Paper 15
`
`Trials@uspto.gov
`571-272-7822 Entered: January 10, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VETERINARY ORTHOPEDIC IMPLANTS, INC.,
`Petitioner,
`
`v.
`
`DEPUY SYNTHES PRODUCTS, INC.,
`Patent Owner.
`_____________
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)1
`_______________
`
`Before HYUN J. JUNG, CHRISTOPHER G. PAULRAJ, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting In Part Patent Owner’s Unopposed Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each of the
`above-listed proceedings. Parties are not authorized to use this caption
`format absent permission of the Board.
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 10, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VETERINARY ORTHOPEDIC IMPLANTS, INC.,
`Petitioner,
`
`v.
`
`DEPUY SYNTHES PRODUCTS, INC.,
`Patent Owner.
`_____________
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)1
`_______________
`
`Before HYUN J. JUNG, CHRISTOPHER G. PAULRAJ, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting In Part Patent Owner’s Unopposed Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each of the
`above-listed proceedings. Parties are not authorized to use this caption
`format absent permission of the Board.
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`
`I.
`INTRODUCTION
`On October 25, 2019, Patent Owner filed an Unopposed Motion to
`Seal (Paper 9, “Motion” or “Mot.”) a confidential version of its Preliminary
`Response (Paper 8) and Exhibits 2100–2102 and 2104–2112.2 Patent Owner
`also moves to enter the proposed protective order filed in the Motion as
`Attachment A. Mot. 5–7. Patent Owner indicates Petitioner does not
`oppose the Motion. Mot. 3. For the reasons discussed below, Patent
`Owner’s Motion is granted-in-part.
`II. DISCUSSION
`The parties agreed to a Proposed Protective Order, which is entered in
`each of the above identified proceedings. Mot. 3, 5–7 (“Attachment A”).
`As provided under Rule 42.54(a), “[t]he Board may, for good cause,
`issue an order to protect a party from disclosing confidential information,”
`including forbidding the disclosure of protected information or specifying
`the terms under which such information may be disclosed. 37 C.F.R.
`§ 42.54(a). The Board also observes a strong policy in favor of making all
`information filed in inter partes review proceedings open to the public. See
`Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27,
`3–4 (PTAB Jan. 19, 2018) (informative).
`Under 37 C.F.R. § 42.14, the default rule is that all papers filed in
`such proceedings are available to the public. Only “confidential
`information” is subject to protection against public disclosure. 35 U.S.C.
`
`
`2 Unless otherwise noted, all citations are to the papers and exhibits filed in
`IPR2019-01331.
`
`2
`
`
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`§ 326(a)(7); 37 C.F.R. § 42.55. In that regard, as noted in the Office’s
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012):
`The rules aim to strike a balance between the public’s
`interest in maintaining a complete and understandable file
`history and the parties’ interest in protecting truly sensitive
`information
`
`
`***
`Confidential Information: The rules identify confidential
`information in a manner consistent with the Federal Rules of
`Civil Procedure 26(c)(1)(G), which provides for protective
`orders
`for
`trade secret or other confidential
`research,
`development, or commercial information. § 42.54.
`Patent Owner, as the moving party bears the burden of showing that
`the relief requested should be granted. 37 C.F.R. § 42.20(c). And the
`standard for granting Patent Owner’s requested relief is “good cause.” 37
`C.F.R. § 42.54(a); Argentum, Paper 27 at 3–4. To demonstrate “good
`cause,” Patent Owner must make a sufficient showing 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.
`Argentum, Paper 27 at 3–4; see also Corning Optical Communications RF,
`LLC, v. PPC Broadband, Inc., IPR2014-00440, Paper 46 at 2 (PTAB
`April 6, 2015) (requiring a showing that information has not been
`“excessively redacted”).
`Regarding Exhibits 2100–2102 and 2104–2111, Patent Owner states
`that these exhibits “reflect Patent Owner’s commercially sensitive product
`
`
`
`3
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`design files relating to the conception and reduction to practice of the
`challenged patent, including confidential information about Patent Owner’s
`internal research and development of its products, performance testing, and
`business information.” Mot. 2. Patent Owner asserts these Exhibits were
`“produced under ‘HIGHLY CONFIDENTIAL – ATTORNEY EYES
`ONLY’ or ‘Confidential’ (as marked) conditions in the related district court
`litigation,” and that “[d]isclosure of this information could result in
`competitive harm.” Id.
`Upon reviewing Exhibits 2101, 2102, and 2104–2111, which appear
`to contain confidential information in their entirety, and upon Patent
`Owner’s arguments regarding their confidential nature, we are persuaded
`that good cause exists to seal these Exhibits.3 We are also persuaded that
`good cause exists to seal Patent Owner’s confidential version of its
`Preliminary Response. Paper 8. Patent Owner filed a public, redacted
`version of its Preliminary Response, which appears to be tailored to redact
`only confidential information. Paper 7.
`Regarding Exhibit 2100 (“DuPuy Synthes’ Tenth Supplemental
`Objections and Responses to VOI’s First Set of Interrogatories (excerpted)”)
`and Exhibit 2112 (“Declaration of Timothy Horan”), however, we are
`unpersuaded that these documents contain only confidential information,
`
`
`3 In IPR2019-01331, Patent Owner filed Exhibit 2009 (“VOI’s Motion to
`Stay”) as Exhibit 2109, rather than what we presume was the intended
`“Sterilization Rationale/Adoption Question” document. The apparently
`correct document was filed as Exhibit 2109 in IPR2019-01332 and
`IPR2019-01333. Patent Owner is authorized to file a motion to expunge
`exhibit 2109 in IPR2019-01331 and refile the correct document.
`4
`
`
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`such that the entirety of the exhibits should be sealed. For example, the
`“General Objections” section of Exhibit 2100 does not appear to contain any
`commercially sensitive confidential information regarding Patent Owner’s
`products. See Exhibit 2100, 3–6. And although Patent Owner asserts that
`Exhibit 2112 discusses the confidential information contained in Exhibits
`2100–2102 and 2104–2111 (Mot. 2), Exhibit 2112 appears to contain at least
`some non-confidential information as well. For example, the public version
`of Patent Owner’s Preliminary Response states “a physical embodiment
`practicing or reflecting at least claims 1-9 was conceived and actually
`reduced to practice by August 8, 2005, and no later than August 11, 2005.”
`Paper 7, 43. Thus, at least the reduction to practice dates discussed in the
`public version of the Preliminary Response and in Exhibit 2112 appear to be
`non-confidential. Accordingly, we are not persuaded that good cause exists
`to seal Exhibits 2100 and 2112 in their entirety. Patent Owner is granted
`leave to file a Supplemental Motion to Seal that 1) explains the reasons, with
`particularity, why there is good cause to seal Exhibits 2100 and 2112 in their
`entirety, or 2) provides redacted versions of Exhibits 2100 and 2112 and
`explains why there is good cause to seal the redacted portions.
`III. ORDER
`
`It is
`ORDERED that Patent Owner’s Motion to Seal (Paper 9) in each of
`the above-identified cases is granted with respect to Patent Owner’s
`Preliminary Response (Paper 8) and Exhibits 2101, 2102, and 2104–2111,
`and is denied without prejudice with respect to Exhibits 2100 and 2112;
`
`
`
`5
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`FURTHER ORDERED that the agreed Proposed Protective Order
`(Paper 9, Attachment A) is entered in each of the above-identified
`proceedings;
`FURTHER ORDERED that, within five (5) business days of the date
`of this Order, Patent Owner is authorized to file a Supplemental Motion to
`Seal explaining, with particularity, good cause to seal Exhibits 2100 and
`2112; and
`FURTHER ORDERED that, within five (5) business days of the date
`of this Order, Patent Owner is authorized to file a Motion to Expunge
`Exhibit 2109 in IPR2019-01331 and to refile the correct exhibit.
`
`
`
`
`
`6
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`FOR PETITIONER:
`Jeff Schwartz
`Ryan Miller
`FOX ROTHSCHILD LLP
`jeschwartz@foxrothschild.com
`miller@foxrothschild.com
`
`FOR PATENT OWNER:
`
`Michael Fleming
`Ellisen Turner
`Hong Zhong
`Andrew Krause
`IRELL & MANELLA LLP
`mfleming@irell.com
`eturner@irell.com
`hzhong@irell.com
`akrause@irell.com
`
`
`
`
`
`7
`
`
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