Trials@uspto.gov Paper 19
`571-272-7822
`Entered: September 25, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`DECISION
`Motions to Seal
`37 C.F.R. §§ 42.1 and 42.54
`
`
`
`
`
`
`
`571-272-7822
`Entered: September 25, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`DECISION
`Motions to Seal
`37 C.F.R. §§ 42.1 and 42.54
`
`
`
`
`
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`
`Cosmo Technologies Limited (“Patent Owner”) filed a motion to seal,
`along with a request for entry of the Board’s default protective order.
`Paper 9. Mylan Pharmaceuticals Inc. (“Petitioner”) also filed a motion to
`seal and a motion to expunge. Papers 11, 12, respectively. Each motion is
`discussed in detail in turn below.
`Discussion
`The Board’s standards for granting motions to seal are discussed in
`Garmin International v. Cuozzo Speed Technologies, LLC, IPR2012-00001
`(PTAB Mar. 14, 2013) (Paper 34). In summary, there is a strong public
`policy for making all information filed in inter partes review proceedings
`open to the public, especially because the proceeding determines the
`patentability of claims in an issued patent. Id. at slip op. 1–2. Under 35
`U.S.C. § 316(a)(1) and 37 C.F.R. § 42.14, the default rule is that all papers
`filed in an inter partes review are open and available for access by the
`public. A party, however, may file a concurrent motion to seal, and the
`information at issue is sealed pending the outcome of the motion. It is only
`“confidential information” that is protected from disclosure. 35 U.S.C. §
`316(a)(7); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for
`good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the
`burden of proof in showing entitlement to the requested relief, and must
`explain why the information sought to be sealed constitutes confidential
`information. 37 C.F.R. § 42.20(c).
`We remind the parties of the expectation that confidential information
`relied upon or identified in a final written decision will be made public. See
`Office Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012).
`
`
`
`2
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`Confidential information that is subject to a protective order ordinarily
`becomes public 45 days after final judgment in a trial. A party seeking to
`maintain the confidentiality of the information may file a motion to expunge
`the information from the record prior to the information becoming public.
`37 C.F.R. § 42.56.
`
`a. Parties’ Motions
`Patent Owner filed a motion to seal its Patent Owner Preliminary
`Response and Exhibit 2025, a nonpublic trial transcript in Cosmo
`Technologies Ltd. v. Actavis Laboratories FL, No. 15-164-LP (D. De. May
`23, 2017) (“Actavis Litigation”). Paper 9, 2–3. Patent Owner has filed a
`redacted version of its Preliminary Response. See Paper 8. The motion
`includes a request to enter the Board’s default protective order. Paper 9, 1.
`Petitioner responded that because it was not a party to Actavis
`Litigation, it takes no position as to “whether Exhibit 2025 and any
`description of Exhibit 2025 by Patent Owner in its Preliminary Response
`contains confidential information,” and therefore does not oppose Patent
`Owner’s motion. Paper 16, 1–2. Petitioner does, however, file its own
`motion to seal asserting that, in addition to the passages that Patent Owner
`asserts should be redacted, the following additional passages of Patent
`Owner’s Preliminary Response contain confidential information and should
`also be redacted. Paper 11, 3.
`The portion of the sentence on page 6, footnote 2, the
`parenthetical at line 6 that is between the phrases “prove
`infringement” and “is nevertheless”;
`
`The portion of the sentence on page 36 lines 6-8 that is
`between the phrases “in district court litigation—” and “—
`should be rejected”; and
`
`
`
`3
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`
`
`The portion of the sentence on page 51 lines 9-11 that is
`between the phrases “in district court litigation—” and “—
`should be rejected.”
`Id. Petitioner states, “[t]he identified portions reveal confidential
`information regarding Petitioner’s ANDA product—specifically how
`the active ingredient in Petitioner’s ANDA product is distributed.” Id.
`Patent Owner responds that although it does not believe that it
`revealed Petitioner’s confidential information in its redacted
`Preliminary Response, because Petitioner’s motion to seal “is
`unrelated to Patent Owner’s information, and in the interest of
`efficiency, Patent Owner does not oppose Petitioner’s motion to seal.”
`Paper 13, 1.
`Petitioner also files a motion to expunge Patent Owner’s redacted
`version of its Preliminary Response (Paper 8) from the record and requests
`that we enter a replacement redacted preliminary response with the
`additional proposed redactions set forth above. Paper 12. Patent Owner
`opposes Petitioner’s motion to expunge as improper at this stage of the
`proceeding. Paper 14, 2.
`
`b. Analysis
`Patent Owner represents that Petitioner does not oppose the motion
`for entry of the Board’s default protective order, and in fact, agreed to adopt
`the Board’s default protective order. Paper 9, 2. Patent Owner provided the
`default protective order as Addendum A to its motion. Paper 9,
`Addendum A. We grant Patent Owner’s request to enter the Board’s default
`protective order.
`
`
`
`4
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`
`We also find that Patent Owner has established good cause to seal
`Exhibit 2025 based on its representation that it is a nonpublic document, and
`to seal the unredacted Preliminary Response (Paper 7) that Patent Owner
`asserts quotes the nonpublic transcript. We grant Patent’s Owner’s motion
`to seal both of these documents. In reviewing the transcript (Ex. 2025),
`however, it appears that it was a hearing held in open court and that not all
`of the information contained in the transcript is confidential. Therefore, we
`order Patent Owner to file a redacted, public version of this transcript.
`Upon receipt of Petitioner’s request to file a motion to expunge, we
`sealed the redacted Preliminary Response submitted by Patent Owner
`(Paper 8) because Petitioner stated that unredacted portions of this public
`document contains its confidential information. Petitioner represents that
`this confidential information relates to its ANDA product. Paper 11, 2.
`Petitioner represents that “[n]o information from the ANDA has been made
`public by Petitioner or by the FDA, and it is not otherwise available to the
`public.” Id. We find that Petitioner has shown good cause to seal the
`additional portions of Patent Owner’s Preliminary Response. We therefore
`grant Petitioner’s motion to seal, and order Patent Owner to file a redacted,
`public version of its Preliminary Response redacting these additional
`portions Petitioner identifies as confidential.
`We do not, however, find that Patent Owner’s redacted Preliminary
`Response should be expunged. Patent Owner appropriately filed its
`Preliminary Response in accordance with the Board’s rules and orders.
`Because it is currently sealed, and will remain so pending resolution of this
`inter partes proceeding, the confidentiality of the information Petitioner
`asserts is not public will be maintained. Thus, we do not need to expunge it
`
`
`
`5
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`from the record at this point in the proceeding. See 37 C.F.R. § 42.7
`(describing expunging papers that are filed without authorization or contrary
`to Board order); 37 C.F.R. §42.56 (describing expunging confidential
`information upon motion after denial of a petition to institute or after final
`judgment). We deny Petitioner’s motion to expunge.
`
`
`ORDER
`In consideration of the foregoing, it is
`ORDERED that the Board’s default Protective Order is hereby
`entered and shall govern the conduct of this proceeding unless otherwise
`modified;
`FURTHER ORDERED that Patent Owner’s Motion to Seal (Paper 9)
`is granted;
`FURTHER ORDERED that Petitioner’s Motion to Seal (Paper 11) is
`granted;
`FURTHER ORDERED that Petitioner’s Motion to Expunge (Paper
`12) is denied;
`FURTHER ORDERED that the following documents shall be sealed
`as “Board and Parties Only,” and will be kept under seal unless and until we
`refer to material in the papers or exhibits in a final written decision: Patent
`Owner’s Preliminary Responses (Papers 7, 8) and Exhibit 2025.
`FURTHER ORDERED that Patent Owner has ten business days to
`file a redacted, public version of Exhibit 2025; and
`FURTHER ORDERED that Patent Owner has ten business days to
`file a redacted, public version Preliminary Response that includes the
`redactions Petitioner sought in its Motion to Seal.
`
`
`
`6
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`For PETITIONER:
`
`Jitendra Malik
`H. James Abe
`Lance Soderstrom
`Joseph Janusz
`ALSTON & BIRD LLP
`jitty.malik@alston.com
`james.abe@alston.com
`lance.soderstrom@alston.com
`joe.janusz@alston.com
`
`
`For PATENT OWNER:
`
`Gary Frischling
`Yite Lu
`IRELL & MANELLA LLP
`gfrischling@irell.com
`yjlu@irell.com
`
`
`
`
`
`7
`
`
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