Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 19
`Date: January 23, 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 Patent Owner’s Supplemental Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`Granting Patent Owner’s Motion to Expunge
`37 C.F.R. § 42.5
`
`
`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.
`
`
`571-272-7822
`
`
`
`
`
`Paper 19
`Date: January 23, 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 Patent Owner’s Supplemental Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`Granting Patent Owner’s Motion to Expunge
`37 C.F.R. § 42.5
`
`
`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)
`
`
`
`
`INTRODUCTION
`I.
`On January 10, 2020, we authorized Patent Owner to file a
`Supplemental Motion to Seal related to Exhibits 2100 and 2112. Paper 15. 2
`We further authorized Patent Owner to file a Motion to Expunge related to
`Exhibit 2109. Id.
`On January 16, 2020, Patent Owner filed a Supplemental Motion to
`Seal (Paper 17), and also filed a Motion to Expunge (Paper 16) as described
`above. At the same time, Patent Owner filed redacted versions of Exhibits
`2100 and 2112, and a corrected Exhibit 2109. For the reasons discussed
`below, Patent Owner’s two motions are granted.
`II. DISCUSSION
`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
`at 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
`
`
`2 Unless otherwise noted, all citations are to the papers and exhibits filed in
`IPR2019-01331 (with the same or substantially the same papers and exhibits
`having been filed in IPR2019-01332 and IPR2019-01333).
`2
`
`
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`information” is subject to protection against public disclosure. 35 U.S.C.
`§ 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”).
`
`
`
`3
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`According to Patent Owner, the redacted portions of Exhibits 2100
`and 2112 reflect confidential “internal research and development”
`information and/or “commercially sensitive product design files and
`business plans,” related to its products. Paper 17, 1. Patent Owner also
`asserts that the redacted portions in Exhibit 2112 quote, discuss, or reflect
`the contents of other exhibits that were sealed in their entirety here. Id.
`Patent Owner states that the aforementioned “highly-confidential
`information” has been marked as such in related district court litigation, and
`that public disclosure of this information could result in competitive harm—
`as it includes non-public details about, inter alia, Patent Owner’s business
`practices and product designs. Id. at 1–2.
`We are persuaded that good cause exists to seal Exhibits 2100 and
`2112. Patent Owner has now filed public, redacted versions of those
`exhibits, which appear to more narrowly redact Patent Owner’s confidential
`information including, among other things, apparently non-public product
`design information. 3
`Turning to the Motion to Expunge, we are persuaded that the version
`of Exhibit 2109 that was filed on October 25, 2019, should be expunged due
`to a clerical error that occurred when it was filed. Paper 16, 1. A corrected
`Exhibit 2109 has now been filed for the record. Id.
`
`
`
`3 Petitioner did not oppose Patent Owner’s original motion, which sought to
`seal Exhibits 2100 and 2112 in their entirety, and therefore, we understand
`that Petitioner is not opposing Patent Owner’s narrower, supplemental
`motion.
`
`4
`
`
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`
`III. ORDER
`
`It is
`ORDERED that Patent Owner’s Supplemental Motion to Seal (Paper
`17) in each of the above-identified cases is granted and the unredacted
`versions of Exhibits 2100 and 2112 are, accordingly, sealed; and
`FURTHER ORDERED that Patent Owner’s Motion to Expunge
`(Paper 16) in each of the above-identified cases is granted, and Exhibit 2109
`(i.e., the version filed October 25, 2019) will, accordingly, be expunged
`from the record.
`
`
`
`
`
`
`5
`
`
`
`IPR2019-01331 (Patent 8,523,921 B2)
`IPR2019-01332 (Patent 8,523,921 B2)
`IPR2019-01333 (Patent 8,523,921 B2)
`
`FOR PETITIONER:
`Jeff E. Schwartz
`Ryan N. Miller
`FOX ROTHSCHILD LLP
`jeschwartz@foxrothschild.com
`rmiller@foxrothschild.com
`
`
`FOR PATENT OWNER:
`
`Michael R. Fleming
`Ellisen S. Turner
`H. Annita Zhong
`Andrew E. Krause
`IRELL & MANELLA LLP
`mfleming@irell.com
`hzhong@irell.com
`akrause@irell.com
`
`
`
`
`6
`
`
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