Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper: 56
`Entered: February 1, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SLAYBACK PHARMA LLC,
`Petitioner,
`v.
`EYE THERAPIES, LLC,
`Patent Owner.
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`
`
`
`
`
`
`
`Before TINA E. HULSE, ROBERT A. POLLOCK, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Entry of Stipulated Protective Order;
`Granting-in-Part Patent Owner’s Motion to Seal;
`Denying Petitioner’s Motion to Seal
`37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper: 56
`Entered: February 1, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SLAYBACK PHARMA LLC,
`Petitioner,
`v.
`EYE THERAPIES, LLC,
`Patent Owner.
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`
`
`
`
`
`
`
`Before TINA E. HULSE, ROBERT A. POLLOCK, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Entry of Stipulated Protective Order;
`Granting-in-Part Patent Owner’s Motion to Seal;
`Denying Petitioner’s Motion to Seal
`37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`
`Patent Owner filed a Motion to Seal and Enter Stipulated Proposed
`Protective Order. Paper 29 (“PO Mot.”). Specifically, Patent Owner moves
`to seal the confidential versions of the Patent Owner Response (Paper 30),
`Declaration Exhibits 2020, 2021, 2023, and 2024, and documentary Exhibits
`2028, 2052, 2057, 2058, 2156, 2166–2168, 2195, and 2196. Patent Owner
`also seeks entry of a stipulated Protective Order. PO Mot., App’x 1.
`With its Reply, Petitioner filed a Motion to Seal the confidential
`versions of Petitioner’s Reply and Exhibits 1047 and 1051, asserting that the
`papers contain information that Patent Owner has identified as confidential
`under the proposed protective order. Paper 46 (“Pet. Mot.”).
`A party moving to seal a document must show “good cause” for the
`relief requested. 37 C.F.R. §§ 42.20(c), 42.54. The “good cause” standard
`“reflects the strong public policy for making all information in an inter
`partes review open to the public.” See Argentum Pharms. LLC v. Alcon
`Research, Ltd., IPR2017-01053, Paper 27 at 3 (PTAB Jan. 19, 2018)
`(informative). Accordingly, our 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.” See
`Consolidated Trial Practice Guide1 (“CTPG”) at 19. Thus, the moving party
`must show 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
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`
`(4) on balance, an interest in maintaining confidentiality
`outweighs the strong public interest in having an open
`record.
`Argentum, Paper 27 at 4.
`Patent Owner’s Motion
`As an initial matter, Patent Owner asserts that the parties agree to the
`proposed stipulated Protective Order (PO Mot., App’x 1), which deviates
`from the default protective order of the CTPG by further limiting the
`disclosure of confidential materials to in-house counsel and “party
`representatives who have responsibility for overseeing the conduct of this
`proceeding or participate in decisions with respect to this proceeding.” PO
`Mot. 6–7. The proposed Protective Order also adds a provision to “clarify
`how confidential information that may be received by the parties in this
`proceeding may be used.” Id. at 7.
`Because we find the proposed modifications to the default protective
`order to be reasonable, we grant Patent Owner’s Motion for Entry of the
`Proposed Stipulated Protective Order. The Stipulated Protective Order shall
`be entered and shall govern the disclosure and treatment of confidential
`information in this proceeding.
`As for Patent Owner’s Motion to Seal, Patent Owner asserts that it
`seeks to seal two categories of information2: (1) non-public excerpts of
`Bausch & Lomb, Inc.’s3 New Drug Application (“NDA”) and (2) Bausch &
`
`
`2 Patent Owner states the “confidential information falls into three
`categories,” but only discusses two categories of information. PO Mot. 3–4.
`We, therefore, assume the reference to “three” categories is a typographical
`error.
`3 Patent Owner identifies Bausch & Lomb, Inc. as a real party-in-interest in
`this proceeding. Paper 4, 2.
`
`3
`
`
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`Lomb’s sensitive business and financial information. See PO Mot. 3–4. We
`address each category below.
`Excerpts of Bausch & Lomb’s NDA
`Patent Owner contends that good cause exists for sealing the
`confidential NDA information because the Board has previously found
`NDAs “contain confidential commercial information that should be
`protected from public disclosure.” Id. at 5 (citing Sandoz, Inc. v. EKR
`Therapeutics, LLC, IPR2015-00005, Paper 21 at 2 (PTAB Apr. 24, 2014)).
`Patent Owner also claims that “the public’s interest in the instant proceeding
`does not outweigh the parties’ interest in protecting their sensitive business
`information.” Id.
`We are not persuaded that Patent Owner’s NDA information should
`be sealed simply because a prior panel in a different proceeding found good
`cause to seal different information. What is missing in Patent Owner’s
`motion is an explanation of the “concrete harm” to Patent Owner or Bausch
`& Lomb that would result upon public disclosure of the information sought
`to be sealed. See Argentum, Paper 27 at 4. For example, based on a quick
`review of the redacted portions of the sealed documents, we question why
`the redactions on page 43 of Patent Owner’s Response, paragraphs 149, 172,
`190, 198, and 245 of Exhibit 2020, and paragraph 43 of Exhibit 2021 require
`sealing.4
`We, therefore, deny without prejudice Patent Owner’s Motion to Seal
`the information identified as containing confidential NDA information. See
`PO Mot. 3–4. For the sake of efficiency, Patent Owner may renew its
`
`
`4 We note that the information cited here, and elsewhere in this Decision, is
`not an exhaustive list of the questionable redactions made by Patent Owner.
`4
`
`
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`Motion to Seal along with any motion to seal confidential information in
`Patent Owner’s Sur-reply, if any. Patent Owner shall address the Argentum
`factors to explain why good cause exists. Specifically, Patent Owner should
`address how and why public disclosure of the NDA information cited would
`cause concrete harm to Patent Owner or Bausch & Lomb, particularly when
`over ten years has passed since the filing of the NDA.
`Business and Financial Information
`Patent Owner contends that its second category of information is
`“confidential and sensitive competitive market analysis, business strategy,
`and financial information of Bausch & Lomb relating to Lumify®—a
`commercial embodiment of the patented invention.” PO Mot. 6. Patent
`Owner argues that that information should be sealed because it includes
`“internal documents that would be harmful if made public.” Id. According
`to Patent Owner, good cause exists to seal because the information includes
`“details about Bausch & Lomb’s sensitive business information which are
`essential to the running of the business and would be valuable to Bausch &
`Lomb’s competitors and harmful to Bausch & Lomb if made public.” Id.
`In light of the concrete harm alleged by Patent Owner that would
`result if Bausch & Lomb’s business and financial information were made
`public, we find good cause exists to seal the information identified as such.
`We, therefore, grant Patent Owner’s Motion to Seal with respect to page 70
`of Patent Owner’s Response; Exhibit 2023 ¶¶ 4 n.1, 10, 14–16 n.2, 17, 20–
`25, 28–31; and Ex. 2024 ¶¶ 26 n.2, 59, 62, 63, 70, 71, 73–80, 87–89 n.12,
`91, 94, 96–98, 121, 122, 132, 134, App’x 3–27; and Exhibits 2052, 2057,
`2058, 2156 in their entirety.
`
`5
`
`
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`Petitioner’s Motion to Seal
`Petitioner seeks to seal documents that “contain information that
`Patent Owners have identified as confidential pursuant to the proposed
`protective order.” Pet. Mot. 2. As explained in our Scheduling Order, “[i]t
`is the responsibility of the party whose confidential information is at issue,
`not necessarily the proffering party, to file the motion to seal.” Paper 15, 3.
`Here, Petitioner’s motion is contingent upon granting Patent Owner’s
`Motion to Seal, which we granted-in-part and denied-in-part above. Rather
`than parse through the information proffered by Petitioner to determine
`which information has been sealed (i.e., the business and financial
`information) and which information has not (i.e., the NDA information), we
`deny Petitioner’s motion. Because we denied-in-part Patent Owner’s motion
`to seal without prejudice, we find it appropriate to allow Patent Owner to
`also file a Motion to Seal the confidential information proffered by
`Petitioner. In doing so, Patent Owner can explain why good cause exists to
`seal that information.
`Because it is Patent Owner’s information that Petitioner seeks to seal,
`it is Patent Owner’s burden to explain why good cause exists to seal the
`redacted information. For example, we question, again, why certain
`redactions were made. See, e.g., Ex. 1047 ¶¶ 25, 33 (citing information that
`Patent Owner did not seek to seal in its motion to seal). We also question
`why the entire transcript of Mr. Ferris’s deposition must be sealed, when
`Patent Owner sought to seal only portions of his declaration. See Ex. 1051.
`To the extent its redactions differ, Patent Owner shall file redacted
`versions of the papers and exhibits filed by Petitioner that only redact truly
`confidential information that will cause concrete harm to Patent Owner (or
`
`6
`
`
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`Bausch & Lomb) if publicly disclosed. Any duplicate public versions of
`those papers and exhibits filed by Petitioner will be expunged once Patent
`Owner’s motion is filed.
`In sum, we deny Petitioner’s Motion to Seal, but Patent Owner may
`file a Second Motion to Seal any confidential information proffered by
`Petitioner along with Patent Owner’s Sur-reply.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion for Entry of the Stipulated
`Protective Order is granted;
`FURTHER ORDERED that the Stipulated Protective Order shall
`govern the handling and filing of confidential information in this
`proceeding;
`FURTHER ORDERED that Patent Owner’s Motion to Seal is denied
`without prejudice as to the information identified as Bausch & Lomb’s NDA
`information;
`FURTHER ORDERED that Patent Owner’s Motion to Seal is granted
`as to the information identified as Bausch & Lomb’s business and financial
`information;
`FURTHER ORDERED that Petitioner’s Motion to Seal is denied;
`FURTHER ORDERED that Patent Owner may file a Second Motion
`to Seal Bausch & Lomb’s NDA information and the information in
`Petitioner’s Motion to Seal (along with confidential information that may be
`included in Patent Owner’s Sur-reply, if any) at the time of filing Patent
`Owner’s Sur-reply; and
`
`7
`
`
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`
`
`PETITIONER:
`
`FURTHER ORDERED that the proposed sealed information shall
`remain under seal until Patent Owner’s Second Motion to Seal is decided.
`
`
`
`
`Linnea Cipriano
`Patrick Pollard
`Louis Weinstein
`WINDELS MARX LANE & MITTENDORF LLP
`lcipriano@goodwinlaw.com
`ppollard@windelsmarx.com
`lweinstein@windelsmarx.com
`
`
`PATENT OWNER:
`Bryan Diner
`Justin Hasford
`Caitlin O’Connell
`Christina Ji-Hye Yang
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`justin.hasford@finnegan.com
`caitlin.o’connell@finnegan.com
`christina.yang@finnegan.com
`
`8
`
`
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