Trials@uspto.gov
`571-272-7822
`
`Paper 24
`Entered: July 20, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EDWARDS LIFESCIENCES CORPORATION,
`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 Joint Motion for Entry of Stipulated Protective Order
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`
`
`

`

`IPR2017-00060
`Patent 8,992,608 B2
`
`As authorized by the Case Management and Scheduling Order
`
`(Paper 8, 2), Edwards Lifesciences Corporation, Edwards Lifesciences LLC,
`and Edwards Lifesciences AG (“Petitioner”) and Boston Scientific Scimed,
`Inc., (“Patent Owner”), (collectively, “the Parties”), jointly move for entry of
`a proposed Stipulated Protective Order. Paper 20 (“Mot.”); Ex. 2012.1 The
`Parties contend that the proposed Stipulated Protective Order includes
`changes from the Board’s Default Protective Order “to harmonize the
`protective order” with a protective order filed in district court (the
`“Delaware Protective Order”),2 “to permit information from such litigation
`to be used in this proceeding,” and “to further ensure the preservation of
`confidentiality of information that may be submitted to the Board.” Id. For
`the reasons provided below, the joint motion is denied without prejudice.
`Additionally, Patent Owner improperly filed a number of documents with
`restricted public accessibility unaccompanied by a motion to seal, which we
`also address below.
`The Parties must show good cause why the modified protective order
`should be entered, as well as demonstrate that the relief requested is
`
`
`1 The proposed Stipulated Protective Order is referred to in the Motion as
`“Exhibit 1,” but appears in the record as Exhibit 2012.
`2 The Delaware Protective Order is attached to the proposed Stipulated
`Protective Order as “Appendix A” and is a copy of a document titled
`“[Proposed] Stipulated Protective Order” purportedly filed on January 16,
`2017, in related litigation in the United States District Court for the District
`of Delaware in Case No. 1:16-cv-00275-SLR-SRF. Ex. 2012, 13–37. The
`Delaware Protective Order is signed by the Parties, but the signature space
`for entry of the proposed order by the district court is blank. Ex. 2012, 25.
`The Parties, however, represent that the district court protective order is “in
`place in Case No. 16-275-SLR-SFR (D. Del.).” Mot. 1.
`2
`
`

`

`IPR2017-00060
`Patent 8,992,608 B2
`
`warranted. See 37 C.F.R. §§ 42.20(c) and 42.54(a). A motion for entry of a
`proposed protective order that deviates from the Board’s default protective
`order should identify specifically how the proposed order substantively
`differs from the Board’s default protective order and also explain why each
`proposed change is warranted. See 37 C.F.R. § 42.54; Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48769–71 (Aug. 14, 2012). As
`explained below, we conclude that the proposed Stipulated Protective Order
`fails to adequately identify in substance how it differs from the Board’s
`default protective order, and that the Motion fails to explain why such
`modifications are warranted.
`A fundamental flaw with the proposed Stipulated Protective Order
`stems from the attempt of the Parties to essentially incorporate by reference
`portions of the Delaware Protective Order. For example, regarding access to
`“Confidential Information,” the proposed Stipulated Protective Order states
`with respect to “Parties” that access is limited “only as permitted by the
`terms of the Delaware Protective Order.” Ex. 2012, 2. The proposed
`Stipulated Protective Order does not expressly state what specific terms are
`from the Delaware Protective Order are being referred to or what is
`permitted. Moreover, the Motion fails to provide any explanation of how
`the terms differ from the default protective order, or why they are warranted
`in this proceeding beyond general propositions. Under such an approach, it
`is also unclear whether any future order by the district court would impact
`the scope and meaning of terms, such as “Parties,” in the proposed
`Stipulated Protective Order were it adopted in this proceeding. Other
`portions of the proposed Stipulated Protective Order purport to allocate the
`
`3
`
`

`

`IPR2017-00060
`Patent 8,992,608 B2
`
`burden on proving a person may have access to information based on
`whether “that person would not be permitted under the terms of the
`Delaware Protective Order.” Id. at 3. We are not persuaded that it would be
`reasonable to premise a determination of what is permitted under the
`proposed Stipulated Protective Order on the content of separate requirements
`from the Delaware Protective Order, as the practical effect would be to
`impose on the Board the obligation of interpreting and enforcing terms of a
`district court protective order that may also be subject to future change.
`Accordingly, we find that the Parties have not shown that the proposed
`Stipulated Protective Order is warranted in this proceeding.
`Additionally, the explanation of the Parties of the differences between
`the proposed Stipulated Protective Order and the Board’s default protective
`order also is insufficient. The Parties provide a document (referred to in the
`Motion as “Exhibit 2,” but appearing in the record as Exhibit 2013)
`purporting to compare the proposed Stipulated Protective Order to the
`Board’s Default Protective Order by showing changes between the two in
`redline. In principle, such a document would substantively show how the
`agreements differ. In practice in this case, however, the comparison
`provided by the Parties is of little practical value and offers no substantive
`explanation when directed to modifications like the addition of the statement
`“but only as permitted by the terms of the Delaware Protective Order.” See
`Ex. 2013, 3. In another example, the proposed Stipulated Protective Order
`appears to imply a prosecution bar is incorporated by reference from the
`Delaware Protective Order. Id. at 2. The Parties fail to provide any
`explanation to show inclusion of such terms in a protective order in this
`
`4
`
`

`

`IPR2017-00060
`Patent 8,992,608 B2
`
`proceeding, which appear to conflict directly with the Board’s guidelines, is
`warranted. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. at
`48771, para. (h) (stating that “[c]ounsel for a party who receives confidential
`information in a proceeding will not be restricted by the Board from
`representing that party in any other proceeding or matter before the
`Office.”). For the foregoing reasons, the Joint Motion for Entry of
`Stipulated Protective Order is denied without prejudice. The Parties are
`authorized to file a motion for entry of a substitute stipulated protective
`order, provided the motion addresses the necessary showing of good cause.
`While we appreciate the interest of the Parties in harmonizing requirements
`across the district court case and this proceeding for their convenience, that
`does not alleviate the need for the Parties to make the necessary showing in
`this proceeding in support of each and every modification of the Board’s
`default protective order.
`Additionally, Patent Owner filed a number of documents with
`restricted public accessibility, including an unredacted version of the Patent
`Owner’s Response (Paper 21) and Exhibits 2031, 2034, 2035, 2036, 2039,
`2040, 2041, 2042, 2043, 2044, 2045, 2046, 2055, 2056, 2057, 2063, 2077,
`2078, 2080, 2085, 2086, 2087, 2088, 2089, 2090, and 2091. None of the
`confidential exhibits are accompanied by non-confidential versions of
`redacted exhibits. Moreover, Patent Owner did not file concurrently a
`motion to seal any of the documents Patent Owner filed with restricted
`public access.
`The requirement that a motion to seal must accompany the filing of a
`document with restricted public access is unambiguous. In accordance with
`
`5
`
`

`

`IPR2017-00060
`Patent 8,992,608 B2
`
`37 C.F.R. § 42.14, “[a] party intending a document or thing to be sealed
`shall file a motion to seal concurrent with the filing of the document or thing
`to be sealed” (emphasis added). Our regulations clearly state that the
`“[r]ecord of a proceeding, including documents and things, shall be made
`available to the public, except as otherwise ordered.” 37 C.F.R. § 42.14. To
`this end, as set forth in the Board’s default protective order:
`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. The nonconfidential version of the
`submission shall clearly indicate the locations of information that
`has been redacted. The confidential version of the submission
`shall be filed under seal.
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,771. Similarly, as set
`forth in the Case Management and Scheduling Order:
`The Board has a strong interest in promoting public accessibility
`to the proceedings. If a party seeks to redact information from
`documents filed in this proceeding in accordance with a
`protective order, the redactions must be limited to isolated
`passages consisting entirely of confidential information, and the
`thrust of the underlying argument or evidence must remain
`clearly discernible.
`Paper 8, 3. Thus, the default rule is that all papers filed in an inter partes
`review are open and available for access by the public; only “confidential
`information” may be protected from disclosure upon a showing of good
`cause. See 35 U.S.C. §§ 316(a)(1) and 316(a)(7); 37 C.F.R. §§ 42.14 and
`42.54(a). Generally, the party asserting confidentiality bears the burden of
`showing that the relief requested should be granted. 37 C.F.R. § 42.20(c).
`6
`
`

`

`IPR2017-00060
`Patent 8,992,608 B2
`
`This includes showing that the information is truly confidential, and that
`such confidentiality outweighs the strong public interest in having an open
`record.3 A motion to seal will not be granted if based only on broad or
`generic contentions of confidentiality. Moreover, information subject to a
`protective order will become public if identified in a final written decision in
`this proceeding, and a motion to expunge information will not necessarily
`prevail over the public interest in maintaining a complete and
`understandable file history. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48,761. As such, the Parties are encouraged to stipulate to facts or
`use other means to present evidence without the need for a motion to seal.
`Counsel should be well-aware of the procedures for filing confidential
`documents, including the requirement for a motion to seal. Counsel are
`directed to review the Office Patent Trial Practice Guide, the Case
`Management and Scheduling Order, and the Board’s regulations to assure
`adherence to such procedural requirements. Further, Patent Owner or
`Petitioner shall file a motion to seal addressing every document filed with
`
`
`3 To the extent further guidance is necessary, we make the following
`observations. Few, if any, exhibits, even business records, should ever be
`confidential in their entirety, without good cause to show that all of the
`information contained therein is truly sensitive. See 37 C.F.R. § 42.54(a).
`Even business records (e.g., sales forecasts, license agreements) often
`contain some non-confidential information serving to identify the nature of
`confidential portions of the exhibit. Conversely, deposition transcripts,
`declarations, and papers containing a party’s arguments will generally
`contain substantial non-confidential portions. In all cases, the Motion to Seal
`must set forth the reasons why the information redacted from the non-
`confidential version is confidential and should not be made publicly
`available. Patent Office Trial Practice Guide, 77 Fed. Reg. at 48,771
`(emphasis added).
`
`7
`
`

`

`IPR2017-00060
`Patent 8,992,608 B2
`
`restricted public access by July 28, 2017, for which confidentiality is sought
`to be maintained. A document will be provisionally sealed on receipt of a
`motion to seal and remain so pending the outcome of the decision on the
`motion. 37 C.F.R. §§ 42.14. Any document filed with restricted public
`access not addressed in a motion to seal and not identified to be expunged by
`that date will be designated public.
`It is
`ORDERED that the Joint Motion for Entry of Stipulated Protective
`Order is denied without prejudice;
`FURTHER ORDERED that the Parties are authorized to file a motion
`for entry of a substitute stipulated protective order on, or before, July 28,
`2017, providing good cause for entry of such order, and shall not make the
`stipulated protective order dependent on any other agreement of the Parties,
`in accordance with the foregoing guidance;
`FURTHER ORDERED that, in the absence of a substitute stipulated
`protective order granted by the Board, the Board’s Default Protective Order
`shall govern the conduct of the proceedings unless otherwise modified;
`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;
`FURTHER ORDERED that Petitioner shall file, on or before July 28,
`2017, a motion to seal addressing each and every paper or exhibit Petitioner
`seeks to maintain as confidential as filed with the Board with the
`
`8
`
`

`

`IPR2017-00060
`Patent 8,992,608 B2
`
`understanding that any document filed with restricted public access not
`addressed in a motion to seal by that date will be designated public; and
`FURTHER ORDERED that on, or before, July 28, 2017, with respect
`to each and every paper or exhibit filed with restricted public access, the
`Parties shall:
`(1) file a non-confidential, redacted version of each exhibit or
`paper sought to be maintained as confidential;
`(2) notify the Board to specifically identify each exhibit or
`paper, if any, no longer sought to be maintained as confidential; and
`(3) notify the Board to specifically identify each exhibit or
`paper, if any, sought to be expunged and no longer relied upon in this
`proceeding; and
`FURTHER ORDERED that the Parties are instructed to meet and
`confer in good faith as necessary to give effect to the foregoing instructions.
`
`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
`
`