 20 Decision”), 5–6.
`
`The July 20 Decision further ordered:
`
`that Patent Owner shall file, on or before July 28, 2017, a
`motion to seal addressing each and every paper or exhibit Patent
`Owner seeks to maintain as confidential as filed with the Board
`with the understanding that any document filed with restricted
`public access not addressed in a motion to seal by that date will
`be designated public.
`
`Id. at 8. Contrary to the July 20 Decision, Patent Owner not only neglected
`
`to file a motion to seal Paper 21, a paper filed before the order, Patent Owner
`
`proceeded to file additional papers and exhibits with restricted public access
`
`but with no corresponding motion to seal (Papers 39 and 50; Exhibits 2094,
`
`2096, 2098, 2099, and 2100). Patent Owner also showed that it was aware
`
`of its obligation to file a motion to seal and was capable of coordinating with
`
`Petitioner because the parties jointly filed a motion to seal some of the
`
`previously filed with restricted public access. See Paper 25.
`
`Thus, the record demonstrates that Patent Owner knew of and did not
`
`satisfy its obligation to file motions to seal corresponding to each document
`
`it filed with restricted public access.
`
`3. Patent Owner’s failure to comply with the Board’s rule and our prior
`order is inexcusable.
`
`In its Request, Patent Owner does not identify any matter we
`
`misapprehended or overlooked, and instead seeks to show that good cause or
`
`6
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`the interests of justice support reconsideration with respect to Patent
`
`Owner’s failure to file motions to seal corresponding to Papers 21, 39, and
`
`50 and Exhibits 2094, 2096, 2098, 2099, and 2100. Specifically, Patent
`
`Owner contends that:
`
`(1) the documents it filed with restricted public access and
`
`unaccompanied by a motion to seal contained confidential information of
`
`Petitioner about which, at the time of filing, Patent Owner did not know
`
`what portions were confidential or why the information was confidential,
`
`and,
`
` (2) “logistics made contemporaneous motions to seal with each filing
`
`impractical” because “Patent Owner was revising and finalizing each filing
`
`until its due date, leaving no time to coordinate motions to seal with
`
`Petitioner, “and contemporaneous motions to seal would have effectively
`
`shortened Patent Owner’s filing periods and elongated those of Petitioner.”
`
`PO Req. Reh’g. 4–5.
`
`Rather than support a showing of good cause or the interests of
`
`justice, Patent Owner’s arguments reflect an inexcusable disregard of the
`
`Board’s rule requiring that a party file a motion to seal when a document is
`
`filed with restricted public access. Patent Owner may not disregard Board
`
`rules merely because it views the rule as “impractical” at the time, or
`
`because complying with the rule would require better planning and
`
`coordination.
`
`Remarkably, while arguing the impracticality of the requirement that
`
`it file a contemporaneous motion to seal, Patent Owner neglects to address
`
`its failure to make any effort to file a corresponding motion to seal directed
`
`7
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`to the documents at issue. Thus, even assuming Patent Owner was incapable
`
`of preparing its filings sufficiently ahead of time to file a corresponding
`
`motion to seal, Patent Owner made no effort to file a motion to seal a day, a
`
`week, or a month after it filed the papers and exhibits at issue with restricted
`
`public access. Even after Patent Owner was ordered by our July 20
`
`Decision to file a motion to seal addressing Paper 21, Patent Owner did not
`
`do so. Paper 24, 8; see also Paper 25 (Joint Motion to File Confidential
`
`Documents Under Seal directed to certain documents, but not to Paper 21).
`
`Thus, the notion that Patent Owner’s filing period would have been
`
`effectively “shortened” if it complied with the requirement of filing a
`
`contemporaneous motion to seal is an insufficient excuse and inaccurate
`
`because Patent Owner was provided additional time to comply. Nor did
`
`Patent Owner request additional time to comply. Patent Owner also
`
`suggests that “where possible” it filed redacted versions of its papers and
`
`exhibits; however, that does not relieve Patent Owner of the obligation to
`
`file a motion to seal, and belies Patent Owner’s assertion that it did not know
`
`what was confidential. See PO Req. Reh’g. 4–5.
`
`Finally, Patent Owner suggests that “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.” Id. at 5. Indeed, that is one reason the obligation to
`
`file a motion to seal papers and exhibits filed by Patent Owner with
`
`restricted public access is placed on Patent Owner. Though it is a reasonable
`
`expectation that Petitioner will take all necessary steps to cooperate with the
`
`filing of a motion to seal to protect its purportedly confidential information
`
`8
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`from disclosure, the obligation to file a motion to seal documents filed with
`
`restricted public access by Patent Owner remains on Patent Owner. To the
`
`extent Patent Owner implicitly is not concerned with disclosure as a remedy
`
`for its failure to file corresponding motions to seal because the purportedly
`
`confidential information pertains to Petitioner, Patent Owner should be
`
`under no misconceptions. Rather than merely divulging the purportedly
`
`confidential information of Petitioner in the absence of a motion to seal, an
`
`egregious disregard of our rule requiring a motion to seal and our prior order
`
`in this case may warrant expunging the papers and exhibits filed by Patent
`
`Owner, which we will resolve when we address Petitioner’s pending request
`
`for reconsideration. See Paper 60 (Petitioner’s Request for Reconsideration
`
`of the Board’s February 9, 2018, Order Regarding Filing of Confidential
`
`Documents Under Seal).
`
`It is
`
`ORDERED that Patent Owner’s Request for Reconsideration is
`
`denied.
`
`
`
`
`
`
`
`9
`
`
`
`IPR2017-00060
`Patent 8,992,608 B2
`
`For PETITIONER:
`
`Gregory S. Cordrey
`JEFFER MANGELS BUTLER & MITCHELL, LLP
`gcordrey@jmbm.com
`
`Brian Egan
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`began@mnat.com
`
`Catherine Nyarady
`PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
`cnyarady@paulweiss.com
`
`
`For PATENT OWNER:
`
`Jennifer A. Sklenar
`Wallace Wu
`ARNOLD & PORTER LLP
`jennifer.sklenar@aporter.com
`wallace.wu@porter.com
`
`
`10
`
`
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