In its Order, the Board declined to adopt Petitioner’s proposed protective order. The Petitioner and Patent Owner disagreed on whether documents submitted in the IPR would still be governed by the district court protective order. To protect sensitive material, the Petitioner proposed a protective order in the IPR that was similar to the district court protective order. Because the Patent Owner refused to accept the proposed protective order, a conference call with the Board was called. The Board did not find any of the Petitioner’s reasons sufficient to modify the default protective order. For example, the Board was not persuaded by Petitioner’s concern that Patent Owner’s in-house counsel are substantively involved in decision-making about their research and development efforts, such that the “highly confidential” materials would give Patent Owner a competitive advantage.
The Board took the position that if the “highly confidential” materials are relevant to patentability and a party files them, then the disclosing party runs the risk that those materials will be made public. The Board also reaffirmed its strong preference for the parties to adopt the default protective order.
Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc., IPR2013-00368
Paper 34: Order Denying Motion for Protective Order
Dated: March 7, 2014
Patent 8,206,740
Before: Lora M. Green, Scott E. Kamholz, and Georgianna W. Braden
Written by: Medley
Related proceedings: Supernus Laboratories Inc.; Supernus Laboratories, L.P.; and Supernus Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC and Amneal Pharmaceuticals Co. (I) PVT, LTD, C.A. No. 11-1106-LPS (D. Del.)