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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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`SLAYBACK PHARMA LLC,
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`Petitioner,
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`v.
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`EYE THERAPIES, LLC,
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`Patent Owner.
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`__________________
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`Case IPR2022-00142
`U.S. Patent No. 8,293,742
`__________________
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`PATENT OWNER’S MOTION TO PRESERVE THE RECORD PENDING
`APPEAL
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`
`
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`Case IPR2022-00142
`U.S. Patent No. 8,293,742
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`I.
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`Statement of Relief Requested
`Pursuant to the Board’s June 15, 2023 authorization, Patent Owner
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`respectfully submits this Motion to Preserve the Record Pending Appeal. This
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`Motion extends to the entire docket in IPR2022-00142, including all confidential
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`versions of documents that are currently sealed pursuant to the Board’s Orders in
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`Papers 56 and 76.
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`The documents currently under seal include confidential versions of Patent
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`Owner’s Response, declaration Exhibits 2020, 2021, 2023, 2024, and documentary
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`exhibits 2028, 2052, 2057, 2058, 2156, 2166-2168, 2195, 2196, 1047, 1051. The
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`confidential information contained in these exhibits relate to Bausch & Lomb’s
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`highly confidential and competitively sensitive information, which the Board did not
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`rely on in its Final Written Decision. Further, the public’s interests are served by the
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`redacted versions of the exhibits, which are publicly available. Thus, maintaining
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`these documents under seal during the pendency of appeal does not affect public
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`interest. Patent Owner certifies that the parties have conferred in good faith
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`regarding this motion, and that Petitioner has indicated that it will not oppose this
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`motion.
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`II. Background
`On August 29, 2022, Patent Owner filed a motion to seal and enter stipulated
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`proposed protective order, requesting that the Board seal confidential versions of
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`1
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`
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`Case IPR2022-00142
`U.S. Patent No. 8,293,742
`Patent Owner’s Response, declaration exhibits 2020, 2021, 2023, and 2024, and
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`confidential versions of documentary exhibits 2028, 2052, 2057, 2058, 2156, 2166-
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`2168, 2195, and 2196. See generally, Paper 29. On February 1, 2023, the Board
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`granted the motion to seal with respect to the exhibits containing Bausch & Lomb’s
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`business and financial information but denied it with respect to the exhibits
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`containing excerpts of Bausch & Lomb’s NDA. See generally Paper 56. The Board
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`also granted the parties’ stipulated proposed protective order. Id.
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`On February 10, 2023, Patent Owner filed a second motion to seal requesting
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`that the Board seal confidential versions of documents containing confidential
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`information from Bausch & Lomb’s NDA (Patent Owner’s Response, Exhibits
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`2020, 2021, 2028, 2166-2168, and 2196), and Petitioner’s exhibits containing
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`Bausch & Lomb’s sensitive commercial and financial information (Exhibits 1047
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`and 1051). See generally, Paper 60. On May 12, 2023, the Board granted Patent
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`Owner’s second motion to seal. See generally, Paper 76.
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`On May 15, 2023, the Board entered a Final Written Decision in this
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`proceeding. See Paper 77. The confidential versions of the documents listed above
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`currently remain under seal and are subject to the protective order entered in this
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`proceeding.
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`2
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`
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`Case IPR2022-00142
`U.S. Patent No. 8,293,742
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`III. Reasons for Relief Requested
`The Consolidated Patent Trial Practice Guide (Nov. 21, 2019) (“CPTG”)
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`provides that “[c]onfidential information that is subject to a protective order
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`ordinarily would become public 45 days after denial of a petition to institute a trial
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`or 45 days after final judgment in a trial.” CPTG at 21-22. A party seeking to
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`maintain the confidentiality of information may file a motion to expunge the
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`information from the record prior to the information becoming public. Id.; 37 C.F.R.
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`§ 42.56. Here, the date 45 days after entry of final judgment is June 29, 2023.
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`The Board is required by the Federal Rules of Appellate Procedure and the
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`Federal Circuit Rules to retain the record pending appeal. Specifically, Federal
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`Circuit Rule 17(a) states that “[t]he agency must retain the record.” Federal Circuit
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`Rule 17(d) titled “Access to Parties and Counsel to Original Record” requires that
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`the parties and their counsel have access to both the sealed and unsealed portions of
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`the record “[w]hen a petition for review or notice of appeal is filed.” The deadline
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`for filing a notice of appeal is 63 days from entry of final judgment, that is, July 17,
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`2023.
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`Patent Owner intends to file a notice of appeal. If the record is not preserved
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`in its entirety during the appeal, the Federal Circuit will not be able to fully consider
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`the issues raised by Patent Owner, which would cause prejudice. Under similar
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`circumstances, the Board has granted motions to preserve the record pending appeal.
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`3
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`
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`Case IPR2022-00142
`U.S. Patent No. 8,293,742
`See Boehringer Ingelheim Int’l GmbH v. AbbVie Biotechnology Ltd., IPR2016-
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`00408, Paper 49, at 2 (PTAB Oct. 19, 2017); See Illumina, Inc. v. The Trustees of
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`Columbia Univ. in the City of New York, IPR2012-00006, Paper 133, at 4 (PTAB
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`April 25, 2014).
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`IV. Conclusion
`For the reasons set forth above, Patent Owner respectfully requests that the
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`Board preserve the record of this IPR in its entirety in its present form, including
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`preservation of documents filed under seal, in their sealed, non-public form, pending
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`completion of any appeal to the Federal Circuit Court of Appeals.
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`
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`Respectfully submitted,
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`By: /Bryan C. Diner/
`Bryan C. Diner, Reg. No. 32,409
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`
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`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
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`
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`Counsel for the Patent Owner
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`Dated: June 27, 2023
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`4
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`Case IPR2022-00142
`U.S. Patent No. 8,293,742
`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
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`
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`MOTION TO PRESERVE THE RECORD PENDING APPEAL was served
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`electronically via email on June 27, 2023 in its entirety on the following:
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`Linnea P. Cipriano
`Goodwin Proctor LLP
`620 Eight Avenue
`New York, NY 10018
`lcipriano@goodwinlaw.com
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`Louis H. Weinstein
`Patrick G. Pollard
`Windels Marx Lane & Mittendorf, LLC
`1 Giralda Farms
`Madison, NJ 07940
`lweinstein@windelsmarx.com
`ppollard@windelsmarx.com
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`Robert Frederickson III
`Goodwin Proctor LLP
`100 Northern Avenue
`Boston, MA 02210
`rfrederickson@goodwinlaw.com
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`Petitioner has consented to service by electronic mail.
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`/Geneva Eaddy/
`Geneva Eaddy
`Case Manager
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`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER LLP
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`Dated: June 27, 2023
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`5
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