Trials@uspto.gov
`571.272.7822
`
`Paper No. 27
` Filed: January 19, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`ALCON RESEARCH, LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-01053
`Patent 8,268,299 B2
`_______________
`
`
`Before GRACE KARAFFA OBERMANN and SUSAN L. C. MITCHELL,
`Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER
`Denying without Prejudice Patent Owner’s
`Motion to Seal and for Entry of Proposed Protective Order
`35 U.S.C. § 316; 37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`
`
`
`571.272.7822
`
`Paper No. 27
` Filed: January 19, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`ALCON RESEARCH, LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-01053
`Patent 8,268,299 B2
`_______________
`
`
`Before GRACE KARAFFA OBERMANN and SUSAN L. C. MITCHELL,
`Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER
`Denying without Prejudice Patent Owner’s
`Motion to Seal and for Entry of Proposed Protective Order
`35 U.S.C. § 316; 37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`
`
`
`
`IPR2017-01053
`Patent 8,268,299 B2
`
`
`
`On December 22, 2017, Patent Owner filed a Motion to Seal (directed
`to Exhibits 2008–2022, 2029, and 2040–2058) and for Entry of Proposed
`Protective Order. Paper 24 (“Motion” or “Mot.”). In response to a Board
`inquiry, Petitioner advised that it would file no opposition. See Ex. 3001
`(email communication). For reasons set forth below, the Motion is denied
`without prejudice subject to the conditions explained in this Order.
`
`Motion for Entry of Protective Order
`Our rules provide for entry of a protective order when necessary to
`protect confidential information filed in a proceeding. See 37 C.F.R.
`§§ 42.14, 42.54. As explained in the next section, the Motion does not
`demonstrate “good cause” for sealing any of the exhibits that are the subject
`of the Motion. Accordingly, we deny without prejudice the request for entry
`of a protective order. The exhibits sought to be sealed in the Motion,
`however, shall continue to be provisionally sealed until such time as the
`Board resolves a second motion to seal, a request to unseal, or until the
`exhibits are expunged pursuant to the guidance in this Order. See 37 C.F.R.
`§ 42.14 (discussing Board’s authority to provisionally seal information).
`
`Motion to Seal
`Patent Owner seeks to seal Exhibits 2008–2022, 2029, and 2040–
`2058. Mot. 2. In an inter partes review, the moving party bears the burden
`of showing that the relief requested should be granted. 37 C.F.R. § 42.20(c).
`A party moving to seal must show “good cause” for the relief requested. 37
`C.F.R. § 42.54(a). We direct the parties to prior Board decisions for
`guidance on how to establish “good cause” to seal a document or thing in an
`inter partes review. See Garmin Int’l v. Cuozzo Speed Techs., LLC, Case
`IPR2012-00001 (PTAB Mar. 14, 2013) (Paper 34) (“IPR001”) and Corning
`
`2
`
`
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`Optical Communications RF, LLC, v. PPC Broadband, Inc., Case IPR2014-
`00440 (PTAB April 6, 14, and 17, 2015) (Papers 46, 47, 49) (“IPR440”).
`For reasons that follow, we determine that the Motion fails to show
`“good cause” for sealing Exhibits 2008–2022, 2029, and 2040–2058.
`37 C.F.R. § 42.54(a). Accordingly, the Motion is denied without prejudice
`to file a second motion subject to the conditions set forth below.
`1. The “Good Cause” Standard
`The “good cause” standard for granting a motion to seal reflects the
`strong public policy for making all information in an inter partes review
`open to the public. 37 C.F.R. § 42.54; see IPR001, Paper 34, 3. We are
`mindful that, in district court, a party routinely will determine (by marking
`or stamping a document “confidential”) whether a document is produced
`under the terms of a district court protective order. By contrast, in an inter
`partes review, “the default rule is that all papers . . . are open and available
`for access by the public.” IPR001, Paper 34, 2; see IPR440, Paper 46, 3
`(explaining that, unlike in a civil action in district court or an investigation
`before the U.S. International Trade Commission, motions to seal in an inter
`partes review are made “at trial”; therefore, information will be sealed by
`only upon a showing of “good cause”).
` “Good cause” for sealing is established by a “sufficient explanation
`as to why” the “information sought to be sealed is confidential information”
`(IPR001, Paper 34, 3), a demonstration that the information is not
`“excessively redacted” (IPR440, Paper 46, 2), and a showing that, on
`balance, the strong “public[] interest in maintaining a complete and
`understandable record” is outweighed by “the harm to a party, by disclosure
`of information” and “the need of either party to rely specifically on the
`
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`information at issue.” IPR440, Paper 47, 3 (footnote omitted).
`Consequently, a movant to seal must demonstrate adequately that (1) the
`information sought to be sealed is truly confidential, (2) a concrete harm
`would result upon public disclosure, (3) there exists a genuine need to rely in
`the trial on the specific information sought to be sealed, and (4), on balance,
`an interest in maintaining confidentiality outweighs the strong public interest
`in having an open record. 37 C.F.R. § 42.54(a); IPR440, Paper 47, 2–3;
`IPR440, Paper 49, 2.
`2. Exhibits 2008–2022
`The Motion avers that Exhibits 2008–2022 are “confidential
`laboratory notebooks” and “adjunctive data used by [Patent Owner’s]
`employees to record their research and development work.” Mot. 2. The
`Motion, however, lacks explanation of how these exhibits relate to any
`disputed issue of fact, much less why they are necessary to a specific
`position taken by a party in this proceeding. On that point, Patent Owner
`incongruously asserts that “the data on which [Patent Owner] relies in this
`proceeding are disclosed in public patent specifications.” Mot. 2.
`Even if we accept that the information reflected in these exhibits has
`never been disclosed to the public, the Motion fails to describe adequately a
`harm that will result in the event of disclosure. In that regard, the Motion
`stops short of stating that public disclosure of Exhibits 2008–2022 will result
`in any concrete injury. Instead, the Motion avers that disclosure “has the
`potential to cause” competitive harm. Id. at 3.
`Having failed to identify sufficiently either a harm incident to
`disclosure or a reason why the information is necessary in this trial, the
`Motion fails also to balance “the public’s interest in maintaining a complete
`
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`and understandable record” against a “harm to a party” incident to
`“disclosure of information” or “the need of either party to rely specifically
`on the information at issue.” IPR440, Paper 47, 3 (footnote omitted). In
`addition, no corresponding public redacted versions of these exhibits were
`filed with the Motion. The Motion is silent on that point, providing no
`reason why the exhibits should be sealed in their entirety.
`3. Exhibit 2029
`Patent Owner seeks to seal portions of Exhibit 2029, which is the
`declaration of Dr. Henry Grabowski. Mot. 4. In an attempt to make out the
`“good cause” standard, the Motion refers us to arguments made in
`connection with Exhibits 2040-2058. For reasons that follow, however, the
`Motion fails to make out “good cause” for sealing Exhibits 2040–2058. Our
`analysis below applies with equal force to Exhibit 2029.
`4. Exhibits 2040–2058
`The Motion avers that Exhibits 2040–2058 “summarize data provided
`to [Patent Owner] by IMS Health/IQVIA and Encuity Research”; namely,
`two entities that are non-parties in this proceeding. Mot. 3. Patent Owner
`asserts no ownership interest in the information sought to be sealed, and the
`Motion advances no other information sufficient to show that Patent Owner
`is competent to establish that the exhibits reflect truly confidential
`information. Nor does the Motion establish that Patent Owner is competent
`to address any harm that would inure to the owners of the information, in the
`event that the exhibits are disclosed to the public. See generally Mot.
`The Motion suggests that the owners of the information freely permit
`disclosure to members of the public who pay a fee. Mot. 3–4 (reflecting
`“undersigned counsel’s understanding that” the owners of the information
`
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`“charge customers for these data”). Although counsel purports to
`understand that the owners “would be harmed by the public disclosure of
`these data without a confidentiality agreement,” the Motion sets forth no
`objective evidence sufficient to substantiate that bare attorney argument. Id.
`at 4. Consequently, the Motion fails to show sufficiently that any harm
`would result from disclosure. Nor does the Motion detail any genuine need
`to use the information in this proceeding, much less explain how any interest
`in maintaining the alleged confidentiality outweighs the strong public policy
`that favors an open record in this inter partes review. See generally Mot. In
`addition, no corresponding public redacted versions of these exhibits were
`filed with the Motion. The Motion is silent on that point, providing no
`reason why the exhibits should be sealed in their entirety.
`5. Certification of Counsel
`“A motion to seal is required to include a proposed protective order
`and a certification that the moving party has in good faith conferred or
`attempted to confer with the opposing party in an effort to come to an
`agreement as to the scope of the proposed protective order for this inter
`partes review.” IPR001, Paper 34, 3 (citing 37 C.F.R. § 42.54). The Motion
`states that Patent Owner “wrote to” Petitioner’s counsel regarding “consent
`to the entry of the proposed protective order, but did not receive a response
`before filing this motion.” Mot. 5. That lack of response is unsurprising,
`given that Patent Owner wrote to Petitioner “on December 22, 2017,” the
`very same day that the Motion was filed. Id.
`The Motion was due under no time deadline that made impractical a
`good faith effort to secure a conference with counsel. Yet the Board was
`burdened to ascertain on its own whether Petitioner planned to file an
`
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`opposition to the Motion. See Ex. 3001. Any Second Motion shall include a
`certification that provides the details of Patent Owner’s good faith efforts to
`confer with Petitioner pursuant to 37 C.F.R. § 42.54(a).
`6. Authorizing a Second Motion and a Request to Unseal
`“The Board has limited resources” to deal with repeated motions to
`
`seal. IPR440, Paper 47, 2 (“there is not an unlimited number of tries to get
`the motion granted”). Nevertheless, in the interests of fairness, we authorize
`Patent Owner to file a second motion to seal, accompanied by a request for
`entry of a protective order, directed to Exhibits 2008–2022, 2029, and 2040–
`2058 (“Second Motion to Seal”) subject to the following conditions.
`The Second Motion to Seal shall be limited to five (5) pages and must
`be filed within five (5) business days of entry of this Order. Further, the
`Second Motion to Seal shall address the “good cause” standard as explained
`in this Order. In addition, the Second Motion to Seal shall include a
`certification that provides details of Patent Owner’s good faith efforts to
`confer with Petitioner pursuant to 37 C.F.R. § 42.54(a). At minimum, the
`Board would appreciate an indication whether Petitioner plans to file an
`opposition to the Second Motion to Seal.
`Within five (5) business days of the filing of any Second Motion to
`Seal, Petitioner is authorized file an opposition limited to addressing issues
`raised in the Second Motion to Seal. Petitioner’s opposition is limited to
`five (5) pages.
`In addition, Patent Owner is authorized to file, within five (5) business
`days of entry of this Order, a one-page paper (“Motion to Unseal”)
`requesting the Board to unseal any or all of Exhibits 2008–2022, 2029, and
`
`7
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`2040–2058, which shall result in their public disclosure and will permit both
`parties to rely on the unsealed exhibit(s) in this case.
`In the event that Patent Owner fails to file a timely Second Motion to
`Seal or Motion to Unseal with respect to any of Exhibits 2008–2022, 2029,
`or 2040–2058, then the exhibit(s) shall be expunged from the record. To the
`extent than any argument or evidence in a substantive brief relies on an
`expunged exhibit, that argument or evidence shall be accorded no weight in
`any final written decision entered in this proceeding.
`7. Notice of Possible Disclosure
`This Order shall place both parties on notice that a movant to seal in
`this proceeding shall assume the risk that its confidential information will
`become public if relied upon in a final written decision. Rules of Practice,
`77 Fed. Reg. No. 157, Part V at Section I.E.6. (Aug. 14, 2012) (“There is an
`expectation that information will be made public where the existence of the
`information . . . is identified in a final written decision following a trial.”).
`
`
`ORDER
`
`It is
`ORDERED that Patent Owner’s Motion to Seal and for Entry of
`Protective Order is denied without prejudice;
`FURTHER ORDERED that all parties are placed on notice that a
`movant to seal in this proceeding shall assume the risk that its confidential
`information will become public if relied upon in a final written decision;
`FURTHER ORDERED that Patent Owner is authorized to file a
`Second Motion to Seal subject to the conditions set forth in this Order for
`the purpose of requesting to seal Exhibits 2008–2022, 2029, and 2040–2058;
`
`8
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`
`FURTHER ORDERED that the Second Motion to Seal is limited to
`five (5) pages;
`FURTHER ORDERED that the Second Motion to Seal shall be filed
`within five (5) business days of entry of this Order;
`FURTHER ORDERED that the Second Motion to Seal shall address
`the “good cause” standard as explained in this Order;
`FURTHER ORDERED that the Second Motion to Seal shall be
`accompanied by a request for entry of a protective order;
`FURTHER ORDERED that the Second Motion to Seal shall include a
`certification that provides details of Patent Owner’s good faith efforts to
`confer with Petitioner pursuant to 37 C.F.R. § 42.54(a); and
`FURTHER ORDERED that Petitioner is authorized file an opposition
`to the Second Motion to Seal that is limited to addressing issues raised in the
`Second Motion to Seal;
`FURTHER ORDERED that any opposition shall be limited to five (5)
`pages;
`FURTHER ORDERED that any opposition shall be filed within five
`(5) business days of the filing of a Second Motion to Seal pursuant to this
`Order,
`FURTHER ORDERED that Patent Owner is authorized to file, within
`five (5) business days of entry of this Order, a one-page paper (titled
`“Motion to Unseal”) requesting to unseal any or all of Exhibits 2008–2022,
`2029, and 2040–2058, which shall result in their public disclosure and
`permit any party to rely on the unsealed exhibit(s) in this proceeding;
`FURTHER ORDERED that, in the event Patent Owner fails to file a
`timely Second Motion or Motion to Unseal with respect to any of
`
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`Exhibits 2008–2022, 2029, and 2040–2058, then the exhibit(s) shall be
`expunged from the record;
`FURTHER ORDERED that, to the extent any argument or evidence
`relies on an expunged exhibit, that argument or evidence shall be accorded
`no weight in any final written decision entered in this proceeding; and
`FURTHER ORDERED that no other briefing is authorized at this
`
`time.
`
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`IPR2017-01053
`Patent 8,268,299 B2
`
`
`
`For PETITIONER:
`
`Michael R. Houston, Ph.D.
`Joseph P. Meara, Ph.D.
`James P. McParland, Ph.D.
`FOLEY & LARDNER LLP
`mhouston@foley.com
`jmeara-pgp@foley.com
`jmcparland@foley.com
`
`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS LLC
`tliu@agpharm.com
`
`
`
`For PATENT OWNER:
`
`David Krinsky
`Christopher Suarez
`Adam Perlman
`Alexander Zolan
`WILLIAMS & CONNOLLY LLP
`dkrinsky@wc.com
`csuarez@wc.com
`aperlman@wc.com
`azolan@wc.com
`
`11
`
`
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