`571-272-7822
`
`
`
` Paper 81
`
`
` Entered: October 26, 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.,
`
`
`
` 1
`
`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 Judge.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION4
`Granting-in-Part Patent Owner’s Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
` 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 Decision relates to and shall be filed in each referenced case.
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 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. 23 and 24 (filed February 25, 2016).
`Excerpts of Patent Owner’s New Drug Application: Ex.
`•
`2096 (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. 2267-2278, 2294 (filed February 25, 2016).
`Expert Declarations: Hofmann (Ex. 1122)(filed April 22,
`•
`2016); Williams (Ex. 2082) (filed February 25, 2016); Trattler
`(Ex. 2116) (filed July 29, 2016); Myers (Ex. 2126) (filed July 29,
`2016); Paulson (Ex. 2128) (filed February 25, 2016); and Jarosz
`(Ex. 2130) (filed July 29, 2016).
`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 77, 3–4. 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 Lupin opposes the motion with
`respect to Exhibit 1181. Id. at n.10.
`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
`2
`
`
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`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
`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 each of the
`above-captioned proceedings. Paper 71. 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 73 and 74. On September
`12, 2016, a Final Written Decision was entered by the Board in each
`proceeding. Paper 70. Accordingly, 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
`Decisions:
`• Patent Owner’s Response (Paper No. 23),
`• Hofmann Declaration (Ex. 1122),
`• Ex. 1154
`• Williams Declaration (Ex. 2082), and
`Jarosz Declaration (Ex. 2130).
`•
`
`
`
`
`3
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 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 [each] 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 the
`confidential versions of Papers 23 and 24, 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 Lupin’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 23 and 24, 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
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`FURTHER ORDERED that all confidential versions of Papers 23 and
`24, 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 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
`
`
`
`
`5
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`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
`
`
`
`
`6