Argentum Pharm. LLC v. Alcon Research, Ltd.

Trials@uspto.gov 	Paper No. 27
571.272.7822 	Filed: January 19, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
ARGENTUM PHARMACEUTICALS LLC,
Petitioner,
v.
ALCON RESEARCH, LTD.,
Patent Owner.
_______________
Case IPR2017-01053
Patent 8,268,299 B2
_______________
Before GRACE KARAFFA OBERMANN and SUSAN L. C. MITCHELL,
Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
ORDER
Denying without Prejudice Patent Owner’s
Motion to Seal and for Entry of Proposed Protective Order
35 U.S.C. § 316; 37 C.F.R. §§ 42.14, 42.54

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On December 22, 2017, Patent Owner filed a Motion to Seal (directed
to Exhibits 2008–2022, 2029, and 2040–2058) and for Entry of Proposed
Protective Order. Paper 24 (“Motion” or “Mot.”). In response to a Board
inquiry, Petitioner advised that it would file no opposition. See Ex. 3001
(email communication). For reasons set forth below, the Motion is denied
without prejudice subject to the conditions explained in this Order.
Motion for Entry of Protective Order
Our rules provide for entry of a protective order when necessary to
protect confidential information filed in a proceeding. See 37 C.F.R.
§§ 42.14, 42.54. As explained in the next section, the Motion does not
demonstrate “good cause” for sealing any of the exhibits that are the subject
of the Motion. Accordingly, we deny without prejudice the request for entry
of a protective order. The exhibits sought to be sealed in the Motion,
however, shall continue to be provisionally sealed until such time as the
Board resolves a second motion to seal, a request to unseal, or until the
exhibits are expunged pursuant to the guidance in this Order. See 37 C.F.R.
§ 42.14 (discussing Board’s authority to provisionally seal information).
Motion to Seal
Patent Owner seeks to seal Exhibits 2008–2022, 2029, and 2040–
2058. Mot. 2. In an inter partes review, the moving party bears the burden
of showing that the relief requested should be granted. 37 C.F.R. § 42.20(c).
A party moving to seal must show “good cause” for the relief requested. 37
C.F.R. § 42.54(a). We direct the parties to prior Board decisions for
guidance on how to establish “good cause” to seal a document or thing in an
inter partes review. See Garmin Int’l v. Cuozzo Speed Techs., LLC, Case
IPR2012-00001 (PTAB Mar. 14, 2013) (Paper 34) (“IPR001”) and Corning

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Optical Communications RF, LLC, v. PPC Broadband, Inc., Case IPR2014-
00440 (PTAB April 6, 14, and 17, 2015) (Papers 46, 47, 49) (“IPR440”).
For reasons that follow, we determine that the Motion fails to show
“good cause” for sealing Exhibits 2008–2022, 2029, and 2040–2058.
37 C.F.R. § 42.54(a). Accordingly, the Motion is denied without prejudice
to file a second motion subject to the conditions set forth below.
1. The “Good Cause” Standard
The “good cause” standard for granting a motion to seal reflects the
strong public policy for making all information in an inter partes review
open to the public. 37 C.F.R. § 42.54; see IPR001, Paper 34, 3. We are
mindful that, in district court, a party routinely will determine (by marking
or stamping a document “confidential”) whether a document is produced
under the terms of a district court protective order. By contrast, in an inter
partes review, “the default rule is that all papers . . . are open and available
for access by the public.” IPR001, Paper 34, 2; see IPR440, Paper 46, 3
(explaining that, unlike in a civil action in district court or an investigation
before the U.S. International Trade Commission, motions to seal in an inter
partes review are made “at trial”; therefore, information will be sealed by
only upon a showing of “good cause”).
“Good cause” for sealing is established by a “sufficient explanation
as to why” the “information sought to be sealed is confidential information”
(IPR001, Paper 34, 3), a demonstration that the information is not
“excessively redacted” (IPR440, Paper 46, 2), and a showing that, on
balance, the strong “public[] interest in maintaining a complete and
understandable record” is outweighed by “the harm to a party, by disclosure
of information” and “the need of either party to rely specifically on the

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information at issue.” IPR440, Paper 47, 3 (footnote omitted).
Consequently, a movant to seal must demonstrate adequately 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. 37 C.F.R. § 42.54(a); IPR440, Paper 47, 2–3;
IPR440, Paper 49, 2.
2. Exhibits 2008–2022
The Motion avers that Exhibits 2008–2022 are “confidential
laboratory notebooks” and “adjunctive data used by [Patent Owner’s]
employees to record their research and development work.” Mot. 2. The
Motion, however, lacks explanation of how these exhibits relate to any
disputed issue of fact, much less why they are necessary to a specific
position taken by a party in this proceeding. On that point, Patent Owner
incongruously asserts that “the data on which [Patent Owner] relies in this
proceeding are disclosed in public patent specifications.” Mot. 2.
Even if we accept that the information reflected in these exhibits has
never been disclosed to the public, the Motion fails to describe adequately a
harm that will result in the event of disclosure. In that regard, the Motion
stops short of stating that public disclosure of Exhibits 2008–2022 will result
in any concrete injury. Instead, the Motion avers that disclosure “has the
potential to cause” competitive harm. Id. at 3.
Having failed to identify sufficiently either a harm incident to
disclosure or a reason why the information is necessary in this trial, the
Motion fails also to balance “the public’s interest in maintaining a complete

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and understandable record” against a “harm to a party” incident to
“disclosure of information” or “the need of either party to rely specifically
on the information at issue.” IPR440, Paper 47, 3 (footnote omitted). In
addition, no corresponding public redacted versions of these exhibits were
filed with the Motion. The Motion is silent on that point, providing no
reason why the exhibits should be sealed in their entirety.
3. Exhibit 2029
Patent Owner seeks to seal portions of Exhibit 2029, which is the
declaration of Dr. Henry Grabowski. Mot. 4. In an attempt to make out the
“good cause” standard, the Motion refers us to arguments made in
connection with Exhibits 2040-2058. For reasons that follow, however, the
Motion fails to make out “good cause” for sealing Exhibits 2040–2058. Our
analysis below applies with equal force to Exhibit 2029.
4. Exhibits 2040–2058
The Motion avers that Exhibits 2040–2058 “summarize data provided
to [Patent Owner] by IMS Health/IQVIA and Encuity Research”; namely,
two entities that are non-parties in this proceeding. Mot. 3. Patent Owner
asserts no ownership interest in the information sought to be sealed, and the
Motion advances no other information sufficient to show that Patent Owner
is competent to establish that the exhibits reflect truly confidential
information. Nor does the Motion establish that Patent Owner is competent
to address any harm that would inure to the owners of the information, in the
event that the exhibits are disclosed to the public. See generally Mot.
The Motion suggests that the owners of the information freely permit
disclosure to members of the public who pay a fee. Mot. 3–4 (reflecting
“undersigned counsel’s understanding that” the owners of the information

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“charge customers for these data”). Although counsel purports to
understand that the owners “would be harmed by the public disclosure of
these data without a confidentiality agreement,” the Motion sets forth no
objective evidence sufficient to substantiate that bare attorney argument. Id.
at 4. Consequently, the Motion fails to show sufficiently that any harm
would result from disclosure. Nor does the Motion detail any genuine need
to use the information in this proceeding, much less explain how any interest
in maintaining the alleged confidentiality outweighs the strong public policy
that favors an open record in this inter partes review. See generally Mot. In
addition, no corresponding public redacted versions of these exhibits were
filed with the Motion. The Motion is silent on that point, providing no
reason why the exhibits should be sealed in their entirety.
5. Certification of Counsel
“A motion to seal is required to include a proposed protective order
and a certification that the moving party has in good faith conferred or
attempted to confer with the opposing party in an effort to come to an
agreement as to the scope of the proposed protective order for this inter
partes review.” IPR001, Paper 34, 3 (citing 37 C.F.R. § 42.54). The Motion
states that Patent Owner “wrote to” Petitioner’s counsel regarding “consent
to the entry of the proposed protective order, but did not receive a response
before filing this motion.” Mot. 5. That lack of response is unsurprising,
given that Patent Owner wrote to Petitioner “on December 22, 2017,” the
very same day that the Motion was filed. Id.
The Motion was due under no time deadline that made impractical a
good faith effort to secure a conference with counsel. Yet the Board was
burdened to ascertain on its own whether Petitioner planned to file an

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opposition to the Motion. See Ex. 3001. Any Second Motion shall include a
certification that provides the details of Patent Owner’s good faith efforts to
confer with Petitioner pursuant to 37 C.F.R. § 42.54(a).
6. Authorizing a Second Motion and a Request to Unseal
“The Board has limited resources” to deal with repeated motions to
seal. IPR440, Paper 47, 2 (“there is not an unlimited number of tries to get
the motion granted”). Nevertheless, in the interests of fairness, we authorize
Patent Owner to file a second motion to seal, accompanied by a request for
entry of a protective order, directed to Exhibits 2008–2022, 2029, and 2040–
2058 (“Second Motion to Seal”) subject to the following conditions.
The Second Motion to Seal shall be limited to five (5) pages and must
be filed within five (5) business days of entry of this Order. Further, the
Second Motion to Seal shall address the “good cause” standard as explained
in this Order. In addition, the Second Motion to Seal shall include a
certification that provides details of Patent Owner’s good faith efforts to
confer with Petitioner pursuant to 37 C.F.R. § 42.54(a). At minimum, the
Board would appreciate an indication whether Petitioner plans to file an
opposition to the Second Motion to Seal.
Within five (5) business days of the filing of any Second Motion to
Seal, Petitioner is authorized file an opposition limited to addressing issues
raised in the Second Motion to Seal. Petitioner’s opposition is limited to
five (5) pages.
In addition, Patent Owner is authorized to file, within five (5) business
days of entry of this Order, a one-page paper (“Motion to Unseal”)
requesting the Board to unseal any or all of Exhibits 2008–2022, 2029, and

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2040–2058, which shall result in their public disclosure and will permit both
parties to rely on the unsealed exhibit(s) in this case.
In the event that Patent Owner fails to file a timely Second Motion to
Seal or Motion to Unseal with respect to any of Exhibits 2008–2022, 2029,
or 2040–2058, then the exhibit(s) shall be expunged from the record. To the
extent than any argument or evidence in a substantive brief relies on an
expunged exhibit, that argument or evidence shall be accorded no weight in
any final written decision entered in this proceeding.
7. Notice of Possible Disclosure
This Order shall place both parties on notice that a movant to seal in
this proceeding shall assume the risk that its confidential information will
become public if relied upon in a final written decision. Rules of Practice,
77 Fed. Reg. No. 157, Part V at Section I.E.6. (Aug. 14, 2012) (“There is an
expectation that information will be made public where the existence of the
information . . . is identified in a final written decision following a trial.”).
ORDER
It is
ORDERED that Patent Owner’s Motion to Seal and for Entry of
Protective Order is denied without prejudice;
FURTHER ORDERED that all parties are placed on notice that a
movant to seal in this proceeding shall assume the risk that its confidential
information will become public if relied upon in a final written decision;
FURTHER ORDERED that Patent Owner is authorized to file a
Second Motion to Seal subject to the conditions set forth in this Order for
the purpose of requesting to seal Exhibits 2008–2022, 2029, and 2040–2058;

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FURTHER ORDERED that the Second Motion to Seal is limited to
five (5) pages;
FURTHER ORDERED that the Second Motion to Seal shall be filed
within five (5) business days of entry of this Order;
FURTHER ORDERED that the Second Motion to Seal shall address
the “good cause” standard as explained in this Order;
FURTHER ORDERED that the Second Motion to Seal shall be
accompanied by a request for entry of a protective order;
FURTHER ORDERED that the Second Motion to Seal shall include a
certification that provides details of Patent Owner’s good faith efforts to
confer with Petitioner pursuant to 37 C.F.R. § 42.54(a); and
FURTHER ORDERED that Petitioner is authorized file an opposition
to the Second Motion to Seal that is limited to addressing issues raised in the
Second Motion to Seal;
FURTHER ORDERED that any opposition shall be limited to five (5)
pages;
FURTHER ORDERED that any opposition shall be filed within five
(5) business days of the filing of a Second Motion to Seal pursuant to this
Order,
FURTHER ORDERED that Patent Owner is authorized to file, within
five (5) business days of entry of this Order, a one-page paper (titled
“Motion to Unseal”) requesting to unseal any or all of Exhibits 2008–2022,
2029, and 2040–2058, which shall result in their public disclosure and
permit any party to rely on the unsealed exhibit(s) in this proceeding;
FURTHER ORDERED that, in the event Patent Owner fails to file a
timely Second Motion or Motion to Unseal with respect to any of

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Exhibits 2008–2022, 2029, and 2040–2058, then the exhibit(s) shall be
expunged from the record;
FURTHER ORDERED that, to the extent any argument or evidence
relies on an expunged exhibit, that argument or evidence shall be accorded
no weight in any final written decision entered in this proceeding; and
FURTHER ORDERED that no other briefing is authorized at this
time.

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For PETITIONER:
Michael R. Houston, Ph.D.
Joseph P. Meara, Ph.D.
James P. McParland, Ph.D.
FOLEY & LARDNER LLP
mhouston@foley.com
jmeara-pgp@foley.com
jmcparland@foley.com
Tyler C. Liu
ARGENTUM PHARMACEUTICALS LLC
tliu@agpharm.com
For PATENT OWNER:
David Krinsky
Christopher Suarez
Adam Perlman
Alexander Zolan
WILLIAMS & CONNOLLY LLP
dkrinsky@wc.com
csuarez@wc.com
aperlman@wc.com
azolan@wc.com