Argentum Pharm. LLC v. Alcon Research, Ltd.
Paper No. 27, January 19, 2018
IPR201-01053 (Patent 8,268,299)
On December 22, 2017, patent owner Alcon Research filed a Motion to Seal, directed to Exhibits 2008-2022, 2029, and 2040-2058, and for Entry of Proposed Protective Order. See Paper 27, p.2. In response to a PTAB inquiry, petitioner Argentum Pharmaceuticals advised it would file no opposition. Id. The PTAB denied the Motion without prejudice. Id.
The PTAB denied Alcon’s Motion to Seal and Entry of Proposed Protective Order without prejudice but granted Alcon permission to file a Second Motion to Seal. See Paper 27, p.7-10. The PTAB ordered that the Second Motion to Seal be limited to 5 pages and filed within 5 business days after this Order was entered. Id. at p.7. The PTAB further ordered that the Second Motion to Seal address the “good cause” standard as articulated in the Order. Id. The Second Motion to Seal must also contain a certification that details Alcon’s good faith efforts to confer with Argentum, pursuant to 37 C.F.R. § 42.54(a). Id. The PTAB noted that, at a minimum, it “would appreciate an indication whether [Argentum] plan[ned] to file an opposition to the Second Motion to Seal.” Id. Within 5 business days of the filing of the Second Motion to Seal, Argentum was authorized to oppose the Second Motion, limited to addressing only the issues raised in the Second Motion in 5 pages. Id.
The PTAB also permitted Alcon to file, within 5 business days of this Order, a one page Motion to Unseal, requesting any or all of Exhibits 2008-2022, 2029, and 2040-2058 be publically disclosed. Id. at p.7-8. If Alcon failed to file a timely Second Motion to Seal or a Motion to Unseal with respect to any of the Exhibits listed, then “the exhibit(s) shall be expunged from the record.” Id. at p.8 In that event, “[t]o the extent that 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.” Id. This Order also served as a notice to both parties 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.” Id.
The PTAB noted that its rules allow for “entry of a protective order when necessary to protect confidential information filed in a proceeding.” See Paper 27, p.2. Since the PTAB found that the Motion did not demonstrate “good cause” for sealing any of the exhibits that are the subject of the Motion, the PTAB denied the request for Entry of a Protective Order without prejudice. Id.
The PTAB explained that in an IPR proceeding, “the moving party bears the burden of showing that the relief requested should be granted.” Id. The PTAB held that Alcon had not established “good cause” to seal the exhibits. Id. “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.” Id. at p.3. Unlike in district court, the default rule in an IPR is that all papers “are open and available for access by the public.” Id. “‘Good cause’ for sealing is established by a ‘sufficient explanation as to why’ the ‘information sought to be sealed is confidential information,’ a demonstration that the information is not ‘excessively redacted,’ 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 information at issue.’” Id. at p.3-4.
“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.” Id. at p.4. The PTAB noted that the Motion lacked “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.” Id. The Motion also failed to explain what harm would result in the event of disclosure and failed to balance the public’s interest in having a full and complete record with the necessity of the information or the harm to a party. Id. at p.4-5. Alcon’s Motion also failed to make out good cause for sealing Exhibit 2029, a declaration of Dr. Henry Grabowski, or Exhibits 2040-2058, which summarized data provide to Alcon by IMS Health/IQVIA and Encuity Research – two entities that are non-parties in these proceedings. Id. at p.5. Alcon asserted no ownership interest in the information sought to be sealed, nor does the Motion establish how these exhibits reflect truly confidential information. Id. “The Motion suggests that the owners of the information freely permit disclosure to members of the public who pay a fee.” Id. An undersigned counsel purported to understand that the owners “would be harmed by the public disclosure of these data without a confidentiality agreement”; however, “the Motion sets forth no objective evidence to substantiate the bare attorney argument.” Id. at p.6. The Motion also does not explain any real need to use this information in the proceeding, or how “any interest in maintaining the alleged confidentiality outweighs the strong public policy that favors an open record in this inter partes review.” Id.
The PTAB explained that “[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.” Id. The Motion stated that Alcon wrote to Argentum’s counsel regarding consent to the entry of the proposed protective order, but received no response. Id. The PTAB noted this was not surprising as Alcon wrote to Argentum on December 22, 2017 – the same day the Motion was filed. Id. The PTAB was then burdened with trying to determine if Argentum was going to oppose the motion. Id. at p.6-7. The PTAB mentioned that any Second Motion had to include a certification showing that Alcon had made good faith efforts to confer with Argentum. Id. at p.7.
A copy of the PTAB order can be found here.