`Tel: 571-272-7822
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`Paper 37
`Entered: June 5, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TARO PHARMACEUTICALS U.S.A., INC.,
`Petitioner,
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`v.
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`APOTEX TECHNOLOGIES, INC.,
`Patent Owner.
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`Case IPR2017-01446
`Patent 7,049,328 B2
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`
`Before LORA M. GREEN, JEFFREY N. FREDMAN, and
`ZHENYU YANG, Administrative Patent Judges.
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`FREDMAN, Administrative Patent Judge.
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`DECISION
`Granting Patent Owner’s Second Motion to Seal
`37 C.F.R. § 42.54
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`I.
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`INTRODUCTION
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`With authorization of the Board, Paper 18, Taro Pharmaceuticals
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`U.S.A., Inc. (“Petitioner”) filed redacted and public versions of a motion for
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`additional discovery relating to Exhibits 1037–1045 and 1047–1049. Papers
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`22, 24 (“Mot.”). Apotex Technologies, Inc. (“Patent Owner”) filed redacted
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`IPR2017-01446
`Patent 7,049,328 B2
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`and public versions of an opposition to the Motion. Papers 29, 30 (“Opp.”).
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`In the motion, Petitioner explains that these documents were generated
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`during litigation in parallel litigation related to the ’328 patent, ApoPharma
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`Inc. v. Taro Pharmaceutical Industries, Ltd., No. 2:16-cv-00528, currently
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`pending in the District Court for the Eastern District of Texas – Marshall
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`Division. Concurrently, Patent Owner moved to seal Exhibits 1037–1045
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`and 1047–1049. Paper 31.
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`We granted Petitioner’s Motion for Additional Discovery but denied
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`the parties’ Motions to Seal without prejudice. Papers 33, 34. We
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`authorized either party to file a renewed Motion to Seal that provided a
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`justification sufficient to establish good cause for sealing Exhibits 1037–
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`1045 and 1047–1049.
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`Patent Owner’s unopposed Second Motion to Seal was filed May 25,
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`2018. Paper 35. In the first Motion to Seal, the parties agreed to a Modified
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`Default Standing Protective Order, which we already found acceptable.
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`Paper 34, Ex. 1051. For the reasons that follow, we grant Petitioner’s
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`Second Motion to Seal.
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`II. ANALYSIS
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`The “good cause” standard for granting a motion to seal reflects the
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`strong public policy for making all information in an inter partes review
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`open to the public. 37 C.F.R. § 42.54. “Good cause” for sealing is
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`established by a “sufficient explanation as to why” the “information sought
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`to be sealed is confidential information” (Garmin Int’l v. Cuozzo Speed
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`Techs., LLC, Case IPR2012–00001 (PTAB Mar. 14, 2013) (Paper 34, 3), a
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`demonstration that the information is not “excessively redacted”, and a
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`showing that, on balance, the strong “public[ ] interest in maintaining a
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`IPR2017-01446
`Patent 7,049,328 B2
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`complete and understandable record” is outweighed by “the harm to a party,
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`by disclosure of information” and “the need of either party to rely
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`specifically on the information at issue.” (Corning Optical Communications
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`RF, LLC, v. PPC Broadband, Inc., Case IPR2014–00440 (PTAB April 6,
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`14, and 17, 2015) (Paper 46, 2; 47, 2–3)
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`In the Second Motion to Seal, Patent Owner explains that Exhibit
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`1037 concerns “Apotex’s confidential business information related to NDA
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`No. 21-825 for Ferriprox®, including information related to the research and
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`development of Ferriprox®, and the clinical testing of Ferriprox®.” Paper
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`35, 2. Patent Owner also explains that Exhibit 1037 relates to “a scientific
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`dispute between, inter alia, Dr. Nancy Olivieri and Apotex” that resulted in
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`“a libel suit filed by Dr. Olivieri against Apotex for defamation” which was
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`“resolved pursuant to a settlement agreement, the terms of which are
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`confidential.” Paper 35, 2–3. Patent Owner similarly explains that Exhibits
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`1038–1041 “are confidential internal email communications between Apotex
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`employees that relate to the scientific dispute between Apotex and Dr.
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`Nancy Olivieri” and that Patent Owner “has significant concerns that public
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`disclosure of Exhibits 1038-1041 may be in violation of the terms of the
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`confidential settlement agreement.” Paper 35, 3–4. Patent Owner explains
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`that Exhibits 1042, 1043, and 1047–1049 also relate to a “confidential NDA
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`No. 21-825 that was filed with FDA.” Paper 35, 4–5.
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`Patent Owner explains that because the “documents containing
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`sensitive information related to the dispute between Dr. Olivieri and
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`Apotex—which was the subject of litigation(s) (including a libel lawsuit),”
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`disclosure of those documents “could cause substantial harm.” Paper 35, 5–
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`6.
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`IPR2017-01446
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`Considering the stated confidentiality of these exhibits, along with our
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`independent review, the Board conditionally grants the Second Motion to
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`Seal (Paper 35) for the duration of this proceeding. We caution the parties
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`that if the Board’s final written decision substantively relies on any
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`information in a sealed exhibit, that exhibit may be unsealed by an Order of
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`the Board.
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`We encourage the parties, if possible, to jointly create and submit
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`summary documents of Exhibits 1037–1045 and 1047–1049 that contain the
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`information necessary for the parties to make their arguments, so that the
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`Board could refer to the summaries in its final written decision if necessary,
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`rather than potentially making an entire document available to the public.
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`III. CONCLUSION
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`For the reasons discussed above, the Second Motion to Seal is
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`granted.
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`Accordingly, it is:
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`IV. ORDER
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`ORDERED that with respect to Exhibits 1037–1045 and 1047–1049,
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`the Second Motion to Seal (Paper 35) is granted.
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`FURTHER ORDERED that the entered protective order (Exhibit
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`1051) governs the treatment and filing of confidential information in this
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`proceeding.
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`4
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`IPR2017-01446
`Patent 7,049,328 B2
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`PETITIONER:
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`Huiya Wu
`Robert V. Cerwinski
`Sara Fink
`GOODWIN PROCTER LLP
`hwu@goodwinlaw.com
`rcerwinski@goodwinlaw.com
`sfink@goodwinlaw.com
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`PATENT OWNER:
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`W. Blake Coblentz
`Aaron S. Lukas
`COZEN O’CONNOR
`WCoblentz@cozen.com
`ALukas@cozen.com
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