Trials@uspto.gov
`571-272-7822
`
`Paper: 74
`
` Entered: September 15, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD., LUPIN PHARMACEUTICALS INC.,
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioners,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01097 (Patent 8,754,131 B2)1
`Case IPR2015-01100 (Patent 8,927,606 B1)2
`Case IPR2015-01105 (Patent 8,871,813 B2)3
`____________
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER4
`Granting Patent Owner’s Second Renewed Motion to Seal
`37 C.F.R. §§ 42.14
`
`
`
`
`1 Case IPR2016-00089 has been joined with this proceeding.
`2 Case IPR2016-00091 has been joined with this proceeding.
`3 Case IPR2016-00090 has been joined with this proceeding.
`4 This Order addresses issues common to each proceeding; therefore, we
`enter a single order in each proceeding.
`
`
`571-272-7822
`
`Paper: 74
`
` Entered: September 15, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD., LUPIN PHARMACEUTICALS INC.,
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioners,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01097 (Patent 8,754,131 B2)1
`Case IPR2015-01100 (Patent 8,927,606 B1)2
`Case IPR2015-01105 (Patent 8,871,813 B2)3
`____________
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER4
`Granting Patent Owner’s Second Renewed Motion to Seal
`37 C.F.R. §§ 42.14
`
`
`
`
`1 Case IPR2016-00089 has been joined with this proceeding.
`2 Case IPR2016-00091 has been joined with this proceeding.
`3 Case IPR2016-00090 has been joined with this proceeding.
`4 This Order addresses issues common to each proceeding; therefore, we
`enter a single order in each proceeding.
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`On July 29, 2016, Patent Owner filed a Second Renewed Motion to
`
`Seal. Paper 69 (“Motion” or “Mot.”).5 Concurrently herewith, we issue an
`order granting the parties’ request for entry of an Amended Proposed
`Stipulated Protective Order. A Final Writtten Decision was entered by the
`Board on September 12, 2016. Paper 70.
`Patent Owner seeks to seal exhibits and papers that are alleged to
`reflect confidential information belonging to Patent Owner and non-party
`BioScience. Mot. 1. Specifically, Patent Owner identifies by line and page
`number certain portions of deposition transcripts (Ex. 1123 (Paulson
`transcript), Ex. 1120 (Trattler transcript), and Ex. 1099 (Williams
`transcript)) as well as specific paragraphs of a witness declaration (Ex. 1122
`(Hofmann declaration)) (referred to herein as the “deposition transcripts and
`witness declaration”) that reflect confidential information owned by Patent
`Owner or non-party BioScience. Mot. 2.
`In that regard, Patent Owner states that the deposition transcripts and
`witness declaration cite or describe confidential information reflected in
`other exhibits, namely, Patent Owner’s New Drug Application (“NDA”)
`(Exs. 2096, 2102, 2103, 2110, 2251, 2291–2293) and confidential
`documents owned by BioScience (Exs. 2267–2278, 2294). Id. at 1. Those
`other exhibits are the subject of Patent Owner’s Renewed Motion to Seal
`(Paper 68), which we grant in an Order filed concurrently herewith. Under
`the circumstances, Patent Owner shows sufficiently that the identified
`
`
`5 Patent Owner attests that a “word-for-word identical paper” was filed in
`each proceeding. Mot. 1 n.4. For convenience, we refer to papers filed in
`IPR2015-01097.
`
`
`
`2
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`portions of the deposition transcripts and witness declaration––revealing
`information reflected in those sealed exhibits—should also be sealed.
`Mot. 1–2.
`No party has filed an opposition. Accordingly, Patent Owner’s
`request to seal the deposition transcripts and witness deposition is granted.
`
`
`Requiring a Joint Stipulation and Counsel Certification
`Within thirty five (35) days after entry of the Final Written Decision,
`Patent Owner and Petitioner shall file a Joint Stipulation that identifies with
`particularity the exact portions (by page or paragraph number) of all sealed
`papers and exhibits that are cited in the Final Written Decision. The Joint
`Stipulation shall include a Counsel Certification attesting to the accuracy
`and completeness of the Joint Stipulation, including a statement verifying
`that the exact portion of each paper and exhibit cited in the Final Written
`Decision is identified (by page or paragraph number) in the Joint Stipulation.
`We specifically provided the parties advance notice “that information
`subject to a protective order will become public if identified in a final
`written decision in this proceeding.” Paper 58, 5. Further, the Rules of
`Practice for Trial Before the Patent Trial and Appeal Board (“Rules of
`Practice”) 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
`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
`
`
`
`3
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`expunge the information from the record prior to the information
`becoming public.
`77 Fed. Reg. 48756, 48761, Section I.E.6. (Aug. 14, 2012) (emphasis
`added). There is a presumption, therefore, that any confidential information
`cited in the Final Written Decision shall become public forty five (45) days
`after entry of the Final Written Decision.
`A strong public interest favors maintaining a complete and
`understandable record of the patent history, including the factual basis for
`the Board’s findings and the intelligibility of the Final Written Decision. By
`placing confidential information before the Board, Petitioner accepted the
`risk that the information will become public if relied upon in the Final
`Written Decision. Rules of Practice, 77 Fed. Reg. 48756, 48761, 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.”).
`Accordingly, all papers and exhibits identified in the Joint Stipulation
`shall be unsealed and made publicly available forty five (45) days after entry
`of the Final Written Decision, unless a revised public version of the paper or
`exhibit, conforming to the following requirements, is filed no later than
`thirty five (35) days (that is, ten days prior to the date set for unsealing) after
`entry of the Final Written Decision. Specifically, a party may prevent the
`unsealing of any paper or exhibit identified in the Joint Stipulation by filing,
`no later than thirty five (35) days after entry of the Final Written Decision, a
`revised public version of the paper or exhibit in which each page or
`paragraph cited in the Final Written Decision is left unredacted. Material
`
`
`
`4
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`not cited in the Final Written Decision may be redacted in the revised public
`version.
`
`It is
`ORDERED that Patent Owner’s Second Renewed Motion to Seal is
`granted to the extent set forth in this Order;
`FURTHER ORDERED that, within thirty five (35) days after entry of
`the Final Written Decision, Patent Owner and Petitioner shall file a Joint
`Stipulation as described in this Order, which identifies with particularity the
`exact portions (by page or paragraph number) of all sealed papers and
`exhibits that are cited in the Final Written Decision;
`FURTHER ORDERED that the Joint Stipulation shall include a
`Counsel Certification attesting to the accuracy and completeness of the Joint
`Stipulation, including a statement verifying that the exact portion of each
`paper and exhibit cited in the Final Written Decision is identified (by page or
`paragraph number) in the Joint Stipulation;
`FURTHER ORDERED that all papers and exhibits identified in the
`Joint Stipulation shall be unsealed and made publicly available forty five
`(45) days after entry of the Final Written Decision, unless a revised public
`version of the paper or exhibit, conforming to the requirements of this Order,
`is filed no later than thirty five (35) days (that is, ten days prior to the date
`set for unsealing) after entry of the Final Written Decision;
`FURTHER ORDERED that a party may prevent the unsealing of any
`paper or exhibit identified in the Joint Stipulation by filing, no later than
`thirty five (35) days after entry of the Final Written Decision, a revised
`
`
`
`5
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`public version of the paper or exhibit in which each page or paragraph cited
`in the Final Written Decision is left unredacted.
`
`
`
`
`
`6
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`
`PETITIONER:
`Deborah Yellin
`Jonathan Lindsay
`Teresa Rea
`Shannon Lentz
`CROWELL & MORING LLP
`DYellin@crowell.com
`JLindsay@crowell.com
`trea@crowell.com
`slentz@crowell.com
`
`Jitendra Malik
`Bryan Skelton
`Lance Soderstrom
`Hidetada James Abe
`Joseph Janusz
`ALSTON & BIRD LLP
`jitty.malik@alston.com
`bryan.skelton@alston.com
`lance.soderstrom@alston.com
`james.abe@alston.com
`joe.janusz@alston.com
`
`
`
`PATENT OWNER:
`Bryan Diner
`Justin Hasford
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`bryan.diner@finnegan.com
`justin.hasford@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`
`
`
`
`7
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