Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 80
` Entered: October 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.,
`
`Petitioner,
`v.
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01099
`Patent 8,669,290 B2
`____________
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judge.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION
`Granting-in-Part Patent Owner’s Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`571-272-7822
`
`
`
`Paper 80
` Entered: October 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.,
`
`Petitioner,
`v.
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01099
`Patent 8,669,290 B2
`____________
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judge.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION
`Granting-in-Part Patent Owner’s Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`IPR2015-01099
`Patent 8,669,290 B2
`
`
`On October 17, 2016, Patent Owner filed a motion to expunge the
`sealed versions of the following papers and exhibits:
`Patent Owner’s Response (citing to confidential exhibits),
`•
`Paper Nos. 22 and 23 (filed February 25, 2016), and 64 (filed July
`29, 2016).
`Excerpts of Patent Owner’s New Drug Application: Ex.
`•
`2096 (filed July 29, 2016); Ex. 2102 (filed July 29, 2016); Ex.
`2103 (filed July 29, 2016); Ex. 2110 (filed July 29, 2016); Ex.
`2251 (filed July 29, 2016); Exs. 2291-2293 (filed July 29, 2016).
`Information related to alleged commercial success of
`•
`Patent Owner’s product from a related district court case: Ex.
`2258 (filed February 25, 2016); Ex. 2323 (filed May 5, 2016).
`Materials related to third-party BioScience’s testing
`•
`procedures: Exs. 2267 [confidential version only]-[22]78, 2294
`(filed February 25, 2016) [confidential version only].
`Confidential versions of Expert Declarations: Hofmann
`•
`(Ex. 1122); Williams (Ex. 2082); Trattler (Ex. 2116); Myers (Ex.
`2126); Paulson (Ex. 2128); and Jarosz (Ex. 2130).
`Confidential versions of transcripts of Expert Cross
`•
`Examinations: Dr. Paulson (Ex. 1123) (filed April 22, 2016); Dr.
`Trattler (Ex. 1120) (filed April 22, 2016); Dr. Williams (Ex.
`1099) (filed April 22, 2016); and Mr. Hofmann (Ex. 1181)
`(excerpts from transcript) (filed May 18, 2016).
`
`Paper 76, 5–6. Patent Owner states that it “contacted counsel for Petitioner
`and they do not oppose this motion to expunge.” Id. at 7. However, Patent
`Owner clarifies in a footnote that Petitioner opposes the motion with respect
`to Exhibit 1181. Id. at n.7.
`The Rules of Practice for Trial before the Patent Trial and Appeal
`Board provide that:
`Confidential information that is subject to a protective order
`ordinarily will become public 45 days after denial of a petition to
`institute a trial or 45 days after final judgment in a trial. There is
`2
`
`
`
`
`
`IPR2015-01099
`Patent 8,669,290 B2
`
`
`an expectation that information will be made public where the
`existence of the information is referred to in a decision to grant
`or deny a request to institute a review or is identified in a final
`written decision following a trial. A party seeking to maintain the
`confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information
`becoming public.
`
`77 Fed. Reg. No. 157, Part V at Section I.E.6. (Aug. 14, 2012); see also
`37 C.F.R. § 42.56 (“After denial of a petition to institute a trial or after final
`judgment in a trial, a party may file a motion to expunge confidential
`information from the record.”).
`The Board’s Default Protective Order has been entered in this
`proceeding. Paper 70. Additionally, we granted Patent Owner’s Motions to
`Seal all or portions of the papers and exhibits that Patent Owner now seeks
`to expunge. See Papers 71 and 72. On September 12, 2016, a Final Written
`Decision was entered by the Board. Paper 69. Accordingly, in this
`proceeding, documents filed subject to a protective order would normally be
`made public 45 days from that date.
`Petitioner affirms that of the items that it seeks to expunge, only
`portions of the following documents were referred to in the Board’s Final
`Decision:
`• Patent Owner’s Response (Paper No. 22),
`• Hofmann Declaration (Ex. 1122),
`• Ex. 1154
`• Williams Declaration (Ex. 2082), and
`Jarosz Declaration (Ex. 2130).
`•
`
`
`
`
`3
`
`
`
`IPR2015-01099
`Patent 8,669,290 B2
`
`Paper 76, 4. On October 17, 2016, Patent Owner filed a redacted public
`version of each those documents that will remain in the record if the sealed
`versions are expunged. Id. Thus, Patent Owner asserts that if the requested
`sealed papers and exhibits are expunged, the public will still “have access to
`all the materials relevant to the merits of this proceeding.” Id. at 6.
`Based upon our consideration of those facts, and the arguments
`presented in Patent Owner’s motion, Patent Owner’s request to expunge
`confidential versions of Papers 22, 23, and 64, and Exhibits 1099, 1120,
`1122, 1123, 1154, 2082, 2096, 2102, 2103, 2110, 2116, 2126, 2128, 2130,
`2251, 2258, 2267–2278, 2291–2293, 2294, and 2323 is granted.
`In consideration of Petitioner’s opposition to expunging Exhibit 1181,
`we deny Patent Owner’s motion with respect to that exhibit. However, the
`sealed status of Exhibit 1181 shall be preserved pending appeal. Patent
`Owner is authorized to renew its request to expunge Exhibit 1181 within ten
`business days after the time for filing a notice of appeal expires, or if an
`appeal is taken, the time for filing a renewed motion to expunge Exhibit
`1181 is extended to ten business days after a final disposition of such appeal.
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motion to Expunge with respect to
`confidential versions of Papers 22, 23, and 64, and Exhibits 1099, 1120,
`1122, 1123, 1154, 2082, 2096, 2102, 2103, 2110, 2116, 2126, 2128, 2130,
`2251, 2258, 2267–2278, 2291–2293, 2294, and 2323 is granted;
`FURTHER ORDERED that Patent Owner’s Motion to expunge with
`respect to Exhibit 1181 is denied;
`
`
`
`4
`
`
`
`IPR2015-01099
`Patent 8,669,290 B2
`
`
`FURTHER ORDERED that confidential versions of Papers 22, 23,
`and 64, and Exhibits 1099, 1120, 1122, 1123, 1154, 2082, 2096, 2102, 2103,
`2110, 2116, 2126, 2128, 2130, 2251, 2258, 2267–2278, 2291–2293, 2294,
`and 2323 shall be expunged from the record;
`FURTHER ORDERED that the sealed status of Exhibit 1181 shall be
`preserved pending appeal; and
`FURTHER ORDERED that Patent Owner is authorized to renew its
`request to expunge Exhibit 1181 within ten business days after the time for
`filing a notice of appeal expires, or if an appeal is taken, the time for filing a
`renewed motion to expunge Exhibit 1181 is extended to ten business days
`after a final disposition of such appeal.
`
`
`
`PETITIONER:
`Deborah H. Yellin
`Jonathan Lindsay
`Teresa Rea
`Shannon Lentz
`CROWELL & MORING LLP
`DYellin@crowell.com
`JLindsay@crowell.com
`trea@crowell.com
`slentz@crowell.com
`
`PATENT OWNER:
`Bryan C. Diner
`Joshua L. Goldberg
`Justin J. Hasford
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`bryan.diner@finnegan.com
`joshua.goldberg@finnegan.com
`justin.hasford@finnegan.com
`
`
`
`
`5
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