Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 37
`Entered: June 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`TARO PHARMACEUTICALS U.S.A., INC.,
`Petitioner,
`
`v.
`
`APOTEX TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2017-01446
`Patent 7,049,328 B2
`
`
`Before LORA M. GREEN, JEFFREY N. FREDMAN, and
`ZHENYU YANG, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Patent Owner’s Second Motion to Seal
`37 C.F.R. § 42.54
`
`
`
`I.
`
`INTRODUCTION
`
`With authorization of the Board, Paper 18, Taro Pharmaceuticals
`
`U.S.A., Inc. (“Petitioner”) filed redacted and public versions of a motion for
`
`additional discovery relating to Exhibits 1037–1045 and 1047–1049. Papers
`
`22, 24 (“Mot.”). Apotex Technologies, Inc. (“Patent Owner”) filed redacted
`
`
`Tel: 571-272-7822
`
`Paper 37
`Entered: June 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`TARO PHARMACEUTICALS U.S.A., INC.,
`Petitioner,
`
`v.
`
`APOTEX TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2017-01446
`Patent 7,049,328 B2
`
`
`Before LORA M. GREEN, JEFFREY N. FREDMAN, and
`ZHENYU YANG, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Patent Owner’s Second Motion to Seal
`37 C.F.R. § 42.54
`
`
`
`I.
`
`INTRODUCTION
`
`With authorization of the Board, Paper 18, Taro Pharmaceuticals
`
`U.S.A., Inc. (“Petitioner”) filed redacted and public versions of a motion for
`
`additional discovery relating to Exhibits 1037–1045 and 1047–1049. Papers
`
`22, 24 (“Mot.”). Apotex Technologies, Inc. (“Patent Owner”) filed redacted
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`and public versions of an opposition to the Motion. Papers 29, 30 (“Opp.”).
`
`In the motion, Petitioner explains that these documents were generated
`
`during litigation in parallel litigation related to the ’328 patent, ApoPharma
`
`Inc. v. Taro Pharmaceutical Industries, Ltd., No. 2:16-cv-00528, currently
`
`pending in the District Court for the Eastern District of Texas – Marshall
`
`Division. Concurrently, Patent Owner moved to seal Exhibits 1037–1045
`
`and 1047–1049. Paper 31.
`
`We granted Petitioner’s Motion for Additional Discovery but denied
`
`the parties’ Motions to Seal without prejudice. Papers 33, 34. We
`
`authorized either party to file a renewed Motion to Seal that provided a
`
`justification sufficient to establish good cause for sealing Exhibits 1037–
`
`1045 and 1047–1049.
`
`Patent Owner’s unopposed Second Motion to Seal was filed May 25,
`
`2018. Paper 35. In the first Motion to Seal, the parties agreed to a Modified
`
`Default Standing Protective Order, which we already found acceptable.
`
`Paper 34, Ex. 1051. For the reasons that follow, we grant Petitioner’s
`
`Second Motion to Seal.
`
`II. ANALYSIS
`
`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. “Good cause” for sealing is
`
`established by a “sufficient explanation as to why” the “information sought
`
`to be sealed is confidential information” (Garmin Int’l v. Cuozzo Speed
`
`Techs., LLC, Case IPR2012–00001 (PTAB Mar. 14, 2013) (Paper 34, 3), a
`
`demonstration that the information is not “excessively redacted”, and a
`
`showing that, on balance, the strong “public[ ] interest in maintaining a
`
`2
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`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 information at issue.” (Corning Optical Communications
`
`RF, LLC, v. PPC Broadband, Inc., Case IPR2014–00440 (PTAB April 6,
`
`14, and 17, 2015) (Paper 46, 2; 47, 2–3)
`
`In the Second Motion to Seal, Patent Owner explains that Exhibit
`
`1037 concerns “Apotex’s confidential business information related to NDA
`
`No. 21-825 for Ferriprox®, including information related to the research and
`
`development of Ferriprox®, and the clinical testing of Ferriprox®.” Paper
`
`35, 2. Patent Owner also explains that Exhibit 1037 relates to “a scientific
`
`dispute between, inter alia, Dr. Nancy Olivieri and Apotex” that resulted in
`
`“a libel suit filed by Dr. Olivieri against Apotex for defamation” which was
`
`“resolved pursuant to a settlement agreement, the terms of which are
`
`confidential.” Paper 35, 2–3. Patent Owner similarly explains that Exhibits
`
`1038–1041 “are confidential internal email communications between Apotex
`
`employees that relate to the scientific dispute between Apotex and Dr.
`
`Nancy Olivieri” and that Patent Owner “has significant concerns that public
`
`disclosure of Exhibits 1038-1041 may be in violation of the terms of the
`
`confidential settlement agreement.” Paper 35, 3–4. Patent Owner explains
`
`that Exhibits 1042, 1043, and 1047–1049 also relate to a “confidential NDA
`
`No. 21-825 that was filed with FDA.” Paper 35, 4–5.
`
`Patent Owner explains that because the “documents containing
`
`sensitive information related to the dispute between Dr. Olivieri and
`
`Apotex—which was the subject of litigation(s) (including a libel lawsuit),”
`
`disclosure of those documents “could cause substantial harm.” Paper 35, 5–
`
`6.
`
`3
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`
`Considering the stated confidentiality of these exhibits, along with our
`
`independent review, the Board conditionally grants the Second Motion to
`
`Seal (Paper 35) for the duration of this proceeding. We caution the parties
`
`that if the Board’s final written decision substantively relies on any
`
`information in a sealed exhibit, that exhibit may be unsealed by an Order of
`
`the Board.
`
`We encourage the parties, if possible, to jointly create and submit
`
`summary documents of Exhibits 1037–1045 and 1047–1049 that contain the
`
`information necessary for the parties to make their arguments, so that the
`
`Board could refer to the summaries in its final written decision if necessary,
`
`rather than potentially making an entire document available to the public.
`
`
`
`III. CONCLUSION
`
`For the reasons discussed above, the Second Motion to Seal is
`
`granted.
`
`Accordingly, it is:
`
`IV. ORDER
`
`ORDERED that with respect to Exhibits 1037–1045 and 1047–1049,
`
`the Second Motion to Seal (Paper 35) is granted.
`
`FURTHER ORDERED that the entered protective order (Exhibit
`
`1051) governs the treatment and filing of confidential information in this
`
`proceeding.
`
`4
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`PETITIONER:
`
`Huiya Wu
`Robert V. Cerwinski
`Sara Fink
`GOODWIN PROCTER LLP
`hwu@goodwinlaw.com
`rcerwinski@goodwinlaw.com
`sfink@goodwinlaw.com
`
`
`PATENT OWNER:
`
`W. Blake Coblentz
`Aaron S. Lukas
`COZEN O’CONNOR
`WCoblentz@cozen.com
`ALukas@cozen.com
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
